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)

“Bénédictine is a cordial or liqueur resembling Chartreuse, distilled at Fécamp in Normandy. It was originally prepared by the Bénédictine Monks, but since the French Revolution has been made by a secular company.” Cent. Diet. An historical account of the origin of this cordial is given by Judge Taft in the case of Société Anonyme De La Distillerie De La Bénédictine v. Micalovitch, Fletcher & Co., 36 Alb. Law J. 364, as follows: “At Fécamp in Normandy, France, the Bénédictine Monks had a monastery for several centuries before the French Revolution. They invented a liqueur or cordial made from cognac and a decoction of an herb growing wild in that country, and other ingredients, and made it for their own use. They preserved the recipe as a secret in a book of recipes. In 1792 the abbey of Fécamp was destroyed and the monks driven out. A. Legrand, Senior of Fécamp, one of whose ancestors was an attorney general of the abbey, came into possession of the book of recipes by inheritance. In 1863 he began the manufacture of the liqueur in question on an estate which was formerly part of the lands of the abbey, and where now is situated a museum of relics of the abbey. The recipe of the monks was followed exactly in the manufacture of thé liqueur. The recipe is preserved as a secret known only to Legrand Aine, and two sons in business with him. In 1863 the liqueur first became an article of commerce, and then for the first time was it given the name ‘Bénédictine.’ ” M. Legrand Aine continued the business from 1863 until 1876, when he made over to the complainant corporation then formed by him the plant, business, and good will. The fact is stated in the case above referred to as follows: “In 1876 he (Legrand) organized a corporation which was called the ‘Société Anonyme de la Distillerie de la Bénédictine Liqueur -de TAbbaye de Fécamp,’ to which he conveyed all the property used for the manufacture of this liqueur, together with his trade-marks, business assets, and good will, and received therefor 4,500 shares out of the 5,000 shares of the company. He became sole director of the company.” This corporation has since continued and now carries on the business at the same place and with the same plant. The article is widely known and sold throughout Europe and the United States, Canada, and South America; its sale in the United States amounting to from five to seven thousand cases annually, and in the state of Illinois to about seven hundred' and forty cases annually. In 1863 M. Legrand selected a peculiarly shaped bottle to contain the cordial, a black glass bottle of ungainly shape, having a bowl-shaped body and long neck, which is peculiar to this business and has become familiarly known to the trade as a container of this cordial. They come in two sizes, quarts and pints. On one face of the bottle is blown the word “Bénédictine,” with a cross at either end. Below it is placed a light brown label with the following printing thereon: “Toutes les Bouteilles de Bénédictine, Liqueur de l’Ancienne Abbaye de Fécamp doivent avoir au bas une étiquette portant le fac-simile de la signature de A. Legrand Aíné. La plus large ligature du plomb qui entoure le col doit porter les marques et inscriptions suivantes;* Veritablet Bénédictine.* Lebouchon devra étre marqué tout autour de: Véritable Liqueur Bénédictine.* Enfin le dessous du bouchon portera: D. O. M.f” Upon bottles exported to the United States and Canada underneath the label noted is an oblong label with blue ground, having thereon the words p. 76“Sole Agent for the United States of America and Canada. Henry E. Gourd, New York”; the words “Henry E. Gourd” being in gold letters, the others being in white letters. On the reverse face of the bottle on the shoulder is blown a figure somewhat like a horseshoe, within which is a_ seal of wax of the color of a bright vermilion, and upon it there is a mitre with a crosier, and, below, three mitres. Below this, and upon the face of the bottle, is a circular light brown label having thereon the letters “D. O. M.,” below which is a cross, and beneath that the words “Le Directeur, A. L.” Beneath this label is another label of similar color, having thereon the inscription “Veritable Liqueur Bénédictine, Marques déposées en France et á 1’Etranger,” and below this a fac-simile of the signature of A. Legrand Aine. Upon the neck of the bottle are two labels of like color with the others, one containing the words “Liquor. Monaehorum Benedictinorum. Abbatiae Fiscanensis”; the other placed immediately below has thereon the words, in English, “Imported from Fecamp (France).” The cork and mouth of the bottle are covered with a tan leather-skin capsule upon which is pasted a label of like color with the others, bearing the words “Registered TradeMarks”; a wax seal of like color with the other seal being upon this capsule and over the mouth of the bottle. A leaden band passes around the neck of the bottle and over the capsule, and is attached under the seal on the shoulder of the bottle. The trade-mark “Bénédictine” was registered by M. Legrand in September, 1876, in the United States patent office pursuant to-the act of congress, as were also the other labels which have -been described. The appellant, A. Bauer & Co., is a corporation of the state of Illinois, engaged in the general wholesale and retail liquor business in the city of Chicago. Prior to'the filing of the bill it placed on the market at the city of Chicago and sold a cordial in bottles of the precise sizes and nearly the exact shape of the bottle of the appellee, having the imitation of a horeshoe blown in the bottle upon its shoulder as in the appellee’s bottle, and a red seal of wax therein resembling the seal of the complainant, with the letters around it “Liqueur De St. Benedict.” Below it is a circular label of like color and form to that of the appellee’s label, having thereon the words and letters across the face of it “A. B. O. Liqueur de St. Benedict,” and- upon the label a red cross. Beneath that label is another label of like color, having the words printed thereon “Liqueur De St. Benedict.” Around the neck of the bottle are two labels of like color with the appellee’s labels, the upper one-having the inscription “Toutes les Bouteilles de Liqueur St. Benedict doivent avoir au has une etiquette portant le facsimile de la signatur de Mossieur,”’ with the fac-simile signature “The Tucker Hardy Co.,” the latter being the department name given to a branch of A. Bauer & Co. Underneath that label is a smaller label of like color, having thereon the words “Fabriqué en Etats Unis.” Upon appellant’s bottle there is a band of lead underneath the' rim of the neck, stretching across the cork. The cork is covered by a capsule made of paper, and, in place of the leaden ligature in the appellee’s bottle, a substitute ribbon of leaden color passes over the capsule and is attached under the seal on the shoulder of the bottle. The mouth of the bottle is also-covered with a wax seal of similar color to that of the appellee’s, and the name “St. Benedict” is blown upon the face of the bottle. The court below decreed for the complainant, appellee here, enjoining the use of the term “Liqueur St. Benedict” or “St. -Benedict,” and the use of the bottles and of the marks on the labels specified; which decree is brought here by appeal for review.

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,. p. 77that 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.