Baglin v. Cusenier Co.

164 F. 25, 90 C.C.A. 499, 1908 U.S. App. LEXIS 4609

• Court: Court of Appeals for the Second Circuit
• Decided: August 3, 1908
• Docket: No. 230
• Status: Published

Opinions

COXE, Circuit Judge

(after stating the facts as above). The principal facts are found in the prior opinions, supra, and' need not be repeated. We think, however, that the statement of the circumstances, which resulted in the complainants leaving .France and setting up their distillery at Tarragona, Spain, requires some additional recital of the facts. The defendant, at the time the answer was filed, was the agent in the United States of the receiver of the complainants’ property, appointed by the French courts. Whatever title the receiver acquired the defendant acquired, whatever rights the receiver had the defendant has. The same is, of course, true of the present owner, the Compagnie Fermiére de la Grande Chartreuse.

On July 2, 1901, the French associations law was promulgated. With the intent and purpose of this measure we have nothing to do. The lawmakers deemed it necessary for the perpetuity of the Republic and it has been upheld and enforced by the courts of France. Pursuant to this law, on March 31, 1903, the court of first instance of Grenoble dissolved the order of Carthusian Monks, sequestered its entire property and appointed M. Lecouturier receiver. On April 23, 1901-, the same court, in an action between the receiver and Abbé Rey and others, adjudged that the business of manufacturing liqueurs at the Grand Chartreuse, including the good will, clientage, trademarks, commercial names, models of bottles, flagons, cases, furniture, machinery, raw material, manufactured goods and the exclusive right to the industrial name L,. Gamier, was the property of the monks and passed to the receiver to be liquidated. This judgment was affirmed by the court of appeals of Grenoble and the appeal to the court of Cassation was dismissed. It thus appears that, when this action was commenced, every right and title which is in dispute here, every item of property claimed by the complainants, whether corporeal or incorporeal, tangible or intangible, were, so far as France is concerned, vested in the receiver who is represented by the defendant. The acts which the complainants seek to restrain were lawful in France, the liqueur being manufactured, bottled and labeled at the Grand Chartreuse, and sold under sanction of French law. Such a. bill as we are now considering would not stand for a moment in any court of France. Of this there can be no question.

'.['he situation as to the monks is also anomalous. Had they chosen to do so they could, with some necessary changes, have used the old labels and trade-marks in Spain, but they have seen fit not to do so, probably because the labels would have been prohibited in France and they would thus have lost the French market. They could not have used the trade-mark in the form as registered, for it would have been a falsehood and a fraud on the public to assert that liqueur made at Tarragona, Spain, was “Fabriquée á la Gde. Chartreuse” in France. Especially would this be an unfair statement in view of the oft repeated assertion of the complainants that their liqueur derived its peculiar excellence from the plants and herbs grown in the Alps in the vicinity of their monastery. However this may be, the Monks, since establishing themselves at Tarragona have de facto, though not de jure, abandoned the old labels and insignia. Their object seems to be to depart as far as possible from the former methods of dressing up their goods. One of their advertisements, containing a picture of their new bottle with labels attached, is as follows :

“The Peres Chartreux dispossessed in France of their old trade-marlcs. sold at auction, have carried away their secret and manufacture at Tarra-gona. Demand this new bottle in asking for the ‘Liqueur of the Peres Char-treux’ (Tarragone) or simply ‘A Tarragone.’ ”

Their new labels and marks are totally different from the old ones and they hate been particular to caution the trade that no liqueur is genuine unless bearing the new label. Their agent’s circular states:

“While formerly the Liqueur derived its name from the monastery of the La Grande Chartreuse, circumstances have rendered it necessary, under the new conditions, to name it ‘Liqueur Peres Chartreux’ after the order of monks owning the secret process employed in its manufacture.”

