6. The French liquidator of the properties of the Carthusian monks of the Monastery of La Grande Chartreuse, or those claiming 1. A Federal circuit court has jurisdic- under him, may not use the word "Chartion of a controversy between foreign sub-treuse," the monks' trademark for a liqueur jects and a domestic corporation in which the bill asserts a right under a Federal statute by virtue of the registration of a trade mark.

[Ed. Note.-For other cases, see Trade-Marks and Trade-Names, Cent. Dig. § 8; Dec. Dig. § 14.*] Argued March 14, 15, 1911. Decided May TRADE-MARKS AND TRADE-NAMES (§ 32*) INTERNATIONAL LAW EXTRATERRITORIAL OPERATION OF LIQUIDATION PRO

*Mr. Justice Hughes delivered the opinion of the court:

Père Baglin, Superior General of the Order of Carthusian Monks, for himself and the other members of the order, brought this bill in equity against the Cusenier Company, a New York corporation, to re

For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1507 to date, & Rep'r Indexes

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strain the infringement of trademarks and, from France such herbs as were needed for unfair competition. the purpose. The complainant had a decree in the cir- The French liquidator, Henri Lecou cuit court, and this was modified in certain turier, employing a skilled distiller and particulars, to which we shall presently chemical assistants, undertook by experirefer, by the circuit court of appeals. The mentation to make at Fourvoirie a liqueur complainant then appealed to this court, either identical with or resembling as closeand motion was made to dismiss the appeal, ly as possible the famous "Chartreuse;" it being urged that the decree below was and, having succeeded in this effort to his not final. Complainant then petitioned for satisfaction, he placed his product upon the a writ of certiorari, and this writ and a market under the old name. His agent in cross-writ asked for by the respondent were this country, under date of October 25, 1904, granted. issued a circular containing the following announcement:

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ciated with their product, and the simu-, rial respects the dress or package heretofore lating in any way of the dress or packages used by complainants, and in particular in which it had been sold. from making use of any [bottle or] label or For this purpose, this suit was brought [package] symbol like or substantially simiagainst the defendant, who was then rep-lar to those appearing on 'complainants' resenting the liquidator in this country. exhibit, defendant's liqueur,' being the botPending it, the liquidator sold the property tle now on file as an exhibit in this court, he had acquired and the business he had and from in anywise attempting to make been conducting in that capacity to a com- use of the good will and reputation of company known as the "Compagnie Fermière plainants in putting out in this country de la Grande Chartreuse," which has con- any liqueur or cordial not made by comtinued the manufacture of liqueur at Four-plainants." voirie and also its sale in this country The defendant contends that the circuit through the defendant as its representative. On final hearing the circuit court adjudged "that the word-symbol 'Chartreuse, as applied to liqueur or cordial," and that "the said word-symbol 'Chartreuse' accompanied by the facsimile signature of L. Garnier," as set forth in the certificates of registry in the Patent Office, "constitute good and valid trademarks, and in this country have been and now are the sole and exclusive property of said complainants, the Carthusian monks or fathers (Pères Chartreux); and that in this country the said complainants still have the right, and the exclusive right, to use the said marks, or any of them, upon liqueurs or cordials manufactured by the complainants." It was further adjudged that the defendant had been guilty of infringement of these trade-joyed by the Carthusian monks prior to marks and of unfair competition, and the decree also contained a perpetual injunction.

The circuit court of appeals affirmed the decree with modifications which affect only the paragraph containing the injunction. This paragraph, as amended, reads as* follows (the words inserted by the court of appeals being italicized):

"It is further adjudged, ordered, and decreed that defendant, its associates, successors, assigns, officers, servants, clerks, agents, and workmen, and each of them, be, and they hereby are, perpetually enjoined from using in this country or in any possession thereof, in connection with any liqueur or cordial not manufactured by complainants, the trademark ‘Chartreuse,' or of any colorable imitation thereof, unless 80 used as clearly to distinguish such liqueur or cordial from the liqueur or cordial manufactured by the complainants; or the facsimile signature of L. Garnier, or any colorable imitation thereof; or any of the trademarks above referred to, or any colorable imitation thereof; and they and each of them are likewise perpetually enjoined from importing or putting out, or selling or of fering for sale, directly or indirectly, within this country, any liqueur or cordial not manufactured by complainants, in any dress or package like or simulating in any mate

court was without jurisdiction. This objection must fail, as it sufficiently appears from the record that the controversy was between foreign subjects and a New York corporation. And there was also an assertion by the bill of a right under the Federal statute, by virtue of the registration of the trademarks. Warner v. Searle & H. Co. 191 U. S. 195, 48 L. ed. 145, 24 Sup. Ct. Rep. 79; Standard Paint Co. v. Trinidad Asphalt Mfg. Co. decided April 10, 1911, *[220 U. S. 446, 55 L. ed. 31 Sup. Ct. Rep. 456]; Jacobs v. Beecham, decided May 15, 1911 [221 U. S. 263, 55 L. ed. - 31 Sup. Ct. Rep. 555].

On the merits, the questions presented are (1) what rights, with respect to the designations and marks involved, were en

their expulsion from the French monastery? (2) what effect upon their rights had (a) the liquidation proceedings in France, and (b) the conduct of the monks in relation to the trade in the liqueur which they subsequently made in Spain? and, in the light of the conclusions upon these points, (3) to what remedy, if any, are the monks entitled?

