Concededly the sufficiency of the counterclaims involved is no longer open to question. (Schering & Glatz, Inc., v. American Pharm. Co., 261 N. Y. 304.) The plea of other actions pending may not be sustained. The counterclaims in the other action do not on their face necessarily include the causes of action alleged in the counterclaims here. Furthermore, it appears that the counterclaims in the other action were withdrawn when the case was called for trial.
The fifth defense is sufficient. While dissimilarity in package and price would be no defense against one having the exclusive right to a trade-mark, the amended answer here denies such exclusive right in the plaintiff. In these circumstances the dissimilarity alleged would be a defense tending to negative unfair competition.
The ninth defense, predicated upon a contention that the plaintiff comes into court with unclean hands, is likewise sufficient. While the complaint does not expressly set forth a United States trade-mark registration in the plaintiff, the fact of such registration would be some evidence in proof of plaintiff’s alleged claim to the trade-mark. The defendants, therefore, should be permitted to show that plaintiff in its attempt to arrogate to itself the exclusive right of the mark in dispute, was guilty of acts which might induce a court of equity to refuse relief.
It follows, therefore, that the order granting plaintiff’s motion to strike out the fifth and ninth separate defenses and to dismiss the first and second counterclaims, should be reversed, with twenty dollars costs and disbursements, and the motion denied, with ten dollars costs, with leave to the plaintiff to reply within twenty days after service of order with notice of entry, upon payment of said costs.
Present — Martin, P. J., McAvoy, O’Malley, Townley and Glennon, JJ.
Order reversed, with twenty dollars costs and disbursements, and motion denied, with ten dollars costs, with leave to the plaintiff to reply within twenty days after service of order, upon payment of said costs.