1. Geographic names often acquire a secondary signification
indicative not only of the place of manufacture but of the name of
the manufacturer or producer, and the excellence of the thing
manufactured or produced, which enables the manufacturer or owner
to assert an exclusive right to such name as against everyone not
doing business within the same geographical limits, and even as
against them, if the name be used fraudulently for the purpose of
misleading buyers as to the actual origin of the thing produced or
palming off the productions of one person as those of another.
2. One otherwise entitled to the exclusive use of a name may
lose the right of enforcing it by laches and acquiescing for a
period of nearly thirty years in its use and by allowing the name
to become generic and indicative of the character of the
article.
The rule of
nullum tempus cannot be invoked in our
courts in favor of a foreign government suing for the benefit of an
individual which is its lessee.
Quaere, and not decided, whether the rule could be
invoked by a foreign government even when suing in its sovereign
capacity.
Page 191 U. S. 428
It was not intended by Article VIII of the Industrial Property
Treaty of June 11, 1887, to put citizens of a foreign country on a
more favorable footing than our own citizens or to exempt them from
ordinary defenses which might be made by the party prosecuting.
Under Article II of such treaty, the rights of the French Republic
are the same and no greater than those of the United States would
be.
3. Where it does not appear that there has been any actual fraud
or an attempt to foist an article upon the public as that of the
complainant and the articles differ in many respects, the use of a
name, the exclusive use whereof is claimed by complainant,
accompanied by a descriptive word equally prominent which
differentiates it from the original name on a label wholly
dissimilar in style, language and form, will not, after a long
continued use without protest, justify the interference of a court
of equity to restrain its use.
This was a bill in equity brought in the Circuit Court of the
United States for the Northern District of New York by the French
Republic, as owner, and La Compagnie Fermiere de l'Etablissement
Thermal de Vichy (hereinafter termed the Vichy company), as lessee,
of the springs of Vichy, France, against the Saratoga Vichy Spring
Company, for the unlawful use of the word "Vichy," claimed by the
plaintiffs as a commercial name or trademark, and appropriated for
the waters of the defendant, which are drawn from a certain natural
spring at Saratoga, New York.
Defense: that for fifty years, mineral water has been sold
throughout the world under the name of "Vichy," and that such name
has come to denote a type of water, namely, alkaline, noncathartic,
carbonated water, and does not stand for the water of any one
spring; that defendant has never sold Vichy as and for that of the
plaintiffs, nor in resemblance thereto, but has so labeled its
water that the purchaser shall know that it is a natural mineral
water of Saratoga, and that plaintiffs' claim is stale.
The bill was dismissed by the circuit court upon the ground that
plaintiffs had no exclusive right to the use of the word "Vichy,"
and that defendant had never been guilty of an attempt to palm off
its waters as the imported article. 99 F. 733. On appeal, the court
of appeals reversed
Page 191 U. S. 429
the decision of the circuit court and granted an injunction
against the use of one particular label, or "any other label in
which the place of the origin of the water is not as plainly and
prominently made known as the fact that it is named
V
ichy.'" 107 F. 459.
Plaintiffs thereupon applied for a writ of certiorari, which was
granted. Defendant made no similar application, but acquiesced in
the decree and discontinued the offending label.
Page 191 U. S. 434
MR. JUSTICE BROWN delivered the opinion of the Court.
This suit is brought to vindicate the right of plaintiffs to the
exclusive use of the word "Vichy" as against the defendant, and,
incidentally, as against all persons making use of the word to
denote a water not drawn from the springs of Vichy, now owned by
the French Republic, and leased to the Vichy company.
