70(3)

3. TRADE-MARKS AND TRADE-NAMES -UNFAIR COMPETITION-USE OF NAME. Plaintiff, who has been in business under a certain name, is entitled to have the public know, not only that defendant's company is not the same company, but also that defendant's company is not the business known under the name of plaintiff's company before defendant entered the business field.

4. CONTEMPT 60(3)-RULE OF EVIDENCEREASONABLE DOUBT.

The rule of the criminal law as to reasonable doubt does not apply to a contempt proceeding, not instituted to punish for past offenses, but to compel a discontinuance of an existing practice of violating an injunction order.

5. INJUNCTION 223(1)-VIOLATION OF INTRADE-MARKS AND TRADE

JUNCTION NAMES.

A person named Joseph Hilton, who was enjoined from naming his stores "Hilton" or "Hilton's" in a proceeding instituted by "The Hilton Company," was guilty of contempt and violated the injunction by using the name "Jos. Hilton & Co." to designate his business.

Application by Philip Hilton for an order adjudging Joseph Hilton in contempt for acts alleged to constitute a violation of an injunction. Order advised adjudging respondent in contempt.

See, also, 105 Atl. 65.

LANE, V. C. The application is for an order adjudging the respondent in contempt for acts alleged to constitute a violation of an injunction of this court and to punish him therefor.

On July 18, 1918, respondent was enjoined by a decree of this court entered on remittitur from the Court of Errors and Appeals "from using the name 'Hilton's' or 'Hilton,' alone or in such manner as to lead or induce the public to believe that the goods manufactured or sold by him are manufactured or sold by complainant and that the business conducted by defendant is the same as or a part of the business conducted by complainant, from using any emblem or device resembling the trade emblem of complainant in any way in his business and from conducting his business so as to deceive the public and induce it to believe that the goods manufactured or sold by defendant were manufactured or sold by complainant and that the business conducted by defendant is the same as or a part of the business conducted by complainant."

The question is one solely of fact. The legal and equitable rights of the parties have been settled by the final decree.

An extended argument was made in an attempt to show that the opinion of the Court of Errors and Appeals (104 Atl. 375, L. R. A. 1918F, 1174) indicated that the law was otherwise than as considered by this court on the determination of the main cause.

An examination of the opinion of this court in the main cause and of the opinion of the Court of Errors and Appeals will indicate that the view of this court as to the law was not otherwise than as indicated

This

by the Court of Errors and Appeals. court never assumed that it might with propriety enjoin the use by a man of his name except where he was using it in his business in such a manner as to deceive the public, palm off his goods as the goods of another, or lead the public to believe that his business was that of or a part of that of another. As I indicated in Hilton v. Hilton, in previous contempt proceedings, 105 Atl. 65, I conceive that the difference between the Court of Errors and Appeals and this court was one of fact. I assumed that the word "Hilton" or "Hilton's" could not be used in a competitive business, practically, without deceiving the public. It was for this reason that I advised the final decree so wide in its scope.

With this view the Court of Errors and Appeals differed. As I conceive it, the only question before me now is whether or not defendant is so using the word "Hilton"

is so conducting his business as either to

lead or induce the public to believe that the goods manufactured or sold by him are manufactured or sold by complainant, or that the business conducted by defendant is the same as or a part of the business conducted by complainant, and that this is a question of fact.

