Waukesha Hygeia Mineral Springs Co. v. Hygeia Sparkling Distilled Water Co.

• Decision Date: 01 October 1894
• Docket Number: 116.
• Citation: 63 F. 438
• Parties: WAUKESHA HYGEIA MINERAL SPRINGS CO. v. HYGEIA SPARKLING DISTILLED WATER CO.
• Court: U.S. Court of Appeals — Seventh Circuit

63 F. 438

WAUKESHA HYGEIA MINERAL SPRINGS CO. v. HYGEIA SPARKLING DISTILLED WATER CO.

No. 116.

United States Court of Appeals, Seventh Circuit.

October 1, 1894

Banning Banning & Payson (William B. Keep and Frank O. Lowden, of counsel), for appellant.

Isham Lincoln & Beale and Herrick & Allen, for appellee.

The appellee, Hygeia Sparkling Distilled Water Company, filed its bill in equity for an injunction restraining the appellant Waukesha Hygeia Mineral Springs Company, from using the word 'Hygeia' as a trade-mark or name for drinking waters except in the way specified in a contract entered into August 20, 1886, between the appellee and the appellant's predecessors. The appellant answered, and filed a cross bill; the answer denying the equities of the bill, asserting right in appellant to use the word 'Hygeia' broadly as a trade-mark, and claiming that the alleged contract with its predecessor is not binding upon the appellant, for want of record or notice, and is not enforceable in equity for various reasons; the cross bill alleging that the appellant is entitled to exclusive use of the word as a trade-mark, and praying that the appellee be enjoined. The decree is for a perpetual injunction in favor of the appellee in accordance with the allegations and prayer of the original bill. The appellee is a manufacturer of distilled water, to which the trade-name of 'Hygeia' had been applied for some time prior to 1886. The appellant is the owner of a spring at Waukesha, Wis. (acquired by it in 1891, under title derived from the Smiths, who made the contract of 1886), to which the name of 'Hygeia' had been applied, and its waters were marked with the name 'Hygeia' as part of the designation, prior to 1886. The spring was owned and its business conducted by James H. and Charles T. Smith, in and prior to 1886; and to avoid controversy with reference to a trade-name, under threats or prosecution by the appellee, a contract was entered into between the appellee, as first party, and the Smiths, as second parties, August 20, 1886, which recited that the first party was engaged in the manufacture of distilled waters, and 'used as the essential feature of its trade-mark the word 'Hygeia' and a figure of the goddess Hygeia,' there shown; that the second parties were owners of a natural mineral spring at Waukesha, called the 'Hygeia Natural Mineral Spring,' and have used as the essential feature of their trade-mark in the sale of the waters of said spring the words 'Waukesha Hygeia Mineral Spring,' together with a figure of the goddess of Hygeia,' which is also shown in the contract; and that they desire to avoid conflict and infringement in the use by both of their respective trade-marks,' and to that end have entered into contract. Thereupon, 'in consideration of the premises, and of five hundred dollars' paid by the first party to the second parties, the following provisions are made: 'First. And the party of the first part shall have, and is hereby recognized as having, the exclusive right both to use the word 'Hygeia' and the figure of which the first above is a fac simile, in connection with the distilling of water and the manufacture and sale of carbonated and artificial mineral waters, vichy, seltzer, ginger ale, etc., made by distilled water. The said party of the first part, however, shall not in any way or manner use the word 'Hygeia' in connection with any natural mineral spring water, and shall not likewise use the words 'Natural' or 'Spring' water in or upon any stamp, cork, label, circular, advertisement, sign, bill head, letter head, etc., in any way or manner calculated to deceive or mislead the public. Second. The said parties of the second part shall have, and are hereby recognized as having, the exclusive right forever in and to the use of the said word 'Hygeia' in combination with 'Waukesha Hygeia Mineral Spring' with or without the word 'Water' superadded, and of the figure of which the second above is a fac simile, including said word 'Hygeia' as now a part thereof, used in any manner or connection with the bottling, putting up, and sale of the waters, whether carbonated or in said spring so situated at Waukesha, Wisconsin, as aforesaid, and of ginger ale the waters for which are from said spring. They shall not, however, use the said figure except in connection on the same label, etc., with said combination 'Waukesha Hygeia Mineral Spring,' and they shall not in any way or manner use the said word 'Hygeia' otherwise than in connection with said figure, and in such combination as above indicated on any stamp, cork, label, circular, advertisement, sign, bill head, letter head, etc. They shall not use the said word, figure, or combination in connection with distilled water, nor in connection with any other water than said spring water. ' The testimony on the part of the appellee is directed to showing their use of the trade-mark prior to this contract (having registered it in the patent office in December, 1883); and that, for the several years that intervened between the making of the contract and the purchase by the appellant, there was strict compliance with the provisions of the contract by both parties, and the appellee expended large sums in reliance upon it, giving great value to its trade-mark. The testimony of the appellant is mainly directed to showing in contravention of the contract that its predecessors named their spring 'Hygeia,' and had appropriated and used that as the distinguishing word in the combination of words by which the water was known and put upon the market, prior to any use by the appellee; that the appellant had no notice, actual or constructive, of the contract made by its predecessor in title, and was a bona fide purchaser; that the contract was an imposition upon the Smiths, and was harsh and inequitable; and that the appellant's predecessor was not incorporated at the time of entering into the contract.

Before JENKINS, Circuit Judge, and BUNN and SEAMAN, District Judge.

SEAMAN District Judge (after stating the facts).

The complainant, Hygeia Sparkling Distilled Water Company, seeks to restrain the Waukesha Hygeia Mineral Springs Company from use of the word 'Hygeia' as a trade-name for its waters otherwise than specified in a contract entered into August 20, 1886, between complainant and defendant's predecessors. The defendant (appellant here) seeks to ignore or avoid that contract, and claims prior appropriation of the word, as the distinguishing name of its waters, and prays, by cross bill, for an injunction restraining the complainant from using the word in its corporate name or trade-mark.

The controlling question in this controversy is whether or not the contract is operative between these parties for the purpose of establishing and defining their respective trade-mark rights, in connection with the...