In 1862, plaintiff's husband discovered a spring of bitter water
in Hungary, and was granted by the Municipal Council of Buda
permission to sell such water, and to give the spring the name of
"Hunyadi Spring." He put up these waters in bottles of a certain
shape and with a peculiar label, and opened a large trade in the
same under the name of "Hunyadi Janos." In 1872, one Markus
discovered a spring of similar water and petitioned the Council of
Buda for permission to sell the water under the name of " Hunyadi
Matyas." This was denied upon the protest of Saxlehner, but in
1873, the action of the Council was reversed by the Minister of
Agriculture, and permission given Markus to sell water under the
name of "Hunyadi Matyas." Other proprietors seized upon the word
"Hunyadi "which became generic as applied to bitter waters. This
continued for over twenty years when, in 1895, a new law was
adopted, and Saxlehner succeeded in the Hungarian courts in
vindicating his exclusive right to the use of the word "Hunyadi."
In 1897, he began this suit.
Held: that the name "Hunyadi" having become public
property in Hungary, it also became, under our treaty with the
Austro-Hungarian Empire in 1872, public property here; that the
court could not take notice of the
Page 179 U. S. 20
law of Hungary of 1895 reinstating the exclusive right of
Saxlehner, and that the name having also become public property
here, his right to an exclusive appropriation was lost.
Held also: that even if this were not so, he, knowing
the name "Hunyadi" had become of common use in Hungary, was also
chargeable with knowledge that it had become common property here,
and that he was guilty of laches in not instituting suits and
vindicating his exclusive right to the word, if any such he
had.
Held also: that acts tending to show an abandonment of
a trade-mark being insufficient, unless they also show an actual
intent to abandon, there was but slight evidence of any personal
intent on the part of Saxlehner to abandon his exclusive right to
the name "Hunyadi," and that a company to whom he had given the
exclusive right to sell his waters in America was not thereby made
his agent, and could not bind him by its admissions.
Held also: that the fact that he registered the
trademark "Hunyadi Janos" did not estop him from subsequently
registering the word "Hunyadi" alone.
Held also: that the appropriation by other parties of
his bottle and label, being without justification or excuse, was an
active and continuing fraud upon his rights, and that the defense
of laches was not maintained.
Held also: that the adoption by the defendant of a
small additional label distinguishing its importation from others
did not relieve it from the charge of infringement, inasmuch as the
peculiar bottles and labels of the plaintiff were retained.
This was a bill in equity filed in the circuit court for the
Southern District of New York by the widow of Andreas Saxlehner,
deceased, a resident of Buda-Pesth and a subject of the King of
Hungary, against the Eisner & Mendelson Company, importers and
wholesale dealers, to enjoin the defendant from selling any water
under a name in which the word "Hunyadi" occurs, or making use in
the sale of bitter waters of labels, in form, color, design, and
general appearance, imitating the labels used by plaintiff in the
sale of Hunyadi Janos water.
The bill averred in substance that plaintiff's husband, Andreas
Saxlehner, was, until May 24, 1889, the proprietor of a certain
well within the city limits of Buda-Pesth, and that in 1863 he
began to sell the waters of the same in the market under the name
or trademark of "Hunyadi Janos;" that as his business increased he
acquired additional territory, opened new wells, adopted a novel
style of bottles and a peculiar label, and that the water soon
became known in all the markets of the world
Page 179 U. S. 21
under the name of "Hunyadi Janos," or in England and the United
States under the name of "Hunyadi" alone; that in March, 1876,
Saxlehner entered into a contract with the Apollinaris Company of
London under which such company was given the exclusive right to
sell this water in Great Britain and the United States, and that
such contract was not terminated until March, 1896; that this
company used a label of similar design, but of different color, and
that large quantities of this water were exported by Saxlehner
through such company and sold in the United States under the name
of Hunyadi water; that Saxlehner died May 24, 1889, and plaintiff
succeeded him in the business; that, prior to his death, Saxlehner
obtained the registration in the Patent Office of the name
"Hunyadi" as his trademark; that the defendant, knowing of these
facts, had unlawfully imported and sold bitter water not coming
from plaintiff's wells, in bottles of identical shape and size as
those used by plaintiff, and with labels in "close and fraudulent
simulation of your orator's trademark," but under the name of
"Hunyadi Laszlo" or "Hunyadi Matyas" -- all in defiance of
plaintiff's right and with the design of imposing the waters upon
the public as those of the plaintiff.