[1, 2] The final decree has the effect of an adjudication that the manner in which the business was being conducted at the time it was made was within the ban of the injunction. After the final decree was entered and served, defendant changed his signs by adding the words, "J. Hilton, Prop." Upon application to punish him for contempt, I found that the additional words "J. Hilton, Prop." did not save the situation for the reasons which I then indicated. 105 Atl. 65. After the adjudication of contempt, defendant again changed his signs, and now uses the term, "Jos. Hilton & Co.," to designate his business. He had altered his signs so that they are as dissimilar as they can be from the signs of complainant, and yet have thereon the words I have indicated and not have thereon words drawing attention to the fact that they are not the stores of the established Hilton Company. The store dressings, etc., are precisely the same as they were at the time the main cause was determined, so that to outward appearances the stores of the Hilton Company and Joseph Hilton look the same, as in the nature of things they must. The labels of defendant have been changed so that they are dissimilar from labels of complainant, and the remarks which I have made with respect to the signs apply to them. There is in this case the same kind of evidence as there was in the main case as to confusion. Customers have come into the Hilton Company stores believing they were in the stores of Joseph Hilton. Mail has been received by the Hilton Company intended for Joseph Hilton. Mistakes have been made by individuals desiring to communicate with Joseph Hilton by telephone. A witness produced by defendant himself testifies that, although he was familiar with the stores of complainant and defendant, he did not know, until advised by a salesman in the employ of defendant, that all of the stores were not operated by one

concern.

Defendant insists that he is not responsible for mistakes due to carelessness, and relies upon Rosenthal v. Blatt, 80 N. J. Eq. 90, 83 Atl. 387. What Vice Chancellor Leaming there said was that

"Concrete instances of confusion which can only be appropriately attributed to extreme carelessness or inattention on the part of customers are clearly inadequate to establish a similitude which does not in fact exist."

He then said that he was unable to believe

of London," was being used by defendant in that case, was operative to deceive or mislead any reasonable persons. The rule, of course, is that the similitude must be sufficient to confuse an ordinarily prudent man, but the test as to the care or prudence is, not the precautions which a reasonably prudent man would take when investing money or what not, but the precautions which he would take ordinarily in determining, in buying a suit of clothes, that he was in the store he thought he was in. An ordinary individual, I think, in making up his mind as to whether he is in a store operated by a certain concern, the name of which he knows, gives but a cursory glance to the sign. If the most prominent word in the name of the operator of the store he desires to enter appears prominently over the store of a competitive business, he is quite likely to assume that the stores are operated by the same concern. The name "Hilton" is the same prominent feature of complainant's designation as it is of defendant's. There is no distinction, I think, in the public mind between the word "Company" written out and "Co." Defendant in his designation has retained the most prominent name in complainant's designation, has substituted for the word "the" the diminutive "Jos.," has substituted for "company" written out, the designation "Co.," and has put between "Hilton" and "Co." the symbol "&." Defendant is not attempting to use his own name "Joseph Hilton" alone. What he is doing is using a trade designation which contains a part of his own name in conjunction with another word also a part of complainant's designation. Complainant himself is not using the designation "The Hilton Company" solely. He is also using and has always used to designate his business the terms "Hilton" and "Hilton's." There is more involved in the case than the mere use of one's name in one's business.

The case is somewhat analogous to those dealing with the right of a corporation to assume a corporate name. Under the Corporation Act, § 8, 2 C. S. of N. J. p. 1603, a corporation is forbidden to assume a name in use by another existing corporation or so nearly similar thereto as to lead to uncertainty and confusion. Under this statute, American "Glucose Sugar Refining Company" has been held to be too nearly similar to "Glucose Sugar Refining Company," 56 Atl. 861; "L. Martin & Wilckes Company" too nearly similar to "The L. Martin Company," 75 N. J. Eq. 39, 71 Atl. 409, affirmed on this branch of the case, 75 N. J. Eq. 257, 72 Atl. 294, 21 L. R. A. (N. S.) 526, 20 Ann. Cas. 57; "The Edison Automobile Company of Washington" too nearly similar to "The Edison Storage Battery Company," 67 N. J. Eq. 44, 56 Atl. 861; "Eureka Rubber Manufacturing Company" too nearly similar to

[3] Defendant in his advertisement has indicated that his only stores are at the addresses mentioned in the advertisements, as also has complainant; but I do not think this saves the situation. In the first place, I do not believe it prevents confusion. I think little attention is paid by readers of advertisements to statements of this kind, and that, notwithstanding their presence, customers are likely to go to the stores of defendant believing them to be those of complainant, and vice versa; and, moreover as I said in the previous contempt proceeding, 105 Atl. 65, I think complainant is entitled to have the public know, not only that "Jos. Hilton & Co." is not "The Hilton Company," but also that it is not the business known as "The Hilton Company" prior to defendant's entering the field. What I said on page 66, 105 Atl., must be taken in connection with what I now say. I will not repeat. See International Silver Co. v. Rogers, 72 N. J. Eq. 933, 67 Atl. 105, 129 Am. St. Rep. 722.