The title of the French Republic to the springs of Vichy, a
commune of France, is clearly established. Known for their
medicinal qualities since the time of the Roman Empire, and
originally belonging to the feudal lord of Vichy, they were sold by
him in 1444, together with the castle and its dependencies, to
Pierre, Duke of Bourbon, in whose family they remained until 1531,
when, for the treason of the Constable of Bourbon, they were
confiscated by Francis I, and became the property of the Crown, in
whose possession they remained until 1790, when they were united to
the public domain, and afterwards passed to the French Republic and
its successors, and were operated directly by the officers of the
state until June, 1853, when they
Page 191 U. S. 435
were leased for a fixed rental to a firm of which the Vichy
company is the successor. The bottling and exportation of the
waters was commenced before 1716, and in 1853 they began to be
exported directly to this country, the shipments in 1893 amounting
to about 300,000 bottles. For many years they have been bottled and
sold all over the world.
The rights of the defendant originated from a spring discovered
in 1872 in the township of Saratoga Springs, New York, the waters
of which, though differing from the water of the Vichy spring both
in ingredients and taste, have a certain resemblance to them which
suggested the use of the word "Vichy." The water began to be
bottled and sold in 1873 by the owners of the spring, and in 1876
became the property of the defendant which has since sold the
water, using various bottles, circulars, and labels, containing
more or less conspicuously displayed the word "Vichy."
1. As the waters of Vichy had been known for centuries under
that name, there is reason for saying the plaintiffs had, in 1872,
acquired an exclusive right to the use of the word "Vichy" as
against every one whose waters were not drawn from the springs of
Vichy, or at least, as observed by a French court, "from the same
hydrographical region which may be called generally the basin of
Vichy."
True, the name is geographical, but geographical names often
acquire a secondary signification indicative not only of the place
of manufacture or production, but of the name of the manufacturer
or producer and the excellence of the thing manufactured or
produced, which enables the owner to assert an exclusive right to
such name as against everyone not doing business within the same
geographical limits, and even as against them if the name be used
fraudulently for the purpose of misleading buyers as to the actual
origin of the thing produced or of palming off the productions of
one person as those of another.
Elgin National Watch Co. v.
Illinois Watch Co., 179 U. S. 665;
Newman v. Alvord, 51 N.Y. 189;
Lee v. Haley, 5
Ch.App. 155;
Wotherspoon v. Currie, L.R. 5 H.L. 508;
Page 191 U. S. 436
Braham v. Beachim, L.R. 7 Ch.Div. 848;
Thompson v.
Montgomery, L.R. 41 Ch.Div. 35;
Seixo v. Provezende,
L.R. 1 Ch.App. 192.
In a French case arising in this connection, and brought by the
Vichy company against a rival company owning two springs in the
same neighborhood, complaining that, by the composition of its name
and the arrangement of its labels, as well as by the tenor of its
different appeals to the public, the company owning these springs
had created a damaging confusion between the two companies and
their product, it was held that, while the rival company had a
right to the use of the word "Vichy," it was bound to state the
name of its springs, the place where they were located, as "near
Vichy" in letters identical in height and thickness as those of the
word Vichy in their advertisements and labels, and also the name of
their springs in letters at least half their size -- in other
words, it was bound to adopt such precautions as would fully
apprise the public that it was not purporting to sell the waters of
the original Vichy company, though, being in the same basin, they
were entitled to use that designation.
2. A serious difficulty in the way of enforcing an exclusive
right on the part of the plaintiffs to the use of the word Vichy is
their apparent acquiescence in such use by others. For thirty
years, the defendant, the Saratoga Vichy Company, has been openly
and notoriously bottling and selling its waters under the name of
the "Saratoga Vichy" until its competition has become an extremely
serious matter to the plaintiffs, whose importations began in 1853
with only 316 bottles, which by the year 1893 had increased to
298,500 bottles. The entire shipment of the Vichy company amounted
in 1896 to nearly ten millions of bottles. Under such
circumstances, and in view of the further facts that other waters
were openly manufactured and sold in this country under the name of
Vichy, and that a manufactured water was dealt out by the glass
under that name in innumerable soda water fountains throughout the
country, as shown by the record in this case, it is impossible to
suppose that the plaintiffs were not aware of these
infringements
Page 191 U. S. 437
upon their exclusive rights. It argues much more than ordinary
indifference and inattention to suppose that the large amount of
this rival water could be advertised and sold all over the country
without the knowledge of their agents, who would naturally be
active in the protection of their own interests, if not the
interests of their principals. In fact, they had allowed the name
to become generic and indicative of the character of the water.
