GH Mumm Champagne v. Eastern Wine Corporation

• Decision Date: 14 October 1943
• Parties: G. H. MUMM CHAMPAGNE et al. v. EASTERN WINE CORPORATION.
• Court: U.S. District Court — Southern District of New York

52 F. Supp. 167

G. H. MUMM CHAMPAGNE et al. v. EASTERN WINE CORPORATION.

District Court, S. D. New York.

October 14, 1943.

Beekman Aitken, of New York City, for plaintiffs.

Mock & Blum, of New York City, for defendant.

HULBERT, District Judge.

This action is for trademark infringement and unfair competition; the relief sought is an injunction, an accounting, and damages.

Cross motions for summary judgment present, as the chief issues, (1) capacity to sue; (2) infringement, and (3) unfair competition.

G. H. Mumm Champagne (Societe Vinicole de Champagne, Successors) and Associates, Incorporated, hereinafter called Importer, is a Delaware corporation having a place of business within this district.

Societe Vinicole de Champagne, hereinafter called Producer, is a corporation organized under the laws of the Republic of France.

The historical background of Mumm's Champagne is set forth in considerable detail in Societe Vinicole De Champagne v. Mumm Champagne & Importation Co. Inc., D.C., 11 F.Supp. 208; Id., D.C., 13 F.Supp. 575.

Peter Arnold Gottlieb Hermann Mumm established the business of fermenting champagne at Rheims, France, in the year 1827, under the name of P. A. Mumm & Co.

Jacob George Hermann Mumm, a son of Peter, continued the business changing the name to G. H. Mumm & Co., in 1856.

In 1904, Walther Mumm, his brother George Hermann, and their mother, all German subjects, succeeded to and continued the copartnership of G. H. Mumm & Co.

In December, 1914, the French Sequestrator seized all of the assests of said firm located within the jurisdiction of France and continued the business.

On August 11, 1920, the liquidators reported the public sale of the properties of the firm of G. H. Mumm & Co., on July 28, 1920, which sale, by its terms, covered all the seized assets of said firm including all the trademarks of the firm and the same were acquired by the Producer. Societe Vinicole De Champagne v. Mumm Champagne & Importation Co., Inc., supra.

The United States registered trademarks involved in this action are:

No. 8,638 granted September 13, 1881. to G. H. Mumm & Co., of Rheims, France, covering the arbitrary words "Cordon Rougeh" impressed on a circular paster or label, in previous use for four years under registration No. 4473 March 20, 1877.

No. 177,419, granted December 18, 1923, to Societe Vinicole de Champagne, of Paris, France; this trademark covers the words "Cordon Rouge" impressed upon a red ribbon stripe upon a white label, diagonally from the upper left to the lower right thereof. (This trademark was also registered in France No. 204157 August 18, 1921.)

No. 312,653 granted May 1, 1934, to Societe Vinicole de Champagne, Paris and Rheims, France, for a similar diagonal red stripe containing the words "Cordon Rouge."

In the application for this trademark (March 16, 1934, Ser. No. 348,727) the applicant makes the following statement: "G. H. Mumm Champagne (Societe Vinicole de Champagne, Successors) and Associates, Inc., La Maison Francaise, 610 Fifth Ave., New York, N.Y., is designated as the party upon whom process or notice of proceedings affecting the right to ownership of said trade-mark brought under the laws of the United States may be served."

No. 342,560 granted January 19, 1937, to Societe Vinicole de Champagne, Paris and Rheims, France, covering a segment of a circle or arc bearing the words "Cordon Rouge" (registered in France as No. 305,182, December 11, 1935), contains a similar authorization to the domestic plaintiff.

No. 395,907 granted June 16, 1942, to G. H. Mumm Champagne and Associates, Incorporated (Societe Vinicole de Champagne, Successeur), New York, N.Y., covering a similar diagonal red stripe without, however, the words "Cordon Rouge" appearing thereon.

It is stated in the applications for this last mentioned trademark (dated January 27, 1942, Ser. No. 450,511) "the trade-mark has been continuously used and applied to said goods in applicant's business since March, 1883."

During the month of January, in the year 1934, the domestic plaintiff became, and has ever since continued to be, and still is, the agent for the United States for the foreign plaintiff for the sale and distribution of champagne wines manufactured and imported into the United States of America by the Producer.

By the terms of a contract dated January 1, 1938, the Importer became the sole agent of the Producer in the United States with the exclusive right to purchase wines from the Producer for resale in the United States.

In 1939 this contract was modified, upon consent of the parties, by substituting another agent for the Producer in the Pacific Coast area.

The defendant, incorporated in 1934, is a purveyor of domestic champagne. Its president avers that in September, 1937, it requested the Empire Lithographing Co., Inc., to design some labels for use on wines. One of the designs thus prepared included a diagonal red stripe which, however, was unlike that of the plaintiffs' in at least two respects; (1) It was narrower, and (2) it extended from the upper right hand corner to the lower left hand corner of the label.

Prior to giving an order to print 100,000 labels, which were delivered to the defendant on October 15, 1937, the defendant submitted the original sketch to the Federal Alcohol Administration (hereinafter referred to as the FAA), which refused to give its final approval until...