[4, 5] It was insisted by counsel with defendant that in the determination of this matter the rule of the criminal law must be applied, and that defendant must be proven guilty beyond a reasonable doubt. This is a purely civil contempt. I acquit defendant of any actual intent to contemn the authority of the court. The injunctive decree being in the form it is, defendant was obliged to experiment until he should find a way of using the name, if he desired to use it, which would not be within its ban. Any imprisonment which will be ordered will be remedial in purpose, coercive in character. Staley v. South Jersey, etc., 83 N. J. Eq. 300, 90 Atl. 1042, L. R. A. 1917B, 113, Ann. Cas. 1916B, 955. The proceedings are not instituted to punish for his past offenses, but to compel a discontinuance of an existing practice, and, if defendant goes to jail, he will be imprisoned only so long as he continues the obnoxious use of the name. It is analogous to an execution at law. I think, therefore, as I thought at the time of the prior contempt, that no greater proof is necessary than was necessary to secure the injunction in the first instance, and that the language of Vice Chancellor Howell in the case of Rubber & Celluloid Harness Trimming Co. v. Rubber-Bound Brush Co., 81 N. J. Eq. 419, 88 Atl. 210, Ann. Cas. 1915B, 365, affirmed 81 N. J. Eq. 519, 88 Atl. 210, Ann. Cas. 1915B, 365, to the effect that proof of actual confusion is not necessary, is applicable. But if I were bound by the rule as to reasonable doubt I have no difficulty in concluding that I have no reasonable doubt, but that the manner in which defendant conducts his business is such as that the public

ed or sold by him are manufactured or sold by complainant and that the business conducted by him is the same or part of the business conducted by complainant. Defendant, of course, labors under the handicap that originally I had the notion that the name could not be used by defendant in any such manner as he would desire to use it without creating confusion in a competitive business; but I have tried throughout this case to look upon it with an open mind. I have also observed the stores in New York myself, particularly those on Thirty-Sixth street and Thirty-Seventh street and Broadway, and perhaps cannot but help being influenced by the impression made upon me by actual observation.

I will advise an order adjudging respond. ent in contempt. Counsel may prepare a form of order. I think perhaps the order should provide for a certain length of time within which the defendant may be permitted to discontinue the existing practice, and, if he does not discontinue within the time stated, then that a warrant issue upon application, upon notice, directing his commitment to the common jail of the county of Essex until he shall have discontinued the practice. Care should be taken in framing the order that it be conclusive so that an appeal may be taken, as counsel stated, in open court at the conclusion of the hearing and the delivery of the oral conclusions that an appeal was intended. Let the order be settled on one day's notice.

(90 N. J. Eq. 97) (No. 45/338.) Feb. 6,

HUMMER v. BUERK et al.
(Court of Chancery of New Jersey.
1919.)

1. VENDOR AND PURCHASER 130(7)—TITLE BY ADVERSE POSSESSION.

In view of 3 Comp. St. 1910, p. 3172, §§ 28, 29, where vendor had, with his privies, held possession for more than 60 years, under record title originating with deed of the executor of one G. in 1856, the possibility that the widow of G., or her heirs, would be presently protected by the 5-year extension of the limitation act was too remote to cloud the title.

2. VENDOR AND PURCHASER 82-DEFECT IN TITLE-MISTAKE OF LAW-RELIEF IN EQUI

TY.

Smith & Brady, of Phillipsburg, for complainant.

O. D. McConnel, of Phillipsburg, for defendants.

BACKES, V. C. This suit is to compel Thomas Buerk, one of the defendants, to specifically perform his contract to purchase of the complainant his farm, and to enjoin him from further prosecuting his suit at law for damages for an alleged breach of the con

tract.

