French Republic v. Saratoga Vichy Spring Co.

after making the foregoing statement, 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, ifow 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 timé 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

■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 National Watch Co. v. Illinois Watch Co., 179 U. S. 665 ; Newman v. Alvord, 51 N. Y. 189 ; Lee v. Haley, 5 Ch. App. 155; Wotherspoon v. Currie, L. R. 5 H. L. 508;

In a French case arising in this connection, and brought’by the Vichy Company against a rival company owning two springs in the same peighborhood, complaining that by the composition of its name and the arrangement of its label's, 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 ta 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 Gompany 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 no.t aware of these infringe

' It is said, however, that the doctrine of laches has no application to the neglect of the government to pursue trespassers upon its rights, and that the French Republic is entitled to the benefit of that rule. It is at least open to doubt whether the maxim nullum ternpus, applicable to our own government, can be invoked in behalf of a foreign government suing in our courts. The doctrine is one of public policy, and is based upon the assumption that the officers of the government may be so busily engaged in .the ordinary affairs of state as to neglect a vindication of its interests in the courts. Whether this exemption can be set up by a foreign government in the prosecution of suits against our own citizens — in other words, whether the latter are not entitled to the benefit of the ordinary defences at law, is a question which does not necessarily arise in this case, ■ and as to which we are not called upon to express an opinion.

However this may be, it is clear that the rule of nullum tempus cannot be invoked in this case. While the French Republic is nominally the plaintiff, its interest in the litigation is little, if anything, more than nominal. For fifty years it has ceased to operate these springs through its own agents, since in 1853 the then Emperor of the French leased them to the predecessors of the Vichy Company, which has since that time bottled and sold the water under successive leases as its own, upon the payment of an annual rental of 100,000 francs

In such cases, either where, the government is suing for the use and benefit of an' individual, or for the prosecution of a private and proprietary instead of a public or governmental right,.it is clear that it.is not entitled to the exemption of nullum, tempus, and that the ordinary rule of laches applies in full force. United States v. Beebe, 127 U. S. 338 ; New Hampshire v. Louisiana, 108 U. S. 76 ; Maryland v. Baldwin, 112 U. S. 490 ; United States v. Des Moines &c. Co., 142 U. S. 510 , 538; Curtner v. United States, 149 U. S. 662 ; United States v. American Bell Telephone Co., 167 U. S. 224 , 264; Miller v. The State, 38 Alabama, 600; Moody v. Fleming, 4 Georgia, 115.

The plaintiffs, then,, are put in'this dilemma: If the Republic be a necessary party to the suit here, as it sues’ in its private and proprietary capacity, the defence of laches is available against it. Upon the other hand, if it be an unnecessary party, the defence of laches may certainly be set up against the Vichy Company,'its co-plaintiff.

• We do not think the position of the plaintiffs in this connection is affected or strengthened by the eighth article of the treaty of June 11,1887, with France and other nations, known as the Industrial Property Treaty, (Comp, of Treaties in Foree 1899,684,) which declares that “ the commercial name shall be protected in all the countries of the Union without obligation of deposit,

This is made the more apparent from Art. II of the treaty, which reads as follows: “The subjects or citizens of each of the contracting States shall enjoy, in all the other States of the' Union, so far as concerns patents for inventions, trade or commercial marks, and the commercial name, the advantages that, the respective laws thereof at present accord, or shall,after-wards accord to citizens or subjects. In consequence they shall have the same protection as these latter, and the same legal recourse against all infringements- of their rights, under reserve of complying with the formalities and conditions imposed upon subjects or citizens by the domestic legislation of each State.”

If there were any doubt about the rights of the plaintiffs under the eighth article they are completely removed by the wording of the second. The rights of the French Republic are' the same, and no greater under this article than those of the United States would be.

3. But conceding that the defence of laches would not be available in & case of actual fraud, or an attempt to foist uponthe public the Waters of the defendant as those of the orginal Vichy spring, McIntire v. Pryor, 173 U. S. 38 ; Saxlehner v. Eisner &c. Co., 179 U. S. 19 ; Prevost v. Gratz, 6 Wheat. 481 , 497; McLean v. Fleming, 96 U. S. 245 ; Menendez v. Holt, 128 U. S. 514 , we find but little evidence of such purpose in this record. The two waters not only differ in their ingredients and taste, but the. French Vichy is a still, and the Saratoga Vichy, as well as the other American Vichies, an effervescing, water. There is no attempt made whatever by the defendant to simulate the

It was said by this court in Canal Company v. Clark, 13 Wall. 311 , 322, “ In all cases, where rights to the exclusive use of a trademark are invaded, it is invariably, held that the essencg of the wrong consists in the sale of goods of one manufacturer or vendor

The decree of the Court of Appeals is therefore

Affirmed.