The answer denied the material allegations of the bill and
averred that, in the year 1873, one Ignatius Markus, being the
proprietor of a certain well within the limits of Buda-Pesth,
applied to the proper authorities and was granted the registration
of the name "Hunyadi Matyas" as a denomination of the waters of his
spring, such authorities holding that the name was distinguished
from that of the "Hunyadi Janos;" that "Hunyadi Janos," when
anglicized, is John Hunyadi, the name of a celebrated Hungarian
hero, and that the name "Hunyadi" is a common one in Hungary, and
means of or from Hunyad, and that for this reason it is of itself
incapable of exclusive appropriation by anyone, being a common
descriptive personal name, and also used to designate certain
districts and towns in Hungary; that in the year 1889, the word had
become a generic term, describing a kind of bitter aperient water,
the peculiar product of a large number of wells in Hungary; that
the shape of the bottle and the peculiarities of the label have
become
Page 179 U. S. 22
common property, and were adopted by everyone who sold the
Hunyadi water, whether under the name of "Hunyadi Janos," "Laszlo,"
"Matyas," "Arpad," etc., and that to the time of his death,
Saxlehner had never asserted or made any claim to the exclusive use
of his style of bottle, or capsules, or labels; that in 1886 or
1887, the Apollinaris Company brought suit against the American
agents of several of these waters and obtained temporary
injunctions, which were subsequently dissolved upon evidence that
the word "Hunyadi" was used in Hungary as part of the name of a
number of different mineral waters, that Saxlehner refused to join
with or aid the Apollinaris Company in opposing a dissolution of
such injunctions, and that thereafter these waters were sold
freely, openly, and continuously in competition with the "Hunyadi
Janos" in the bottles and with the labels and capsules affixed
thereto as before stated, with the knowledge, consent, and
acquiescence of Saxlehner and his agents; that defendant, a
Pennsylvania corporation, entered into a contract with the owners
of the "Hunyadi Matyas" spring, and obtained the exclusive right to
import their waters into the United States for the term of
twenty-five years; that in 1890, it began to sell this water in
like bottles and with like capsules and labels affixed thereto as
now claimed by the plaintiff herein to be in violation of her
claimed rights, which bottles, capsules, and labels were similar to
those in which the said "Hunyadi Matyas" water had been first
imported, and that this was done with the consent of the American
agent of the Apollinaris Company, who expressly stated that he had
no objection to the label used by the defendant, nor to the way in
which it was advertising the "Hunyadi Matyas" water; that in 1889,
it also became the agent for sale in the United States of the
"Hunyadi Arpad," "Hunyadi Laszlo," and "Hunyadi Bela" waters, and
began to sell the same in large quantities; that these waters were
put up for sale and sold in bottles similar to those of the
"Hunyadi Janos," with like capsules and labels; that these waters
were sold in open competition with the "Hunyadi Janos" until
sometime in 1893, when plaintiff stopped said competition in part
by purchasing the Arpad and Bela springs, and thereupon revoked the
agency of the defendant
Page 179 U. S. 23
to sell such waters; that in 1877, Saxlehner applied to the
Commissioner of Patents for the registration of the words "Hunyadi
Janos" as a trademark; that such trademark was registered September
11, 1877, by which proceeding he abandoned all claim and assertion
of right to the word "Hunyadi" in and of itself, and that it had
for many years previously been a generic term to designate this
class of waters. The answer further alleged that the defendant, in
order to designate the waters sold by it, and to secure additional
protection to the label used by it, registered the trademark
"Hunyadi Matyas," since which time the defendant has used such
trademark as stated therein, and in accordance therewith.
As the case depended almost wholly upon questions of fact, a
somewhat elaborate statement of the evidence becomes necessary.
In 1862, Andreas Saxlehner discovered within the city limits of
Buda-Pesth, Hungary, in a valley surrounded on all sides by hills
acting as a natural barrier, secluding it from the outer world, a
spring which was named by him the "Hunyadi" spring, and on January
19, 1863, the municipal council of Buda granted him permission to
sell the water taken from such spring and to give the spring the
name of "Hunyadi," upon the payment of a small sum of money for
hospital purposes. Soon after this, he began to bottle the water of
his spring and to sell it under the arbitrary name or trademark of
"Hunyadi Janos" -- in other words, John Hunyadi, a Hungarian hero
of the fifteenth century. Several wells were subsequently sunk by
him in the same valley to the number of about 112, all of which
produced water substantially of the same chemical combination,
which is led through a system of pipes to large subterranean
cisterns, from which it is taken and bottled. It soon began to be
exported beyond the limits of Hungary to other European countries,
and also to the United States.
Saxlehner was not, however, the first one in Hungary to put up
the bitter waters with which that kingdom abounds, but others were
already sold in the market, one of them being called "Hildegarde,"
and another "Franz Deak." Different
Page 179 U. S. 24
bottles and labels were used for these waters, when Saxlehner
adopted, in conjunction with the distinctive name of "Hunyadi
Janos," a novel style of bottle of straight shape with a short
neck, to the top of which was attached a metal capsule bearing the
inscription "Hunyadi Janos, Budai Keseruviz Forras," meaning
"Hunyadi Janos, bitter water of Buda," together with a supposed
portrait of the hero stamped thereon. He also adopted a peculiar
label covering almost the whole body of the bottle, divided into
three longitudinal panels, the middle one of which bore the same
portrait in a medallion, with the name of "Hunyadi Janos" written
in large letters on the top of the label, the color of the middle
panel being a reddish brown and the outer panels white. As this
water was exported to and sold in the various countries of the
world, a different custom concerning its appellation sprung up in
different countries, the Latin races using the word "Janos" as the
common appellation of the water, it being known as "Eau de Janos"
or "Aqua di Janos," while in England and the United States of
America the name of "Hunyadi" became its common appellation, it
being known as Hunyadi water.