The complainant is the owner of a small farm, made up of six tracts, which the defendant agreed in writing to buy, and pay therefor $2,100. On the day fixed for the transfer, the lawyer employed by the defendant to examine the records reported that he had found a serious defect in the title of two of the tracts, and also an uncanceled mortgage, and advised his client not to perform unless the matters were cleared up, which, he said, could be done by proceedings in chancery. The complainant and defendant accepted his representations without question, and, upon his suggestion, entered into a supplemental agreement, stipulating that the defendant was to be let into possession of the farm, and the complainant was to quiet the title by bill, and to this end the complainant directed the lawyer to take the necessary steps. Further, and according to stipulation, the complainant executed to the defendant his warranty deed for the farm, and delivered it to the Citizens' National Bank of Bloomsbury, and the defendant deposited with the bank $1,545, the balance of the consideration price (the difference having been previously adjusted). The bank was to transfer the deed and money, when notified by the lawyer that the title had been perfected in the manner agreed upon, and, if it were not cleared up by the day fixed, the bank was to return the deed and the money to the respective parties, and the complainant was to forfeit to the defendant $250. The lawyer neglected to file the bill, and a further agreement was made extending the time of performance to March 1, 1918, with the modification that $500, instead of $250, was to be the forfeit. Before the time expired the lawyer discovered that he had erred in judging the title to be defective and that the uncanceled mortgage was a cloud upon it, and so informed his client, the defendant, stating that a suit in chancery was unnecessary, and advised him to consummate the deal. The defendant, evidently because he felt he had made a poor bargain, refused. He stood flatly upon the terms of the supplemental agreements, and by his present solicitor brought an action in the Supreme Court

The things the lawyer found in his examination of the county records were these: Holoway Gano acquired the land in 1853. He died in September, 1855, and by his will gave his estate, real and personal, to his widow Liveria, her heirs and assigns forever, "reccommending (sic) to her if any of said property remained at her decease that the same shall descend to my children, Joseph J. Gano, George Gano, Martin Gano and Cornelia Francis Gano, share and share alike." There is no record of a deed by the widow devisee or her heirs, and therein is the break in the title. Wesley Johnson, the executor of the will, presumed to convey the land to John Butler, by deed dated March 31, 1856, in which it was recited that

"Whereas, the said Holoway W. Gano, deceased, did in and by his last will and testament order and direct 'that after all of my just debts and funeral expenses be paid, all of the remainder of my property both real and personal, I give, devise and bequeath to my beloved wife, Liveria, to her, her heirs and assigns forever': * * Now, this indenture witnesseth that the said Wesley Johnson, as aforesaid, in pursuance of the authority and power given him in and by said will, did advertise the real estate of said Holoway W. Gano, deceased, to be sold on Friday, the 9th did proceed to sell the said real estate, and day of November, 1855, and then and there the said John Butler did then and there bid for the same the sum of $800, and, no one bidding more, I did strike off and sell the same to the said John Butler, the highest bidder."

Butler went into possession, and in 1869, his administrator, under orphans' court authority, conveyed to Christiana Butler, who in June of 1869 conveyed to David W. Dilts. Dilts conveyed to Johnson Hummer, the father of the complainant, in 1876, and Johnson Hummer's heirs conveyed to the complainant on March 21, 1884. The uncanceled mortgage of $150, payable in one year, was made by Holoway Gano to one Peter Hardy, March 30, 1855.

The evidence is that the record title holders have been in peaceable possession of the tract, from Gano to the complainant, inclusive, for a period of more than 60 years. The complainant, now 66 years old, who lived on an adjoining farm, recalls that, as a boy of seven or eight, John Butler (who bought in 1856) occupied the place. In this, and in his statement that Butler and all subsequent title holders, in their turn, were in possession, he is not denied. As to the uncanceled mortgage he says, and it is not disputed, that he never heard of it in the 34 years of his ownership. It is suggested that 60 years of continuous possession by the title holders is