UNITED STATES SUPREME COURT DECISIONS ON-LINE

1. Geographic names often acquire a secondary signification indicative not only of the place of manufacture but of the name of the manufacturer or producer, and the excellence of the thing manufactured or produced, which enables the manufacturer or owner to assert an exclusive right to such name as against everyone 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 palming off the productions of one person as those of another.

2. One otherwise entitled to the exclusive use of a name may lose the right of enforcing it by laches and acquiescing for a period of nearly thirty years in its use and by allowing the name to become generic and indicative of the character of the article.

The rule of nullum tempus cannot be invoked in our courts in favor of a foreign government suing for the benefit of an individual which is its lessee.

Quaere, and not decided, whether the rule could be invoked by a foreign government even when suing in its sovereign capacity. clubjuris

Page 191 U. S. 428

It was not intended by Article VIII of the Industrial Property Treaty of June 11, 1887, to put citizens of a foreign country on a more favorable footing than our own citizens or to exempt them from ordinary defenses which might be made by the party prosecuting. Under Article II of such treaty, the rights of the French Republic are the same and no greater than those of the United States would be.

3. Where it does not appear that there has been any actual fraud or an attempt to foist an article upon the public as that of the complainant and the articles differ in many respects, the use of a name, the exclusive use whereof is claimed by complainant, accompanied by a descriptive word equally prominent which differentiates it from the original name on a label wholly dissimilar in style, language and form, will not, after a long continued use without protest, justify the interference of a court of equity to restrain its use.

This was a bill in equity brought in the Circuit Court of the United States for the Northern District of New York by the French Republic, as owner, and La Compagnie Fermiere de l'Etablissement Thermal de Vichy (hereinafter termed the Vichy company), as lessee, of the springs of Vichy, France, against the Saratoga Vichy Spring Company, for the unlawful use of the word "Vichy," claimed by the plaintiffs as a commercial name or trademark, and appropriated for the waters of the defendant, which are drawn from a certain natural spring at Saratoga, New York.

Defense: that for fifty years, mineral water has been sold throughout the world under the name of "Vichy," and that such name has come to denote a type of water, namely, alkaline, noncathartic, carbonated water, and does not stand for the water of any one spring; that defendant has never sold Vichy as and for that of the plaintiffs, nor in resemblance thereto, but has so labeled its water that the purchaser shall know that it is a natural mineral water of Saratoga, and that plaintiffs' claim is stale.

The bill was dismissed by the circuit court upon the ground that plaintiffs had no exclusive right to the use of the word "Vichy," and that defendant had never been guilty of an attempt to palm off its waters as the imported article. 99 F.7d 3. On appeal, the court of appeals reversed clubjuris

Page 191 U. S. 429

the decision of the circuit court and granted an injunction against the use of one particular label, or "any other label in which the place of the origin of the water is not as plainly and prominently made known as the fact that it is named

V

Plaintiffs thereupon applied for a writ of certiorari, which was granted. Defendant made no similar application, but acquiesced in the decree and discontinued the offending label. clubjuris

Page 191 U. S. 434