In 1872, it seems that one Ignatius Markus discovered a spring
upon a plot of ground leased by him, which also produced bitter
water of similar quality, and shortly thereafter petitioned the
municipal council of Buda not only for permission to sell the
water, which was unconditionally granted upon the report of the
town physician concerning the quality of the water found, but also
to be allowed to name this spring "Hunyadi Matyas," and to bring
the water into commerce under that name. This was denied upon the
petition and protest of Saxlehner, who claimed the exclusive right
to the use of the name "Hunyadi." It was said that the granting of
the denomination "Hunyadi Matyas" to another spring
"would very likely, nay certainly, lead, both between the owners
of the two springs and among the consuming public, to unpleasant
misunderstandings, which it is the duty of the authorities to avoid
and even to prevent. And further, the fact that petitioner,
notwithstanding the many designations at his disposal, seeks to
apply the name 'Hunyadi' to his spring, undoubtedly shows the not
very noble intention
Page 179 U. S. 25
on his part to avail himself of the great diffusion and good
renown enjoyed by the Saxlehner Hunyadi Bitter Spring, both at home
and abroad, which, however, cannot be tolerated by the authorities,
and in the present case, all the less as it is a well known fact
that Mr. Saxlehner was able to secure this good renown to his
spring only through many years' labor and at considerable
expense."
On a petition in appeal, however, to the minister of
agriculture, in 1873, the decision of the council which denied to
Markus the permission to use the name "Hunyadi Matyas" was reversed
because of certain omissions by Saxlehner to conform to the local
laws and also because "Hunyadi Janos" and "Hunyadi Matyas"
"represent two quite clearly different names, which may stand
without any infringement to each other." This spring was afterwards
registered in Buda-Pesth by the name of "Hunyadi Matyas," and
thereupon the proprietors of other wells began to sell their waters
in Europe under the name of Hunyadi with an added name, and also
with the use of a close imitation of the red and white labels. It
did not appear, however, that Markus sold any water or made use of
the permission granted to him by the minister, or obtained a
license from the local authorities; but in 1876, the firm of
Mattoni & Wille became the purchasers of the plot of ground
leased by Markus and several other adjoining plots containing
springs, and in that year registered a separate trademark and name
for each of the six springs which they then acquired, among which
was a trademark bearing the name "Hunyadi Matyas." In 1877, they
began selling these waters in Hungary, claiming certain specific
differences of composition of the various waters which recommended
them for different purposes.
In February, 1876, Saxlehner made a contract with the
Apollinaris Company, Limited, of London, by which that company
agreed to purchase a certain quantity yearly, and Saxlehner bound
himself for a term, which finally expired in 1896, to give the
company the exclusive right to sell his "Hunyadi Janos" water in
Great Britain, United States, and other transmarine countries. The
company agreed to purchase at least 100,000 bottles yearly until
1878, and at least 150,000 bottles
Page 179 U. S. 26
thereafter at a stated price. In addition to this Saxlehner
agreed not to fill any orders coming from the territory granted to
the company, but to make them over to the company. A special label
was designed to be used on the bottles sold by the company of
substantially the same contents and characteristics, but of a
different color, the body of the label being a dark blue, with a
red or reddish brown central field. A narrow strip on the top of
the label contained the name of the Apollinaris Company as the
importer, and from the making of this contract large quantities of
water bearing this label were exported and sold in the United
States under the name of "Hunyadi Janos," or the shorter name
"Hunyadi."
After April, 1889, and until the cancellation of the contract in
1896, this company placed upon each bottle of Janos water which it
sold in this country a red diamond containing these words:
"The red diamond is the trademark of the Apollinaris Company,
Limited, and is meant only to indicate that the mineral waters so
marked are sold by the Apollinaris Company, Limited."
In 1887, Saxlehner caused the name "Hunyadi" to be registered
separately from "Janos" as a trademark in the United States Patent
Office. In the statement accompanying this registration, he was
again careful to refer to the red and white or red and blue label
upon which said trademark was used by him, and to repeat the
caution that he did not in anywise intend by said registration to
abridge his right to the exclusive use of said label as a whole, or
to any of its features.
The Apollinaris Company embarked in the business of selling
Hunyadi Janos water in the United States, but met with competition
from one Scherer, who imported the water under the red and white
label from Europe, buying it from parties who had purchased it from
Saxlehner. The company sought to enjoin Scherer from so selling
upon the ground of its exclusive right within the United States,
but failed in the suit. The case was decided in 1886, and reported
in 27 F. 18.
In the same year, Mattoni & Wille of Buda-Pesth consigned to
one Andres in New York 121 cases of Hunyadi Matyas water taken from
one of four springs
Page 179 U. S. 27
purchased by them, one of which was the original markus spring
above mentioned.
About the same time, the firm of Ignatz Ungar & Son began to
sell waters from a spring owned by them, which was designed
"Hunyadi Arpad," through one Joseph Ungar as their agent. This
water was put up in an imitation of Saxlehner's red and blue
labels. The Matyas water was also put up in red and white labels of
similar design. Suits were brought against them in 1886 in the
circuit court of the United States by the Apollinaris Company to
enjoin the use of the name "Hunyadi" and of the labels. These suits
were, however, withdrawn for want of jurisdiction, and two other
cases, one against Andres and the other against Ungar, were brought
by the Apollinaris Company in the supreme court of the state.
Ex parte injunctions were issued in each case in February,
1887, and remained in force until July, 1888, when the injunction
in the Ungar suit was dissolved upon application of the defendant,
and soon thereafter, the Andres suit was voluntarily discontinued.
