International Silver Co. v. Rogers Corporation.

67 Eq.

further fact that W. H. Rogers has acquired some degree of skill and experience in the business, or in some of its branches.

The fact that the use of various names and marks by the complainant's predecessors requires purchasers to discriminate in buying goods does not, in our judgment, lessen the right of the complainant to restrain the use of a corporate name calculated to deceive, selected with intent to create confusion. In all of the cases of this kind a nice discrimination would enable buyers to avoid the confusion, for it is seldom that names are selected which are identical. "Similarity, not identity," said Mr. Justice Bradley, "is the usual recourse where one party seeks to benefit himself by the good name of another." Celluloid Manufacturing Co. v. Cellonite Manufacturing Co., 32 Fed. Rep. 94.

The ground upon which the court enjoins the use of the name is that it is likely to deceive, and a nice discrimination is not to be expected from the ordinary purchaser.

The fact that William A. Rogers seems to have established a right to use the name does not enlarge the rights of the defendant. As was said by Judge Shipman, in Clark Thread Co. v. Armitage, 74 Fed. Rep. 936 (at p. 943): "It does not follow, however, because the complainant is not exclusively entitled to use the words 'Clark's Spool Cotton,' that therefore it cannot rightfully enjoin a person who is fraudulently making use of its label. The litigation in regard to the Rogers trade mark showed that three distinct corporations were entitled to use the name "Rogers" upon their goods, but it never was supposed by a court that either injured owner had not a right to suppress the use of the trade name by a fraudulent competitor, or that it was an adequate defence that there were other owners whose use was not fraudulent."

* * *

The vice-chancellor cited Baker v. Baker, 115 Fed. Rep. 297, as sustaining the defendant's right to use William H. Rogers' name, when properly distinguished, in view of the skill and experience he may have acquired in the business. To this there are two answers: (1) That skill and experience, such as it was, was acquired in his effort to profit by the reputation of the complainant's goods. As the vice-chancellor said: "The conclusion

1 Robbins. International Silver Co. v. Rogers Corporation.

is inevitable that up to, or nearly up to, the time of the formation of the Rogers corporation, Rogers was using the name to gain for himself a profit which belonged to another. He was consciously seeking to pass off his goods as the goods of his competitor." We cannot think that a man who acquires skill and experience under such circumstances is entitled to protection against those whom he has sought to injure. (2) The case differs from the Baker Case. There the defendant changed his business methods, adopted advertisements, packages and labels which met with the approval of the successors of Walter Baker & Company, and so differentiated the dress of his products as to minimize as far as possible the risk of confusion between them and those of the complainant. A part of the corporate name was the place of business, and every person who dealt with the defendant in that case was thereby notified that its business domicile was not the domicile of the complainant. After reciting these facts, the court, in that case, added: "If the name had been selected unnecessarily or for the purpose of illegitimate competition with the complainant, we should not hesitate to enjoin its use. But it was selected without any element of bad faith or unfair use." In the present case the corporate name was selected unnecessarily, with the intent to make an unfair use of it.

The decree must therefore be reversed and the record remitted to the court of chancery in order that a decree may be made in accordance with this opinion. The complainants are entitled to costs in the court of chancery, to costs in this court on both appeals from the decree for injunction. The defendants are entitled to costs in this court of the appeal from the order denying an accounting.

On appeal of defendant from decree for injunction:

For affirmance-THE CHIEF-JUSTICE, DIXON, GARRISON, FORT, PITNEY, SWAYZE, BOGERT, VREDENBURGH, VROOM, GREEN, GRAY-11.

For reversal-None.

MacKenzie v. Trustees of Presbytery of Jersey City. 67 Eq.

On appeal of complainant from decree for injunction:
For affirmance-GREEN-1.

For reversal-THE CHIEF-JUSTICE, DIXON, GARRISON, FORT, PITNEY, SWAYZE, BOGERT, VREDENBURGH, VROOM, GRAY-10.

On appeal of complainant from order denying an accounting: For affirmance-THE CHIEF-JUSTICE, DIXON, GARRISON, FORT, PITNEY, SWAYZE, BOGERT, VREDENBURGH, VROOM, GREEN, GRAY-11.

For reversal-None.

ALEXANDER MACKENZIE et al., respondents,

v.

THE TRUSTEES OF THE PRESBYTERY OF JERSEY CITY, appellants.

