A. Bauer & Co. v. La Societe Anonyme De La Distillerie De La Liqueur Benedictine De L'abbaye De Fecamp

120 F. 74 | 7th Cir. | 1903

JENKINS, Circuit Judge

(after stating the facts as above). We have so often spoken to the subject of trade-mark and of unfair trade, and to the principle by which courts of equity are guided in restraining one from palming off his goods as the goods of another,. that it is quite unnecessary at this time to go over the ground at length. It is true that no one has a monopoly of form, nor has he a monopoly of color, of the shape of the letters, or geographical names, or of his own name, but one may not, by means lawful in themselves when devoted to a lawful end, perpetrate a fraud upon the public, or infringe the rights of another. Charles E. Hires Co. v. Consumers’ Co., 41 C. C. A. 71, 100 Fed. 809. It would be impeachment of intelligence to say that here there was not design to market the appellant’s goods as the goods of the appellee. There is such marked similarity in the shape of the peculiar bottle, in the character and arrangement of the labels, the letterpress, the use of the French language of the letterpress upon an article manufactured in the city of Chicago, in the wax seals, in the capsules covering the corks and the means of fastening them, in the name “Bénédictine” and “St. Benedict” blown in the bottles, that it is clear not only that there was design to deceive but also that deception is most probable. The trade-mark “Bénédictine” has been sustained in able and elaborate opinions in 1887 by Judge Taft, when upon the bench of the superior court of Cincinnati, in Société Anonyme De La Distillerie De La Bénédictine v. Micalovitch, Fletcher & Co., 36 Alb. Law J. 364, and in 1890 by Judge Thayer in Société Anonyme De La Distillerie De La Liqueur Bénédictine De L’Abbaye De Fécamp v. Western Distilling Co. (C. C.) 43 Fed. 416. There can be no question of the right of the appellee to the use of the garb with which it has clothed its product, nor of the design of the appellant to pirate that right and to sell its goods as the goods of the appellee.

It is urged that the appellee claims as the assignee or purchaser of the business from M. Legrand; that in the use of the trade-marks so purchased it should indicate that it is the assignee or purchaser, and that, failing therein, it cannot be protected in their use. This contention is predicated upon the case of Medicine Co. v. Wood, 108 U. S. 218, 2 Sup. Ct. 436, 27 L. Ed. 706- There the complainant was the manufacturer of a certain medicine known as “Atwood’s Vegetable Physical Jaundice Bitters,” and claimed as its trade-mark that designation, with the accompanying labels; the right being derived from one Moses Atwood, the designation mentioned being blown in the glass, and the labels attached stating that the article was manufactured by Moses Atwood, Georgetown, Mass.’, while the medicine was in fact manufactured by the complainant in the city of: New York. The court, by Mr. Justice Field, lays down the principle déclared in the following language:

“The object of the trade-mark being to indicate, by its meaning or association, the origin or ownership of the article, it would seem that when a right to its use is transferred to others, either by act of the original manufacturer or by operation of law, the fact of transfer should be stated in connection with its use; otherwise a deception would be practiced upon the public, and the very fraud accomplished, to prevent which courts of equity interfere to protect the exclusive right of the original manufacturer. If one affix to goods of his own manufacture signs or marks which indicate that they are the manufacture of others, he is deceiving the public, and attempting to pass upon them goods as possessing a quality and merit which another’s skill has given to similar articles, and which his own manufacture does not possess an the estimation of purchasers. To put forth a statement, therefore, in the form of a circular or label attached to an article, that it Is manufactured In a particular place by a person whose manufacture there had acquired a great reputation, when, in fact, it is manufactured by a different person at a different place, is a fraud upon the public which no court of equity will countenance.”

It will be observed that in that case the labels contained the assertions that the article was manufactured by a certain person and at a certain place, both of which assertions were untrue, and that the decision proceeded upon the theory that such statements were not honest, and worked a deception upon the public in attempting to pass upon them goods as possessing a quality and merit which another’s 'skill had given to a similar article. The trade-mark and labels upon the bottles of the appellee contain no direct assertion of the maker. It may rather be said that the association of the name with the article indicates the place, or process, or quality of manufacture. Here the place of manufacture remains the same, the secret process is unaltered. There would seem to have been no substantial change of ownership. The manufacture continued at the same ‘place and substantially under the direction of the same person. The cordial made from the recipe of Bénédictine Monks has been known for nearly 400 years. Its reputation rests upon its quality. Its excellence is assured by the fact that it is made in accordance with the original formula, and at the place where it alone has from the beginning been made, and where the herb of which it is a decoction grows wild. The name, as applied to a cordial so ancient and in quality so tmchanging, has by association become the designation of place of manufacture and of quality, rather than that of the manufacturer. There is here no false statement. There is no deception upon the public. In such case the reason of the rule fails, and the rule itself, proper in appropriate cases, should not here be permitted to work a wrong. The question was elaborately considered by Judge Taft and by Judge Thayer in the cases referred to, and their reasoning meets with our approval. See, also, Pillsbury v. Flour Mills Co., 64 Fed. 841, 850, 12 C. C. A. 432, 441; Stone Co. v. Wallace (C. C.) 52 Fed. 431, 437: Cuervo v. Landauer (C. C.) 63 Fed. 1003; Feder v. Benkert, 18 C. C. A. 549, 70 Fed. 613; Tarrant & Co. v. Johann Hoff, 22 C. C. A. 644, 76 Fed. 959; Hoxie v. Chaney, 143 Mass. 952, 10 N. E. 713, 58 Am. Rep. 149; Carmichael v. Latimer, 11 R. I. 395, 23 Am. Rep. 481.

The decree is affirmed.