Saxlehner appeared to have had no knowledge of these suits,
although an effort was made, which the court below found to have
been unsuccessful, to show that he was notified of the motion to
dissolve the injunction, and refused to assist in opposing it. The
defendants in these suits seem to have relied largely upon the fact
that, under the laws of Hungary as they then were, they had a right
to make use of the word "Hunyadi," provided they annexed thereto as
a suffix a word different from "Janos," as, for instance, "Matyas"
or "Arpad," and that, having obtained permission by royal grant to
make use of these names in Hungary, they were entitled to make use
of the same names in other countries.
In the meantime, however, and in 1887, Saxlehner instituted
another suit in Hungary to enjoin the use of the name "Hunyadi" as
applied to a water sold there called the "Hunyadi Josef." He was
again unsuccessful not only in preventing the use of the word
"Hunyadi," but even in preventing the use of colorable imitations
of his red and white label, apparently on account of the lack of
efficient statutes upon the subject of trademarks. As one of the
witnesses, Saxlehner's son, states, he was
Page 179 U. S. 28
advised by his lawyer that, before 1890, there was a statute
which gave protection against so-called counterfeit or imitation
labels and against literal imitations, but not imitations which
were similar merely.
In 1890, a statute was passed which gave a protection to
pictorial trademarks only, but not to trademarks designated by
name. Plaintiff, whose husband died in 1889, at once took advantage
of this statute, and instituted suits against Mattoni & Wille,
as well as a number of other infringers. In 1895, another act was
passed giving protection to verbal trademarks. The suit against
Mattoni & Wille resulted in an order of the minister of
commerce, November 26, 1894, cancelling the several trademarks of
Hunyadi Matyas water
"because, according to the opinion of three experts consulted by
the chamber, such trademarks are similar in composition, design,
and color, and also for general impression, to the trademarks
previously registered for the firm Saxlehner, and have been found
to be imitations of the same and apt to mislead the public."
A similar suit instituted by plaintiff against the Compagnie
Generale d'Eaux Universales et de Bains de Mer resulted in a
similar decree cancelling the Hunyadi Laszlo label
"because of the three experts consulted, two have pronounced
same to be entirely similar to the trademark registered for
Saxlehner, and the danger of misleading is greatly augmented by the
fact that, on this trademark, the name 'Hunyadi' is applied in a
prominent place."
The sale of the Hunyadi Laszlo water seems to have been
practically stopped by this decree, but notwithstanding the decree
against them of November 26, 1894, Mattoni & Wille continued to
use the name Hunyadi Matyas separate from the label, and exported
water as before to the defendant in this suit with red and blue
labels, which were not registered in Hungary.
In 1895, however, another act was passed in Hungary for the
registration of words or names as trademarks. Plaintiff took
advantage of this, registered the name "Hunyadi" as a trademark,
and promptly instituted another suit against Mattoni & Wille,
which resulted, in 1896, in another decree, cancelling not
Page 179 U. S. 29
only the illustrated trademarks, but the verbal trademark
"Hunyadi Matyas," and awarding to the plaintiff a priority of right
to the exclusive use of the words "Hunyadi Janos" and "Hunyadi"
alone, both as a commercial denomination as well as a trademark. In
the decree of the minister, the prior decree of the minister of
agriculture of the year 1873, legalizing the use of Hunyadi Matyas,
was referred to and treated as superseded by the laws of 1890 and
1895. "There is," says he, "therefore absolutely no connection
between that decision and the case now under consideration."
Similar decrees were rendered the same year against other
defendants who sought to appropriate the name Hunyadi, including
"Hunyadi Josef," against which Saxlehner had been unsuccessful in
1887; "Hunyadi Lajos" and also "Uj Hunyadi" or new Hunyadi, whose
litigation against Saxlehner seems to have been carried on in the
interest of the Apollinaris Company.
In fact, this litigation seems to have resulted in a complete
vindication of the right of Saxlehner to the use of the word
"Hunyadi."
Promptly upon the rendition of these decrees, and early in 1897,
this suit, as well as the others hereinafter mentioned, was
instituted.
The case came on for hearing before the circuit court upon
pleadings and proofs, and resulted in a decree enjoining the
defendant from selling or offering for sale any bitter water not
coming from the "Hunyadi Janos" wells of the plaintiff in bottles
of a straight shape, with a short neck, and bearing labels in
color, size, shape, and general design so closely similar to
plaintiff's said label as to be calculated to deceive, but
permitting the defendant to make use of the name "Hunyadi" as a
prefix to some other name than "Janos," and denying the injunction
demanded by the plaintiff against the use of the name "Hunyadi." 88
F. 61.
On appeal to the circuit court of appeals, the decree of the
circuit court was affirmed as to the name "Hunyadi," but reversed
as to the label, and the bill dismissed. 91 F. 536.
Page 179 U. S. 30
MR. JUSTICE BROWN, after stating the case as above, delivered
the opinion of the Court.
This case involves the question of plaintiff's exclusive right
to the use of the name "Hunyadi" as a trademark for Hungarian
bitter waters, as well as her right to the red and blue label and
its characteristic features used by her upon the bottles in which
she has been accustomed to sell "Hunyadi Janos" water.
From the foregoing summary of the facts, it appears:
1. That Saxlehner was the first to appropriate and use the name
"Hunyadi" as a trademark for bitter waters, and that such name,
being neither descriptive nor geographical, but purely arbitrary
and fanciful as applied to medicinal waters, was the proper subject
of a trademark.
2. That in the shape of his bottles, the design of his capsules
and his labels, he was originally entitled to be protected against
a fraudulent imitation.
