Saxlehner v. Eisner & Mendelson Co.

Background

The dispute involved a bottler who long sold a Hungarian bitter water under the name Hunyadi Janos and used a distinctive straight bottle, metal capsule, and a three-panel red-and-blue label. Competitors in Hungary began selling waters using the word “Hunyadi” combined with other names, and later importers brought those products to the United States. One U.S. importer (Eisner & Mendelson) obtained an agency for a competing spring and used a very similar bottle and label, later adding a separate “Seal” brand claim.

Reasoning

The Court reviewed two defenses pressed by the defendant: abandonment (giving up the mark) and delay in enforcing rights. It found little evidence that the original owner intended to abandon his exclusive use of the bottle and label, and concluded the simulated label was a deliberate imitation. By contrast, because the word “Hunyadi” had been officially sanctioned for use by others in Hungary and widely used over many years, the Court found delay and widespread use made it hard to reassert exclusive rights in the word alone. For the bottles and red-and-blue labels, however, the Court treated the imitation as actual fraud and said an injunction and damages were appropriate.

Real world impact

The Court reversed the appeals court and directed the lower court to restore an injunction protecting the plaintiff’s bottle shape and labels, and to award damages for the deceptive use, including the importer’s added “Seal” label. The ruling limits exclusive control over the word “Hunyadi” after long public use, while strongly protecting distinctive packaging against fraudulent imitation.