Browne-Vintners Co. v. NATIONAL D. & C. CORP.

• Decision Date: 15 May 1957
• Citation: 151 F. Supp. 595
• Parties: BROWNE-VINTNERS CO., Inc., G. H. Mumm & Co., Société Vinicole de Champagne Successeurs, G. H. Mumm & Co. (Société Vinicole de Champagne Successeurs) of New York, Inc., Plaintiffs, v. NATIONAL DISTILLERS AND CHEMICAL CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of New York

151 F. Supp. 595

BROWNE-VINTNERS CO., Inc., G. H. Mumm & Co., Société Vinicole de Champagne Successeurs, G. H. Mumm & Co. (Société Vinicole de Champagne Successeurs) of New York, Inc., Plaintiffs, v. NATIONAL DISTILLERS AND CHEMICAL CORPORATION, Defendant.

United States District Court S. D. New York.

May 15, 1957.

C. P. Goepel, New York City, for plaintiffs.

Breed, Abbott & Morgan, New York City, for defendant, Gerald J. Craugh, New York City, and Morris, Pearce, Gardner & Pratt, David A. Fegan, Washingon, D. C., of counsel.

McGOHEY, District Judge.

This is an action for injunctive relief and damages for alleged infringement of the three registered trade-marks applied to champagne, "G. H. Mumm & Co.," "Mumm" and "Mumm-Reims"; and for unfair competition. Jurisdiction rests on the trade-mark laws of the United States and diverse citizenship of the parties.

The defendant, by selling Rhine wine under the name "G. H. v. Mumm," has competed unfairly with the plaintiffs and infringed their trade-mark "G. H. Mumm & Co." A decree of injunction will be entered. As the plaintiffs showed no pecuniary loss, an accounting will not be ordered.

The plaintiffs are G. H. Mumm & Co. Société Vinicole de Champagne, Successeurs, a French corporation (hereafter called the French Société), which produces champagne at Rheims, France; G. H. Mumm & Co. Société Vinicole de Champagne, Successeurs of New York, Inc., a New York corporation (hereafter called the New York Société), which is a wholly owned subsidiary of the French Société and the present registered owner of the trade-marks; and Browne-Vintners Co., Inc., a Delaware corporation, which imports champagne produced by the French Société into the United States and sells it here under the trademarks, pursuant to exclusive licenses from the French and New York Sociétés.

The defendant is National Distillers Products Corporation (hereafter called National), a Virginia corporation, which was substituted for the original defendant Bellows & Co., Inc., a New York corporation, after the latter was merged with National.

In 1934 Bellows & Co. commenced to distribute bottled Rhine wine in the United States as the agent of the supplier which was also the producer of the wine. At that time the main label on the bottles indicated "Hermann v. Mumm'sche Kellerei" as the producer. In 1937, this was changed to "Johannisberger aus der G. H. v. Mumm'sche Kellerei" (Johannisberg wine from the cellar of G. H. v. Mumm). The main label also contains the ancient coat of arms of the Mumm family. On another label affixed to the neck of the bottles appear the words "G. H. v. Mumm'sche Gutsverwaltung" (Administration of the Estate of G. H. v. Mumm). The latter is located at Johannisberg, Germany. It is the present producer of the Rhine wine and the supplier of National.

"Godefroy H. v. Mumm & Co., Kellereinen of Eltville-am-Rhein, Germany" is the producer of various wines other than Rhine wine, including a sparkling wine similar to champagne. It is a limited partnership with share owners, of whom the largest and the legally and financially responsible partner is Godefroy Hermann von Mumm who for convenience will hereafter be called "Godefroy." He is also the legal and financially responsible head of the "Gutsverwaltung." The estate is that of Hermann von Mumm, who was his father.

The complaint alleged that since 1853 the French Société and its predecessors have sold champagne in the United States under the trade-marks "Mumm," "G. H. Mumm & Co." and "Mumm-Reims"; that the American Société now owns those trade-marks and their United States registrations; that Browne-Vintners is the sole agent in the United States for the sale and distribution of the French Société's product under those trade-marks; that the defendant National imports Rhine wine from G. H. v. Mumm'sche Kellerei and sells it in interstate commerce under the latter name, thus tending to and in fact causing confusion and deception as to the source of the Rhine wine; all of which constitutes infringement and unfair competition, done with knowledge and for the purpose of trading on the good will attached to the French Société's trade-marks. It asks that National be enjoined "from using upon or in connection with the sale of wines or any other beverages the words G. H. v. Mumm or the word Mumm or any other colorable imitation of any of the same." (Emphasis supplied.)