3. That the defendant is selling a water under the name of
"Hunyadi Matyas" in bottles of the same size and shape as the
plaintiff's containing a label in three parallel panels of the same
colors, size, and general design as those of the plaintiff; that
their general appearance is such as to deceive the casual
purchaser, and that such bottles and labels were evidently designed
for the purpose of imposing the defendant's waters upon the public
as those of the plaintiff. A moment's comparison of the two labels
will show that, while the printed matter upon each is different
from that upon the other, their general resemblance is such as
would be likely to mislead the public into the purchasing of one
for the other. While the proprietors of the "Hunyadi Matyas" water
undoubtedly found a justification for their use of the word
"Hunyadi" in the decision of the minister
Page 179 U. S. 31
of agriculture of 1873, that decision did not cover the use of
the simulated label, the adoption of which seems to have been an
act of undisguised piracy.
Practically, the only defenses pressed upon our attention are
those of abandonment and laches.
1. To establish the defense of abandonment it is necessary to
show not only acts indicating a practical abandonment, but an
actual intent to abandon. Acts which unexplained would be
sufficient to establish an abandonment may be answered by showing
that there never was an intention to give up and relinquish the
right claimed.
Singer Mfg. Co. v. June Mfg. Co.,
163 U. S. 169,
163 U. S. 186;
Moore v. Stevenson, 27 Conn. 14;
Livermore v.
White, 74 Me. 452;
Judson v. Malloy, 40 Cal. 299;
Hickman v. Link, 116 Mo. 123. And in a recent English case
this doctrine has been applied to a case of trademarks.
Mouson
v. Boehm, L.R. 26 Ch.Div. 398. With regard to the defense of
abandonment, it may with confidence be said that there is but very
slight evidence of any personal intention on the part of Andreas
Saxlehner or his wife to abandon the use of the word "Hunyadi" or
dedicate the same to the public, and none at all of an intent to
abandon the peculiar bottles and labels in connection with which he
sold his waters. In fact, Saxlehner's whole life was a constant
protest against the use by others of the name "Hunyadi." He
discovered his spring in 1862, and in 1863 obtained permission to
give it the name of Hunyadi Spring. He carried on an uninterrupted
trade under that name until 1872. It also appears from the
certificate of the Chamber of Commerce and Industry that the
trademark "Hunyadi Janos" was, on December 12, 1872, registered,
and that previously to such registration no trademark was entered
in which the name "Hunyadi" or "Janos" was contained. It further
appears that Ignatius Markus had no sooner petitioned the town
council for a license to apply to his spring the name of "Hunyadi
Matyas" than Saxlehner entered his protest, and was at first
successful, but was finally defeated, and that, upon the strength
of this decision, other springs were opened by various parties
under trademarks, of which the word "Hunyadi" was the principal
component. At that time, owing to the inefficacy of the
Hungarian
Page 179 U. S. 32
laws upon the subject of trademarks, he could do no more. In
1877, he registered the trademark "Hunyadi Janos" in the Patent
Office of the United States. In 1884, he registered both his red
and white and red and blue labels in the Buda-Pesth Chamber of
Commerce, the latter being intended for use by the Apollinaris
Company. In 1887, he instituted an unsuccessful suit in Hungary,
against the use of the words "Hunyadi Josef." Upon the passage of
the Hungarian law of 1890 legalizing the use of pictorial
trademarks, the plaintiff again registered the three labels, and in
the following year instituted suits against all infringers in
Hungary, which finally resulted in a complete establishment of her
rights to the name of "Hunyadi." In 1887, Saxlehner registered the
word "Hunyadi" as his trademark in the Patent Office of the United
States, and in 1895, when the act for the protection of verbal
trademarks was enacted, plaintiff registered the same word in
Hungary. Saxlehner appears, however, to have successfully protested
against Mattoni & Wille's registration of "Hunyadi Matyas" in
Germany. In June, 1896, plaintiff also instituted a suit against
the Apollinaris Company in England, and obtained a final injunction
against the illegal use of the name "Hunyadi." In the decree of the
Court of Chancery, which is reproduced, it was ordered that the
Apollinaris Company deliver up to the plaintiff for destruction all
labels, trade documents, and capsules in their possession which, by
reason of their exhibiting the name "Hunyadi," are capable of being
used for business in the United Kingdom for any Hungarian bitter
water not being Hunyadi Janos water. Immediately upon the
determination of the Hungarian litigation, and in the spring of
1897, plaintiff began these suits.
There is nothing in these facts tending to show an abandonment
by Saxlehner or the plaintiff of their rights either in the name of
Hunyadi or in the labels, unless it be the fact that the trademark
registered in the United States in 1887 contained the words
"Hunyadi Janos," which, it is insisted, was a waiver of a right
thereafter to register the name "Hunyadi" alone. That position,
however, assumes that, in the absence of such reregistration, other
dealers would have the right to seize upon and appropriate the
principal word "Hunyadi" of the prior
Page 179 U. S. 33
trademark, provided they changed the final word and substituted
another. We are not prepared to endorse this contention. It is not
necessary to constitute an infringement that every word of a
trademark should be appropriated. It is sufficient that enough be
taken to deceive the public in the purchase of a protected article.
It was said by Vice Chancellor Shadwell, in 1847,
"that, if a thing contains twenty-five parts and but one is
taken, an imitation of that one will be sufficient to contribute to
a deception, and the law will hold those responsible who have
contributed to the fraud."
