#### Simplex Automobile Company, Respondent, *v.*Louis M. Kahnweiler and Oscar J. Kahnweiler, Copartners, Doing Business as David Kahnweiler’s Sons, Appellants.

First Department,

May 15, 1914.

Injunction — suit to restrain use of unregistered trade mark — competition in business essential — use of trade mark by person manufacturing different articles.

To invoke the equitable remedy of injunction against unfair competition by the use'of an unregistered trade mark the plaintiff must first establish that there is competition.

Thus, although the plaintiff, whose sole business is the manufacture and sale of automobiles, has used for many years as an unregistered trade mark the word “ Simplex,” written in a particular manner, injunction will not issue to restrain the defendant from using the same word, written in the same manner, where it appears that it is engaged only in manufacturing and selling fire extinguishers. Under such circumstances there is no trade competition, and the use of the word is not calculated to deceive the public.

Appeal by the defendants, Louis M. Kahnweiler and another, from a judgment of the Supreme Court in favor of the plaintiff, entered in the office of the clerk of the county of New York on the 5th day of May, 1913, upon the decision of the court after a trial at the New York Special Term granting a permanent injunction.

*481*James A. Martin*of counsel *[Foley &*Martin, attorneys], for the appellants.

*Alfred A. Wheat*of counsel *[Roswell S. Nichols*with him the brief], *Rollins & Rollins,*attorneys, for the respondent.

Clarke, J.:

The plaintiff, a domestic corporation, has been engaged in the manufacture and sale of automobiles since 1907. It adopted and used the word *“*Simplex ” as a trade name and device in the form shown in the record, the distinguishing feature being that it is in script and that a flourish is carried from the top of the initial *“*S ” above and along the full length of the word, the end of the flourish producing the cross bar of the final letter “x.” This device it uses in and about its business and attaches to the radiator of motor cars manufactured by it. It claims no exclusive right to the word *“*Simplex,” conceding that it is in general use. It does claim such right to the form thereof used by it, but it has not registered the said device as a trade mark.

The defendants are copartners doing business in the city of New York and elsewhere under the trade name and style of David Kahnweiler’s Sons, in the manufacture of fire extinguishers. They attach the word *“*Simplex,” written in approximately the same style as used by plaintiff, to their fire extinguishers. The plaintiff neither manufactures nor sells fire extinguishers. The defendants neither manufacture nor sell automobiles. Although the plaintiff concedes that the defendants are entitled to use the word *“*Simplex,” and it has not registered the particular device adopted by it, and it is obvious that plaintiff and defendants are engaged in entirely different lines of business, manufacturing and selling products as dissimilar as can well be imagined, the Special Term has restrained the defendants from the continued use of the device adopted by them upon the ground of unfair trade competition. To invoke the equitable remedy of injunction against unfair competition plaintiff must first establish that there is competition. The granting of such remedy is based upon interference with plaintiff’s customers, the diversion of its trade.

“A party may have a property in — that is, an exclusive *482right to use — a ‘name, symbol, figure, letter, form or device,’ to distinguish goods manufactured and sold by him from those manufactured and sold by others, or to indicate when or by whom, or at what manufactory the article to which it is affixed is manufactured. This property right the courts will protect by injunction, and for its invasion the law gives compensation in damages. It is an infraction of that right, to print or manufacture, or put on the market for sale, and sell for use upon articles of merchandise of the same kind as those upon which it is used by the proprietor, any device or symbol which by its resemblance to the established trade-mark will be liable to deceive the public, and lead to the purchase and use of that which is not the manufacture of the proprietor, believing it to be his.” *(Colman*v. *Crump,*70 N. Y. 573.)

“The manufacturer of particular goods is entitled to the reputation they have acquired, and the public is entitled to the means of distinguishing between those, and other goods; and protection is accorded against unfair dealing, whether there be a technical trade-mark or not. The essence of the wrong consists in the sale of the goods of one manufacturer or vendor for those of another.” *(Elgin National Watch Co.*v. *Illinois Watch Co.,*179 U. S. 674.)

But the right to the exclusive use of a trade mark is limited to a use on the particular class of goods upon which it has been actually used, and other persons may use even the identical mark or name in connection with a different class of goods. Goods are in the same class, within this rule, whenever the use of a given trade mark, or name or symbol would enable an unscrupulous dealer to palm off on unsuspecting customers spurious goods as being the genuine goods of the proprietor of the trade mark. *(Church & Dwight Co.*v. *Russ,*99 Fed. Rep. 276.)

“Actual or probable deception and confusion on the part of customers by reason of defendant’s practices must appear. Of course there must be actual competition before there can be any unfair competition.” (38 Cyc. 759.)

Respondent itself says in its brief: “ This is not a technical trade-mark case; this is a case of unfair trade competition.”

It requires a stretch of the imagination beyond the breaking *483point to conceive of a purchaser intending to buy one of plaintiff’s motor cars being so deceived by defendants’ use of this device as to buy one of its fire extinguishers instead. It is almost a trade classic for a clerk in a drygoods or druggist’s shop, when out of a particular article asked for, to tender c< something equally as good,” but even the most expert seller of yankee notions would scarcely venture to substitute a fire extinguisher for an automobile. There is no evidence to sustain the finding of fraud or deception of the public or diversion of trade.

The judgment appealed from should be reversed upon the law and the facts, and the complaint dismissed for lack of equity, with costs to the appellant in this court and at the Special Term.

Ingraham, P. J., McLaughlin, Scott and Hotchkiss, JJ., concurred.

Judgment reversed, with costs, and complaint dismissed with costs. Order to be settled on notice.