La Republique Francaise v. Saratoga Vichy Spring Company

• Citation: 24 S.Ct. 145,191 U.S. 427,48 L.Ed. 247
• Decision Date: 07 December 1903
• Docket Number: No. 53,53
• Parties: LA REPUBLIQUE FRANCAISE et al., Petitioners , v. SARATOGA VICHY SPRING COMPANY
• Court: United States Supreme Court

191 U.S. 427

24 S.Ct. 145

48 L.Ed. 247

LA REPUBLIQUE FRANCAISE et al., Petitioners,

v SARATOGA VICHY SPRING COMPANY.

No. 53.

Argued November 4, 1903.

Decided December 7, 1903.

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 trade-mark, 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 clusive 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 Fed. 733. On appeal, the court of appeals reversed 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 'Vichy." 46 C. C. A. 418, 107 Fed. 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.

Messrs. Charles Bulkely Hubbell, Archibald Cox, and Archibald Hopkins for petitioners.

[Argument of Counsel from pages 429-431 intentionally omitted] Messrs. Edgar T. Brackett and Walter P. Butler for respondent.

Statement by Mr. Justice Brown:

[Argument of Counsel from pages 431-434 intentionally omitted] 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 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 every one 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 Nat. Watch Co. v. Illinois Watch Co. 179 U. S. 665, 45 L. ed. 365, 21 Sup. Ct. Rep. 270; Newman v. Alvord, 51 N. Y. 189, 10 Am. Rep. 588; Lee v. Haley, L. R. 5 Ch. App. 155; Wotherspoon v. Currie, L. R. 5 H. L. 508; 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 infringe- ments 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,...