Guinness v. Ulmer, 10 Law Times 127. While this may be
a somewhat exaggerated statement, the reports are full of cases
where bills have been sustained for the infringement of one of
several words of a trademark.
Shrimpton v. Laight, 18
Beav. 164;
Clement v. Maddick, 1 Giff. 98;
Hostetter
v. Vowinkle, 1 Dill. 329;
Morse v. Worrell, 10 Phila.
168;
Grillon v. Guenin, Weekly Notes (1877) 14;
American Grocer Pub. Association v. Grocer Pub. Co., 25
Hun, 398. It would seem that the registration in 1887 of the single
word "Hunyadi" was really unnecessary for the protection of
Saxlehner's rights, though we see no reason for holding the former
registration an estoppel. The evidence shows that these Hungarian
bitter waters were largely known in this country as Hunyadi waters,
and that, in a certain sense, Hunyadi had become a generic word for
them. Of course, if it became such with the assent and acquiescence
of Saxlehner, he could not thereafter assert his right to its
exclusive use. But as this appropriation was made against his
constant protest, and as he apparently made every effort in his
power to put a stop to the use of it, it ought not to be charged up
against his claim that the word had become generic.
It is contended, however, that the conduct of the Apollinaris
Company was such as to show an abandonment both of the name and
label, and that plaintiff is estopped by their act in further
asserting title to them. This defense presupposes that the
Apollinaris Company had power to bind Saxlehner by its admission
and contract. Certainly the contract gave it no such power in
express terms. Saxlehner did not purport to make
Page 179 U. S. 34
the company his agent. He agreed to sell the company a certain
number of cases of his water at a certain price, and also agreed to
sell to no one else during the pendency of the contract. It was
agreed that their consignments should carry the label "Sole
importers, Apollinaris Company, Limited, 19 Regent street, London,
S.W." The company agreed not to compete with Saxlehner upon the
continent, and upon his part he agreed to make over to the company
all orders arising from countries reserved to it, as well as to
refuse such orders where he had good reason to suppose they were
intended for such countries. This is practically all there is of
the contract. No agreement was made with respect to the trademark
or the goodwill of the business, and the company reserved the
right, which it subsequently exercised, of cancelling the contract
upon notice. While such contract may have authorized the company to
prosecute infringers here, and in the conduct of those particular
suits Saxlehner may have been bound, it did not agree to do so or
preclude the institution of other suits by him, nor was there any
authority on the part of the company to bind him by its
admissions.
The conduct of the Apollinaris Company, relied upon as evidence
of abandonment, consists principally in the discontinuance of the
two suits against Ungar and Andres after preliminary injunctions
had been obtained (Saxlehner was not shown to have had knowledge of
these suits); of a conversation between Mendelson, treasurer of the
defendant company, and Steinkopf, a director of the Apollinaris
Company in London in which Mendelson spoke of his intention to sell
the Hunyadi Matyas water, of which he had obtained control, and
Steinkopf stated "that he could have no objection to that; that
there were other Hunyadi waters," and of some other statements
equally unimportant. There is little in any of these indicative of
an intent on the part of the Apollinaris Company to abandon its
exclusive right to the use of the word "Hunyadi" in America.
Certainly nothing indicative of such an intent on the part of
Saxlehner, whose conduct in Hungary was wholly inconsistent with
that theory. Evidence that the Apollinaris Company intended to
abandon an exclusive right to the name "Hunyadi" might be
Page 179 U. S. 35
sufficient as against them to defeat a suit for an injunction,
but would not be binding upon the plaintiff unless done with her
knowledge and acquiescence.
2. The defense of laches depends upon somewhat different
considerations, and, so far as it applies to the use of the word
"Hunyadi," we think it is established. It appears that, after the
decision of the minister of agriculture in 1873 sustaining the
claim of Markus to the trademark "Hunyadi Matyas," other springs
were opened whose waters were bottled under different trademarks,
in all of which the word "Hunyadi" was a component, and as early as
1886 these waters found their way to the United States, and were
put on sale here with the knowledge of the Apollinaris Company.
There is no evidence that Saxlehner had personal knowledge of these
infringements, and while something may be said in his favor in view
of his persistent efforts to establish his rights in Hungary, he
was bound to know the law in this country, and to take steps within
a reasonable time to vindicate his rights. The infringers were
making use of their trademarks under licenses from the Hungarian
government, and we see no reason to doubt that they were proceeding
in good faith to dispose of their waters under the trademarks
registered in Hungary. Under these circumstances, if Saxlehner had
intended to assert his rights under the laws of this country to the
exclusive use of the word "Hunyadi," he was bound to act with
reasonable promptness. It is true that he may have supposed the
Apollinaris Company would assert his rights in that particular for
their own benefit, but if, as we have already held, he was not
bound by their admissions, he is in no position to take advantage
of their inaction, and, as against traders who were selling bitter
waters under trademarks legalized by the Hungarian government, he
should not have waited until the name "Hunyadi" had become generic
in this country and indicative of this whole class of medicinal
waters.