With all these facts before them, and with the yearly increasing
sales and competition of the defendant company, no move was made
against them for twenty-five years, and until 1898, when this bill
was filed. A clearer case of laches could hardly exist.
Saxlehner v. Eisner, 179 U. S. 19,
179 U. S.
36.
It is said, however, that the doctrine of laches has no
application to the neglect of the government to pursue trespassers
upon its rights, and that the French Republic is entitled to the
benefit of that rule. It is at least open to doubt whether the
maxim
nullum tempus, applicable to our own government, can
be invoked in behalf of a foreign government suing in our courts.
The doctrine is one of public policy, and is based upon the
assumption that the officers of the government may be so busily
engaged in the ordinary affairs of state as to neglect a
vindication of its interests in the courts. Whether this exemption
can be set up by a foreign government in the prosecution of suits
against our own citizens -- in other words, whether the latter are
not entitled to the benefit of the ordinary defenses at law -- is a
question which does not necessarily arise in this case, and as to
which we are not called upon to express an opinion.
However this may be, it is clear that the rule of
nullum
tempus cannot be invoked in this case. While the French
Republic is nominally the plaintiff, its interest in the litigation
is little, if anything, more than nominal. For fifty years, it has
ceased to operate these springs through its own agents, since in
1853, the then Emperor of the French leased them to the
predecessors of the Vichy company, which has since that time
bottled and sold the water under successive leases as its own, upon
the payment of an annual rental of 100,000 francs
Page 191 U. S. 438
to the government. Its present lease does not expire until 1934.
It thus appears that the French Republic has had no real interest
in the product of the springs for fifty years, and that it can have
no such interest for thirty years to come. Its only title to sue,
then, is in a possible depreciation of the rental value of this
property after the lapse of the present lease, caused by the
unlawful use of the name Vichy by the defendant. This is quite too
inappreciable to answer the defense of laches, and indeed it is
doubtful whether it justifies its joinder as co-plaintiff in the
suit. To hold that the French Republic appears in this litigation
to be suing for the use and benefit of the Vichy company would more
accurately describe their relations.
In such cases, either where the government is suing for the use
and benefit of an individual or for the prosecution of a private
and proprietary, instead of a public or governmental, right, it is
clear that it is not entitled to the exemption of
nullum
tempus, and that the ordinary rule of laches applies in full
force.
United States v. Beebe, 127 U.
S. 338;
New Hampshire v. Louisiana,
108 U. S. 76;
Maryland v. Baldwin, 112 U. S. 490;
United States v. Des Moines &c. Co., 142 U.
S. 510,
142 U. S. 538;
Curtner v. United States, 149 U.
S. 662;
United States v. American Bell Telephone
Co., 167 U. S. 224,
167 U. S. 264;
Miller v. State, 38 Ala. 600;
Moody v. Fleming, 4
Ga. 115.
The plaintiffs, then, are put in this dilemma: if the Republic
be a necessary party to the suit here, as it sues in its private
and proprietary capacity, the defense of laches is available
against it. Upon the other hand, if it be an unnecessary party, the
defense of laches may certainly be set up against the Vichy
company, its co-plaintiff.
We do not think the position of the plaintiffs in this
connection is affected or strengthened by the eighth article of the
Treaty of June 11, 1887, with France and other nations, known as
the Industrial Property Treaty (Comp. of Treaties in Force 1899,
684), which declares that
"the commercial name shall be protected in all the countries of
the Union without obligation of deposit,
Page 191 U. S. 439
whether it forms part or not of a trade or commercial mark."