Assuming the right of the- complainants to use the old trade-marks, it is manifest that they have not used them since their departure from France, do not wish or intend to use them and, should they do so, it would still further complicate the situation and vex the trade, with no corresponding benefit to atiy one. The complainants have established a new demand for their liqueur under the new labels, purchasers have learned to recognize the monks’ goods by these labels and it would exhibit a lamentable lack of business sense for them to return to the old label, even if they could do so legally and truthfully.

It will be observed that at no time have the complainants designated their liqueur as “Chartreuse” on any of their paper labels. That name has been used by them principally when advertising the fact that their liqueur was “made at the Grand Chartreuse,” in the same way that they now say it is made at Tarragona. There can be little doubt, however, that the name in time came to indicate the liqueurs made at the monastery in the French Alps by the monks residing there. It may be doubted whether, in this country at least, the name indicated any particular order of monks. Its primary meaning was undoubtedly geographical but it acquired afterwards a secondary meaning, so that a purchaser prior to 1901 ordering a case of “Chartreuse” would expect to receive liqueur made by monks at the French monastery.

It is not easy to believe that a person, familiar with all the facts relating to the migration of the Carthusians to Spain, could be deceived by the labels at present used by the defendant. The bill alleges on information and belief that since the removal of the complainants from France, certain persons without the complainants’ consent have made a spurious imitation article falsely representing that it is made pursuant to the famous recipe of the complainants and that the-defendant has imported large quantities of the spurious article, under the trade-marks and labels still owned exclusively by the complainants, and has sold the same to the American public. All this the defendant denies. The writer is of the opinion that as the complainants have alleged that the defendant has deceived the public by palming off a spurious liqueur for the genuine article, it is incumbent upon them to prove the accusation.

It is, of course, unfortunate for the complainants that their liqueur is made under a secret formula which, naturally enough, they decline to disclose; but without such disclosure we are unable to say with any degree of certainty that the two liqueurs are not substantially alike. A charge that defendant is perpetrating a fraud must be established by something more than opinions and conjecture, and especially is this true, where the party upon whom the burden rests has it in his power to establish fraud, if it exists, by proof which it will be practically impossible to contradict. We intend no criticism of the complainants’ course in this regard. It is undoubtedly more profitable for them to maintain secrecy, and they are under no obligation to do otherwise. But they cannot complain if the court is unable to find that the defendant’s liqueur is materially different from theirs without knowledge of its .ingredients and the process by which they are combined.

It is true that experts called by the complainants denounced the defendant’s liqueur as exceedingly bad, so bad in fact that the veriest tyro cannot be mistaken and yet, when asked to make the test in the presence of the commissioner they invariably declined. One of these, M. Dubonnet, testified as follows:

“Q. You could mate sure of distinguishing this liqueur from the rea) Chartreuse? A. I do not know if I ought to reply. I have tested liqueurs enough: but one can be deceived. When T taste I taste calmly, wisely, I take precautions. Q. Will you make the experiment now? * * * A. No, because it is very delicate.”

Another witness, M. Brezun, testified:

“Q. Do you consider yourself capable of distinguishing the Chartreuse made by the Carthusians from those made by the imitators? A. Certainly. Q. Will you give a proof of it at once? A. No, it is necessary to do that in the quiet of the office, when resting, with due consideration; that cannot be done in the state of nervousness in which I am at present.”

It would seem, therefore, that the discovery of the difference between the two liqueurs is a grave and formal ceremony requiring the exercise of quasi judicial functions, which cannot be invoked amid the disturbing influences which usually surround the post-prandial consumption of Chartreuse. The proof of actual deception is exceedingly unsatisfactory. The facts regarding the migration of the monks to Tarragona and their adoption of entirely new labels is so well known that no one connected with the trade could be deceived. The consumer might be, but the assertion that he has been depends more upon presumption than fact.