National's answer denies these allegations except the allegation that it imports Rhine wine from G. H. v. Mumm'sche Kellerei and sells it here in interstate commerce, and pleads as defenses that the complaint failed to state a relievable claim and that the plaintiff has been guilty of laches.

More than a year after the answer was filed National moved for leave to amend and interpose a counterclaim in which it asserted, "if the court should find" that "the marks of the defendant's supplier and the plaintiff's marks are confusingly similar and likely to cause confusion * * * then the defendant's supplier and not any of the plaintiffs has the exclusive right to the use of the mark or word `Mumm,' or any combination thereof with other words, in association with the sale and distribution of potable beverages * * *"; and prayed for a decree that the "defendant's supplier has the sole and exclusive right to the use of the trade-marks `Mumm,' `Mumm-Reims' and `G. H. Mumm & Co.' and any like words or combinations thereof" and that the "plaintiffs and those controlled by them" be enjoined from using those words or any like words or combinations thereof "upon or in connection with the sale of wines, champagnes or other beverages." (Emphases supplied.)

Judge Weinfeld denied that motion but gave National's supplier leave to intervene in this action, D.C., 15 F.R.D. 205. This, the latter did not do, although it is under agreement to hold National harmless.

In its brief filed after trial National does not, as it did in its proposed counterclaim, assert its claims with respect to ownership of the trade-marks and the validity of the United States registrations, in the subjunctive. It now contends unconditionally that the evidence in this case requires a decree that only National's supplier, of which Godefroy is the head, has "the right to the exclusive use of the marks `Mumm' on vinous products"; that the plaintiffs have no right whatsoever in the trade-marks; that the registrations thereof in the Patent Office should be ordered cancelled; and that the plaintiffs should be permanently enjoined from "any and all use of the name `Mumm' on and in association with vinous products" except that the French Société "might be permitted to continue to use the name `G. H. Mumm & Co. Société Vinicole de Champagne, Successeurs' on and in association with French champagne, provided that all the words of such name are of the same size, color, style and prominence, and further provided its labels contain an appropriate notation to the effect that it is not associated with the defendant's supplier."

This is but the latest in a long series of law suits over these trade-marks. It will be helpful in understanding the issues presented here, to summarize the historical context in which they arise.

For almost a century and a half the Johannisberg vineyards have been owned and operated by successive generations of the Mumm family whose ancestor Peter Arnold Mumm founded the family wine business at Frankfort, Germany, fifty years before the Johannisberg properties were acquired in 1811. The Rhine and other wines produced on the family vineyards in Germany have been sold under some form of the name "Mumm" for very close to two centuries.

In 1827 members of the family then engaged in the wine business in Germany under the name "P. A. Mumm & Co., Frankfort, Cologne, Johannisberg," established a champagne business at Rheims, France. This, also, was carried on by successive generations of the family until 1914, usually under management by the same persons who managed the wine business in Germany. At first it went under the name "P. A. Mumm-Giesler & Co.-Rheims." In 1837 that firm was dissolved and until 1853 the champagne business was carried on under the German wine company's name to which was added the word "Rheims," namely, "P. A. Mumm & Co., Frankfort, Cologne, Johannisberg, Rheims." In 1914 it was being conducted under the name "G. H. Mumm & Co.-Rheims," as it had been since 1853 when Georges Hermann Mumm, the grandson of Peter Arnold and the great-grandfather of Godefroy, having succeeded to control of the family affairs, decided to carry on the champagne business under his name. Champagne sold under the name "G. H. Mumm" had enjoyed renown in the United States and throughout the world for many years prior to 1914.

After the outbreak of World War I, France seized the champagne company and all its assets including trade-marks and good will as alien enemy property; and in 1920 sold them to the French Société whose name was then "Société Vinicole de Champagne." The change to its present name "G. H. Mumm & Co. Société Vinicole de Champagne, Successeurs" was made in 1946. At the time of the seizure of G. H. Mumm & Co.-Rheims, Godefroy's father, Hermann von Mumm, was its head. It then owned the trade-marks: "G. H. Mumm & Co.," "Mumm" and "Mumm-Reims" which in 1906 it had registered in the United States. By the terms of the Versailles Treaty, Germany undertook to indemnify its nationals for property seized by France and thereafter, under laws enacted pursuant to the Treaty, paid the Mumm family more than $1.7 million-gold. Since 1920 the French Société has produced champagne and sold it throughout the world including, since 1933 at least, the United States, under the names "G. H. Mumm & Co.," "Mumm" and "Mumm-Reims." In 1923, the French Société registered the three trade-marks in its own name as the successor of G. H. Mumm & Co.-Rheims. The registrations were subsequently renewed and in 1948 they were...