That article was evidently designed merely to protect the
citizens of other countries in their right to a trademark or
commercial name, and their right to sue in the courts of this
country, as if they were citizens of the United States. It could
never have been intended to put them on a more favorable footing
than our own citizens, or to exempt them from the ordinary defenses
that might be made by the party prosecuted.
This is made the more apparent from Art. II of the treaty, which
reads as follows:
"The subjects or citizens of each of the contracting states
shall enjoy, in all the other states of the Union, so far as
concerns patents for inventions, trade or commercial marks, and the
commercial name, the advantages that the respective laws thereof at
present accord or shall afterwards accord to subjects or citizens.
In consequence, they shall have the same protection as these
latter, and the same legal recourse against all infringements of
their rights, under reserve of complying with the formalities and
conditions imposed upon subjects or citizens by the domestic
legislation of each state."
If there were any doubt about the rights of the plaintiffs under
the eighth article, they are completely removed by the wording of
the second. The rights of the French Republic are the same and no
greater under this article than those of the United States would
be.
3. But conceding that the defense of laches would not be
available in a case of actual fraud, or an attempt to foist upon
the public the waters of the defendant as those of the original
Vichy spring,
McIntire v. Pryor, 173 U. S.
38;
Saxlehner v. Eisner &c. Co.,
179 U. S. 19;
Prevost v.
Gratz, 6 Wheat. 481,
19 U. S. 497;
McLean v. Fleming, 96 U. S. 245;
Menendez v. Holt, 128 U. S. 514, we
find but little evidence of such purpose in this record. The two
waters not only differ in their ingredients and taste, but the
French Vichy is a still, and the Saratoga Vichy, as well as the
other American Vichies, an effervescing, water. There is no attempt
made whatever by the defendant to simulate the
Page 191 U. S. 440
label of the plaintiffs upon the body of the bottle. The word
Vichy is never used by the defendant alone, but always in
connection with Saratoga. The two labels not only differ wholly in
their design and contents, but even in their language -- that of
the plaintiffs being wholly in French. Plaintiffs' label contains
the word Vichy prominently displayed, with a picture of the thermal
establishment where it is bottled, and the name of the particular
spring. Defendant's label contains the two words, "Saratoga Vichy,"
in type of the same size and displayed with equal prominence, and a
statement that the Saratoga Vichy is far superior to the imported
Vichy. It is true that, in 1896, a small label was attached to the
neck of the bottle upon which the name Vichy was more prominent
than that of Saratoga. This label was printed upon a white
background, with the word Vichy in prominent red letters, while the
word Saratoga appeared in much smaller black letters included
between the extended "V" and "Y" of the word Vichy. The circuit
court considered this to be immaterial, and thought it
inconceivable that anyone of ordinary perception could be induced
to buy this water as the imported Vichy. A majority of the court of
appeals, however, while agreeing with the circuit court as to the
total dissimilarity of the main labels, thought a purchaser might
be deceived by the neck label into buying the Saratoga for the
imported article, and in that particular reversed the circuit
court, and enjoined the use of the neck label or of any other label
in which the place of the origin of the water was not as plainly
and as prominently made known as the word Vichy. As the defendant
did not apply for a certiorari, and has acquiesced in the decree of
the circuit court of appeals by changing the offending label, we
are not called upon to express an opinion as to the deceptive
character of this label.
Hubbard v. Tod, 171 U.
S. 474.
It was said by this Court in
Canal
Co. v. Clark, 13 Wall. 322,
"In all cases where rights to the exclusive use of a trademark
are invaded, it is invariably held that the essence of the wrong
consists in the sale of the goods of one manufacturer or vendor
Page 191 U. S. 441
as those of another, and that it is only when this false
representation is directly or indirectly made that the party who
appeals to a court of equity can have relief."
Applying this doctrine to the case under consideration, we are
clearly of the opinion that there is no such similarity in the
labels as at present used, and that there is no such fraud shown in
the conduct of the defendant, as would authorize us to say that
plaintiffs are entitled to relief.
The decree of the court of appeals is therefore
Affirmed.