Emilie Saxlehner v. Eisner Mendelson Company

• Citation: 179 U.S. 19,45 L.Ed. 60,21 S.Ct. 7
• Decision Date: 15 October 1900
• Docket Number: No. 29,29
• Parties: EMILIE SAXLEHNER, Petitioner , v. EISNER & MENDELSON COMPANY
• Court: United States Supreme Court

179 U.S. 19

21 S.Ct. 7

45 L.Ed. 60

EMILIE SAXLEHNER, Petitioner,

v EISNER & MENDELSON COMPANY.

No. 29.

Argued March 22, 23, 1900.

Decided October 15, 1900.

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 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 be- come 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 defend- ant 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 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 Keser uviz Forr as,' 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...