We are thus confronted with a situation which is sui generis, it differs on the facts from all reported cases and it is hardly possible that such a combination of abnormal circumstances can ever occur again. What the defendant is doing is perfectly lawful in France. It has a right to make the liqueur, call it “Chartreuse” and sell it under the old labels. All this is not only permitted but it has the affirmative sanction of French law. The complainants, so far as the United States is concerned, have a right to do what they are doing and whatever good will pertaining to the old business remains in this country, should be conserved.

Lastly, the rights of the public are to be considered; they arc entitled to protection from simulation and fraud. In the recent case of Siegert v. Gondolfi, 149 Fed. 100, 79 C. C. A. 142, this court said upon somewhat similar facts:

“Undoubtedly the Siegerts did not, and could not, acquire such a monopoly In a geographical name as a trade-mark or trade-name as would entitle them to prerent others from using it under any circumstances. But it is sufficient to entitle them to relief that they used the name lawfully to designate their product until it became known to the trade-by that designation, that by doing so they acquired a trade which was valuable to them, and that their business is being injured by acts of the defendants which create a dishonest competition by leading the public to believe that Abbott’s Bitters are the original bitters.”

Although, as before stated, there is inadequate proof of deception we cannot close our eyes to the fact that the use of the old labels alone might easily induce a purchaser, seeking the monks’ cordial, to take defendant’s instead. The old labels indicate to one who had long dealt in the old cordial that it was made not only at the Grand Chartreuse but also that it was made by the monks. The last representation is not expressed in so many words, but is a reasonable and fair implication from the long association of the label with the monks’ product. A purchaser is compelled to rely upon external appearances and if he wanted the monks’ product he would be justified in thinking he had procured it if the bottle were identical in appearance with that which contained the liqueur of years ago when he first became acquainted with it.

The defendant is the successor of the liquidator who was appointed by the French court and acted pursuant to its decree, 'he should not be treated as an ordinary pirate seeking by fraud to divert a legitimate business. The common sense solution of the problem, it seems to us, is to compel both parties to tell the truth about their goods. There is no false statement on either the complainants’ or defendant’s labels as now printed, but the use of the old labels and insignia are, to say the least, misleading. If the defendant desires to sell its liqueur on its merits there is no excuse for using labels of the same size, shape and color as the old ones with the signature, R. Gamier, the stars, the orb and the cross.

On the other hand, the defendant having acquired the right to manufacture liqueur at the Grand Chartreuse, or at Fourvoirie within the demesne of the convent, should not be debarred from whatever advantage may flow therefrom. There can be no doubt that, based partly on fact and partly on the statements of the monks, there is a general belief that the plants which grow in the Alps in the vicinity of the convent possess peculiar qualities and have an aroma indigenous to that locality. To deprive defendant of the right to mention the locality of its distillery is to deprive it of a substantial right. This right was recognized in the English case — which on appeal went strongly against the defendant — the court saying in substance that the use of the word “Chartreuse” should be enjoined if used “without clearly distinguishing the liqueurs so sold from the liqueurs manufactured by the plaintiffs.” ■

We see no reason why the defendant should not be permitted, for instance, to use a label, printed in any language, in the following words:

The foregoing forms are suggested, tentatively, to illustrate the labels which, in our opinion, the defendant may legally use. We do not, however, intend to be understood as intimating that the defendant should be limited to such use. So long as the purchaser is clearly made to understand that the liqueur is not the product of the monks no injury is done to the complainants. If the old labels and symbols are abandoned we see no reason for compelling the defendant to change the shape of its bottles.

Paragraph No. 4 of the decree should be amended as follows: After the word “thereof” in line 9 (as printed on page 1568) add the following :

“Unless so used as clearly to distinguish such liqueur or cordial from the liqueur or cordial manufactured by the complainants.”

In line 20 strike out 'the words “bottle or” and in the same lihe substitute the words “symbol” for the word “package” and in line 21 after the words “similar to” insert the words, “those appearing on.”

The decree as amended, is affirmed without costs to either party in this court.

WARD, Circuit Judge, concurs in the result.