1 Robbins. MacKenzie v. Trustees of Presbytery of Jersey City.

5. Upon their own showing, the present complainants have no standing in court by right of a reverter, or as being in themselves possible beneficiaries, or under the doctrine of visitation; only the attorney-general, by way of information, or the presbytery, by bill exhibited by and through the body charged with the duties of trusteeship, can properly invoke the superintending power of the courts over the administration of the trust.

6. The decree of the court of chancery must be reversed, and the bill should be dismissed.

On appeal from chancery.

This was a suit in equity brought by Alexander MacKenzie, Hugh R. MacKenzie, Edward E. MacKenzie, James S. MacKenzie, Grace Ewing, Jessie Alexander, Isabella Craig, Rebecca E. Vanderbeck, Margaret R. Elkin, Rebecca M. Laidlaw and Catherine M. Pierson, devisees and heirs-at-law of George R. MacKenzie, deceased, and Alexander MacKenzie, Hugh R. MacKenzie, Peter Alexander and Charles Elkin, executors and trustees named in the will of the said George R. MacKenzie, deceased, against The Trustees of the Presbytery of Jersey City. The bill of complaint alleged that by a deed of the 6th day of May, A. D. 1885 (afterwards delivered, acknowledged and recorded), George R. MacKenzie and Rebecca, his wife, for the consideration of one dollar, bargained and sold and conveyed unto the Trustees of the Scotch Presbyterian Church of Jersey City (a corporation under the Religious Societies Act), and their successors and assigns, with unlimited covenants for title, certain lands and tenements situate on the northerly side of Mercer street, Jersey City, New Jersey, distinguished as lots 22, 23 and 24, in block 65 on the map of the farm of Cornelius Van Vorst, deceased, with the appurtenances thereunto belonging,

"to have and to hold all and singular the above-mentioned and described premises, together with the appurtenances, unto the said party of the second part, its successors and assigns, to its own proper use, benefit and behoof forever, on condition that the said party of the second part, the religious society now worshiping in the church erected upon said premises shall be called, and always continue to be called, the Scotch Presbyterian Church of Jersey City, and the corporate name to be continued as it now legally is; also, that the said corporation shall keep at all times said church and premises in proper repair; also, that no instrumental music shall at any MacKenzie v. Trustees of Presbytery of Jersey City.

67 Eq.

time be used in the worship of the church; and, further, should it become actually necessary to sell said premises at any time that the proceeds of such sale shall be devoted to the same religious purpose by the same organization and upon the like conditions as herein stated; and on further condition that the church organization shall be under the care of the Presbytery of Jersey City, and its legitimate Presbyterian successors, and, if the above conditions are not complied with on the part of the party of the second part hereto, the said premises are to vest in the Presbytery of Jersey City, and its legitimate Presbyterian successors, for Presbyterian religious purposes, upon the same conditions aforesaid; and on further condition that there shall be no lien upon the said premises, at any time. for minister's salary or church expenses, or any repairs upon the property."

That at the time of the delivery of the said deed the said George R. MacKenzie addressed a letter to the said Trustees of the Scotch Presbyterian Church of Jersey City, in which he laid special emphasis upon the condition relating to the continuance of the name, the Scotch Presbyterian Church, and the condition relating to the non-use of instrumental music in worship; that on the delivery of the said deed, about the 22d day of May, A. D. 1885, the said The Trustees of the Scotch Presbyterian Church of Jersey City entered into possession of the said church and lands, and observed the conditions or terms of the said deed; that by a deed of the 11th day of May, A. D. 1887 (afterwards delivered, acknowledged and recorded), the said George R. MacKenzie and Rebecca, his wife, bargained and sold and conveyed unto the said Trustees of the Scotch Presbyterian Church of Jersey City, and their successors and assigns, with covenants for title, a certain parcel of land situate on the northerly side of Mercer street, Jersey City, New Jersey, distinguished as lot 25 in block 65 on the map of the farm of Cornelius Van Vorst, deceased, habendum et tenendum, to them and their successors and assigns, as above set forth, and

"on further condition that the same shall be maintained and occupied by the party of the second part as a manse or dwelling for its minister, or pastor;"

that the said George R. MacKenzie died on or about the 6th day of January, A. D. 1892, leaving a will (afterwards proved in Sullivan county, New York), whereby he gave a part of his estate to his executors upon certain trusts, not yet fully