SAXLEHNER v. WAGNER et al., 157 F. 745

RICHARDS, Circuit Judge.

This was a suit brought by Emilie Saxlehner, the widow and successor of Andrew Saxlehner, the proprietor of the original spring at Buda-Pesth, in Hungary, which produces a bitter medicinal water to which he gave the name “Hunyadi Janos,” to enjoin Edward Wagner, William Wagner, and Sophia Wagner, makers and sellers, in Cincinnati, Ohio, of artificial waters, from manufacturing and selling an artificial water either under the name of “Hunyadi Janos” or “Hunyadi.” The court below granted an injunction restraining the sale of artificial bitter water under the name of “Hunyadi Janos,” holding that such phrase constituted a trade-mark, the right to use which was exclusive in the plaintiff; but, coming to the sale of artificial bitter water made in conformity with Fresenius’ analysis of the Hunyadi Janos spring, and called “Artificial Hunyadi Water,” held that, under the decision of the Supreme Court of the United States in the case of Saxlehner v.

Eisner & Mendelson Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60, the name “Hunyadi” had, by the laches of the plaintiff and her predecessor, become generic, indicative of a whole class of similar medicinal waters, and thus, not only in Hungary, but in this country, the word had become public property. The right to individual appropriation thus once lost was gone forever.

There being no exclusive individual right in the plaintiff, the court below held that no case of unfair competition was made out, because nothing was done by the Wagners, either in the way they dressed their bottles of artificial Hunyadi water, or in the manner in which they advertised the same, to mislead the public or induce purchasers to believe that they were getting the natural Hunyadi water when they bought the artificial. All the propositions apparently argued before the court below were pressed with much force upon us, and in support of them we were especially referred to the case of Saxlehner v.

Thackeray, originally decided by Judge Kohlsaat, and afterwards, on appeal, by the Circuit Court of Appeals of the Seventh Circuit. Thackeray v. Saxlehner, 125 Fed. 911, 60 C. C. A. 562. In the opinion of Judge Kohlsaat, printed in the record, stress is laid upon the fact that the artificial water sold by Thackeray under the name of “Hunyadi water,” was put out as the natural Hunyadi 'water, which, of course, would warrant an injunction on the ground of unfair competition. In the opinion of the Court of Appeals (125 Fed. 912, 60 C. C. A. 562) it is pointed out that the decision in the case of Saxlehner v.

Eisner & Mendelson Co., 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60, was not based upon the abandonment by Saxlehner and his successor of the right to' use the, word “Hunyadi” to describe the natural medicinal water on sale, but upon the laches of Saxlehner and the failure to sue certain importers of similar medicinal water from the Buda-Pesth

section in Hungary for using the word “Hunyadi” to describe their waters. Such estoppel, the court held, could not avail Thackeray, for he was not engaged in selling artificial JHunyadi water” until after Saxlehner’s successor had commenced vigorously to assert her right to the exclusive use of the word “Hunyadi.” And, besides, the defendants, who were protected by the decision of the Supreme Court of the United States, were importers of natural bitter waters from Hungary. The Supreme Court never intended to throw such protection around a manufacturer of artificial medicinal water.

Having planted itself upon this ground, the court thought it unnecessary to go into the question of the similitude of the bottles, capsules, and labels. We have great respect for the Circuit Court of Appeals of the Seventh Circuit, but we find ourselves unable to agree with the view it takes, of the result of the case of Saxlehner v. Eisner & Mendelson Co. It seems to us that the subsequent case of French Republic v. Saratoga Vichy Springs Co., 191 U. S. 427, 24 Sup. Ct. 145, 48 L. Ed. 247, throws a light upon that decision which is useful.

This suit was brought to vindicate the right of the French Republic and its lessee to the exclusive use of the word “Vichy,” as against the Saratoga Vichy Springs Company. The court held that in view of the fact that the Saratoga Vichy Springs Company, and numerous manufacturers of artificial waters, had for many years been selling their waters in this country under the name of “Vichy” without any protest or action on the part of the French company, the latter had thus, allowed the name “Vichy” to become generic and indicative of the character of the water, referring to the case of Saxlehner v.

Eisner & Mendelson, 179 U. S. 19, 21 Sup. Ct. 7, 45 L. Ed. 60. The court therefore refused to enjoin the label used by the Saratoga company, but indicated that, if it had been so framed as to mislead the public into believing that the water which came from the Saratoga springs was the real French vichy, it would grant the injunction prayed for, or compel a change in the label which would clearly indicate the origin of the water. We think the plain effect of this decision, coupled with that in Saxlehner v.

Eisner & Mendelson Co., is to hold that, where the protection of a trade-mark is lacking, the name of the natural imported water may be applied either to a similar natural water, drawn- from a spring in this country or to artificial water made according tp an analysis of a foreign spring, provided the latter be of the same general character, and, if artificial, contain the same chemical ingredients and properties as the imported natural water. To the same eifect see decisions in City of Carlsbad v. Schultz (C. C.) 78 Fed. 469, and Fa Republique Francaise v. Schultz (C. C.) 94 Fed. 500.

There being no trade-mark shown, and no case of unfair competition proved, the judgment of the court below must be affirmed.