We do not find it necessary to decide exactly what effects shall
be given to the various decrees of the Hungarian ministers and
courts. It is quite sufficient to observe that the use of the words
"Hunyadi Matyas" was expressly sanctioned
Page 179 U. S. 36
within the Kingdom of Hungary by the minister of agriculture in
1873, and it would seem that, under our treaty with the
Austro-Hungarian Empire of June 1, 1872, 17 Stat. 917, the right to
use the word became available in the United States. By the first
article of this treaty,
"every reproduction of trademarks which, in the countries or
territories of the one of the contracting parties, are affixed to
certain merchandise . . . is forbidden in the countries or
territories of the other of the contracting parties,"
and by the same article,
"If the trademark has become public property in the country of
its origin, it shall be equally free to all in the countries or
territories of the other of the two contracting parties."
In view of the decision of the minister of agriculture of 1873
sustaining the trademark "Hunyadi Matyas" and the subsequent
adoption of the word "Hunyadi" in connection with some other word
by numerous proprietors of similar waters, it seems to be clear
that the word became, and continued to be for twenty years, public
property in the Kingdom of Hungary, and it is difficult to escape
the conclusion that it also became so here. It is true the law of
Hungary was subsequently changed in this particular, and that the
courts of that country held the plaintiff entitled to the benefit
of that change; but it needs no argument to show that if the word
once became public property here, a subsequent change in the law in
her own country would not inure to the advantage of the plaintiff
here. The right to individual appropriation, once lost, is gone
forever.
If, upon the other hand, we assume that the case can be decided
without reference to the law of Hungary or the decisions of its
officers and courts, the plaintiff is still at a disadvantage by
reason of not instituting her suits more promptly. Saxlehner knew
as a matter of fact that the minister of agriculture had overruled
his protest, and that the word "Hunyadi" had become public property
in the Kingdom of Hungary. He knew that a large number of dealers
would appropriate the word, and that he was himself selling a large
quantity of bitter water in the United States. He must also have
known, or at least had good reason to know, that his competitors
were doing the same thing. Under such circumstances, he should have
instituted
Page 179 U. S. 37
inquiries upon his own account, and, regardless of his contract
with the Apollinaris Company, have seen to it that his own
interests were protected. If the Apollinaris Company were not his
agent for the protection of his rights in the United States, then
it was incumbent upon him to assert such rights personally or
through some other recognized medium. In now invoking our laws, his
successor is bound to show that she has complied with our
requirements of diligence and promptness in instituting suit. She
has failed in this particular. By twenty years of inaction, she has
permitted the use of the word by numerous other importers, and it
is now too late to resuscitate her original title.
3. This argument, however, has but a limited application to the
appropriation of the bottles and red and blue labels covering them,
which appear to have been seized upon by the proprietors of the
Matyas spring as well as by others, without a shadow of
justification and in fraud of plaintiff's rights. As already
stated, Saxlehner, when he began selling his water, adopted not
only the name "Hunyadi Janos," but a straight bottle with a short
neck, to the top of which was attached a metal capsule with an
inscription, as well as a peculiar label, covering almost the whole
body of the bottle, divided into three rectangular panels of red
and white, which at the time of his contract with the Apollinaris
Company was changed to red and blue so far as it applied to waters
sold to that company for the American market. A narrow strip on the
top of the label was added, containing the imprint of the
Apollinaris Company as importers, and from 1876, the date of the
contract, until 1886, the business was carried on by the
Apollinaris Company in this country without any important
competitors. In 1886, however, Mattoni & Wille began to consign
"Hunyadi Matyas" bitter water to New York, put up in bottles
bearing a red and white label. In 1889, the Eisner & Mendelson
Company, defendant herein, made a contract with Mattoni & Wille
by which it obtained the sole agency for the United States and
Canada for the sale of their bitter waters for the term of twenty
years. During 1889 and 1890, defendant imported some 20,000 bottles
under the name of "Royal
Page 179 U. S. 38
Hungarian Bitter Water," under a red and white label devised by
themselves. In 1890, the defendant took a new lease for five years,
with an option for a renewal for twenty years, from Mattoni of the
Hunyadi Matyas spring. The circuit court found in this connection
that
"the reason which induced Eisner to make this lease was his
desire to control the American label, so that neither Mattoni &
Wille nor European purchasers could interfere with the American
trade. A new label was therefore forthwith devised by Eisner which
was a reddish brown and blue label, and is described in the
complaint containing the name 'Hunyadi Matyas,' 'Buda Keseruviz'
and a medallion portrait of King Stephen in the center of the red
division. He intentionally simulated the Saxlehner United States
label for the purpose of obtaining, by means of the simulation, a
part of the goodwill which the Janos water had gained"
We are pointed to no decision of the Hungarian authorities
authorizing the use of Saxlehner's label by other parties. The
petition of Markus did not ask for permission to use it. The
decision of 1873 did not grant it. The decree favorable to
Saxlehner did not mention it, but dealt only with the name
"Hunyadi." Notwithstanding repeated violations of his label, he
seems to have been unable to obtain redress on account of the
inefficacy of the laws until 1896, when a competitive trademark was
ordered to be cancelled in his favor by reason of its resemblance
to Saxlehner's label, as well as by the use of the word "Hunyadi."
In all his applications, both in Hungary and the United States, for
the registration of his trademark name, there is an express
reservation of his right to the medallion head of Hunyadi and to
his label. Indeed, we find no authority whatever for the
appropriation of this label by any of Saxlehner's competitors, and
nothing to show that it was not a case of undisguised piracy. The
only justification for its appropriation now insisted upon is the
fact that, by general use in this country for the past ten years,
it has come to be recognized as a kind of generic label applicable
to all Hungarian bitter waters, and if Saxlehner had originally an
exclusive right to make use of it, that right has been lost by his
acquiescence and that of the Apollinaris Company in its general use
by other
Page 179 U. S. 39
importers. But in cases of actual fraud, as we have repeatedly
held, notably in the recent case of
McIntire v. Pryor,
173 U. S. 38, the
principle of laches has but an imperfect application, and delay
even greater than that permitted by the statute of limitations is
not fatal to plaintiff's claim. We have only to refer to the cases
analyzed in that opinion for this distinguishing principle that,
where actual fraud is proved the court will look with much
indulgence upon the circumstances tending to excuse the plaintiff
from a prompt assertion of his rights. Indeed, in a case of an
active and continuing fraud like this, we should be satisfied with
no evidence of laches that did not amount to proof of assent or
acquiescence.
As applicable to trademarks, two cases in this Court are
illustrative of this principle. In
McLean v. Fleming,
96 U. S. 245, there
had been apparently a delay of about twenty years in instituting
proceedings, but the Court observed that
"equity courts will not, in general, refuse an injunction on
account of delay in seeking relief where the proof of infringement
is clear, even though the delay may be such as to preclude the
party from any right to an account for past profits."
An injunction was granted in this case, but it was held that, by
reason of inexcusable laches, the complainant was not entitled to
an account of gains or profits.
See also Harrison v.
Taylor, 11 Jur.N.S. 408. An effort was made in
Menendez v.
Holt, 128 U. S. 514, to
obtain a reconsideration of the principle of
McLean v.
Fleming so far as it was therein held that an injunction might
be awarded, though the complainant were precluded by his delay from
obtaining an account of gains and profits. But the Chief Justice
observed:
"The intentional use of another's trademark is a fraud, and when
the excuse is that the owner permitted such use, that excuse is
disposed of by affirmative action to put a stop to it. Persistence
then in the use is not innocent, and the wrong is a continuing one,
demanding restraint by judicial interposition when properly
invoked. Mere delay or acquiescence cannot defeat the remedy by
injunction in support of the legal right unless it has been
continued so long and under such circumstances as to defeat the
right itself, . . . nor will the issue of an injunction
Page 179 U. S. 40
against the infringement of a trademark be denied on the ground
that mere procrastination in seeking redress for depredations had
deprived the true proprietor of his legal right.
Fullwood v.
Fullwood, L.R. 9 Ch.Div. 176. . . . So far as the act
complained of is completed, acquiescence may defeat the remedy on
the principle applicable when action is taken on the strength of
encouragement to do it, but so far as the act is in progress and
lies in the future, the right to the intervention of equity is not
generally lost by previous delay, in respect to which the elements
of an estoppel could rarely arise."
In the case under consideration, we do not see how it is
possible to wring an abandonment on the part of Saxlehner or the
plaintiff from the repeated and persistent efforts made by them in
Hungary to assert their rights. But it was not until the law was
amended in 1895 that these efforts were successful. It can scarcely
be wondered at that, in view of the disabilities under which he
labored in his own country, Saxlehner should have thought it futile
to undertake the prosecution of his rights in a distant land. As
the defendant is unable to call to his assistance any authority
from the home government for the use of these simulated labels, and
as they and their vendors in Hungary seized upon these labels with
knowledge of Saxlehner's rights, it is no hardship to enjoin their
further use and to hold defendant liable for such profits as it may
have realized or for such damages as the plaintiff may have
sustained by reason of the illegal use.
It seems, however, that in 1893, the defendant company began to
affix to their bottles of Matyas water an additional label,
consisting of a red seal upon a white ground, and containing the
words,
"Ask for the Seal brand. This label has been adopted to protect
the public from imitation and as a guarantee of the genuineness of
the Hunyadi Matyas Water imported solely by Eisner & Mendelson
Co., New York."
The attention of druggists was called to this Seal brand by
advertisements in the trade papers. The circuit court was of
opinion that, as the word "Hunyadi" had become generic, and was no
longer subject to individual appropriation, this label was a
sufficient attempt on the part of defendant to assert that it was
the seller of the
Page 179 U. S. 41
Matyas water, and that from its adoption it freed the defendant
from the charge, which before that time was true, that it was
cajoling or deceiving the ordinary purchaser into the belief that
he was buying the Janos water, and in its decree refused to enjoin
the defendant from selling such water under the red and blue label
bearing the name "Hunyadi Matyas" in connection with the Seal brand
label.
We are of opinion, however, that, as defendant's bottle and
label are a clear infringement upon those of the plaintiff, it
would be destructive to her just rights to permit the use of such
bottles and labels by the defendant, notwithstanding the affixing
of the Seal brand, which is a mere private mark of the importer.
The injury to her is in the simulation of her bottle and label, and
she has the right to require that her competitors shall be forced
to adopt a style of bottle which no one with the exercise of
ordinary care can mistake for hers. While this label may have been
adopted in good faith, we do not think its employment would prevent
the casual customer from purchasing this water as that of the
plaintiff, and that the injunction should also go against its use
and that plaintiff should recover her damages therefor.
We are therefore of opinion that the decree of the circuit
court of appeals must be reversed, and the case remanded to the
Circuit Court for the Southern District of New York with directions
to reinstate its decree of April 29, 1898, except so far as it
denies to the plaintiff an injunction against the use of the Seal
brand labels and damages sustained by such use, and for further
proceedings not inconsistent with the opinion of this
Court.