It is insisted that the judgment is erroneous in determining that "the word-symbol Chartreuse" constituted a valid trademark. It is argued that "Chartreuse" is a regional name; that the characteristic qualities of the liqueur were due to certain local advantages by reason of the herbs found and cultivated within the district described; that even as used in connection with the monks' liqueur, it was still a description of place; and hence, that at most, so far as this word is concerned, the question could be one only of unfair competition.

The validity of this argument cannot be admitted upon the facts which we deem to be established and controlling. It is undoubtedly true that names which are merely geographical cannot be the subject of exclusive appropriation as trademarks. "Their nature is such that they cannot point to the origin (personal origin) or ownership of the articles of trade to which they may be applied. They point only at

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the place of production, not to the producer, The claim of the monks to an exclusive and could they be appropriated exclusively, | right in this designation as applied to the the appropriation would result in mis- liqueur has been frequently the subject of chievous monopolies." Delaware & H. litigation, and has repeatedly been susCanal Co. v. Clark, 13 Wall. p. 324, 20 L. ed. 583. See also Columbia Mill Co. v. Alcorn, 150 U. S. 460, 37 L. ed. 1144, 14 Sup. Ct. Rep. 151; Elgin Nat. Watch Co. v. Illinois Watch Case Co. 179 U. S. 665, 45 L. ed. 365, 21 Sup. Ct. Rep. 270.

tained. In 1872, La Cour de Cassation in Le Père Louis Garnier v. Paul Garnier, 17 Annales, p. 259, held that “the word 'Chartreuse,' applied as a denomination to the liqueur manufactured by the religious community of which Père Garnier is the repreThis familiar principle, however, is not sentative, is but an abbreviation and the applicable here. It is not necessary for us equivalent of a designation more complete; to determine the origin of the name of the for it at once indicates the name of the order and its chief monastery. If it be as- fabricants (the Chartreux); the name or sumed that the monks took their name commercial firm of manufacture, which is from the region in France in which they no other than the community of these same settled in the eleventh century, it still re- Chartreux, and, finally, the place of manumains true that it became peculiarly their | facture; that is to say, the monastery of La designation. And the word "Chartreuse," Grande Chartreuse." It was concluded that as applied to the liqueur which for generations they made and sold, cannot be regarded in a proper sense as a geographical name. It had exclusive reference to the fact that it was the liqueur made by the Carthusian monks at their monastery. So far as it embraced the notion of place, the description was not of a district, but of the monastery of the order,-the abode of the monks, and the term in its entirety pointed to production by the monks.

the designation was the exclusive property of the monks. Mr. Browne, after quoting the above passage, adds: "That single word" (Chartreuse) "contains a long history of strife. It has repeatedly been held to be a perfect trademark, for the reasons just cited." Browne, Trade-Marks, §§ 582, 407-410.

See also 17 Annales, 241, 249;

Rey v. Lecouturier, supra, Grezier v. Girard, and others, United States circuit court, southern district of New York, 1876, not reported; A. Bauer & Co. v. Carthusian Monks, 56 C. C. A. 484, 120 Fed. 78.

It cannot be supposed that if, during the occupation by the monks of the Monastery of La Grande Chartreuse, another had es- We find no error, therefore, in this detablished a factory at Fourvoirie and there termination of the judgment. The regis manufactured a liqueur, he could have af- tered trademarks were valid. In the statefixed to it the name "Chartreuse" or "Grande ments for registration, the symbols actually Chartreuse" or "Gde. Chartreuse," on the used in combination were set forth. Take, ground that these were place names, or de- for example, the mark in the glass of the scriptive of advantages pertaining to the bottle, consisting of "Gde. Chartreuse” unlocality. It could not fail to be recognized der the globe, cross, and seven stars. This at once that these were the distinctive undoubtedly is a valid mark. And the same designations of the liqueur made by the is true of the other marks, shown on the monks, and not geographical descriptions labels attached to the bottles, which inavailable to anyone who might make cordial | cluded the ecclesiastical symbols and the in a given section of country. The same would have been true if the monks had voluntarily removed, and continued their manufacture elsewhere. As was forcibly said by the lord chief justice in the court of appeal in Rey v. Lecouturier [1908] 2 Ch. p. 726: "To test this question, let us suppose that the monks had moved their manufacture to another monastery or another building in France, and had sold the fabric of the distillery, and left the district of La Grande Chartreuse, but had continued to make the liqueur in the same way; could it be contended that anyone who bought, as old bricks and mortar, the distillery at Fourvoirie, could immediately call any liqueur made there by the name of *Chartreuse, and put it on the English market under that name? It is to me quite unarguable."

facsimile of the signature of L. Garnier. It follows that up to the time of their expulsion from the monastery, the monks were entitled to protection against the infringement of these marks, which were their exclusive property, as well as against unfair competition.

The next inquiry is with respect to the effect of the liquidation proceedings in France. Upon the application of the procureur of the Republic, the French court proceeded to the judicial liquidation of the properties in France held by the nonauthorized congregation of the Chartreux, and it was of these properties that a liquidator was appointed. It does not appear that the court assumed jurisdiction of the trademarks registered on behalf of the monks in other countries. On the contrary, it ap pears to have been held that the question

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"The question has not been debated be- "To me it seems perfectly plain that it tween the parties, and the court would not must be beyond the power of any foreign have failed, if it had been submitted to it, court or any foreign legislature to prevent to treat upon it in the counts of its deci- the monks from availing themselves in Engsion, in order to solve it in its disposition. land of the benefit of the reputation which "The silence in this respect, exclusive of the liqueurs of their manufacture have acany debate on this point, does not allow quired here, or to extend or communicate of admitting, as being implicitly contained the benefit of that reputation to any rival in the decree, in an ambiguous or equivocal or competitor in the English market. But form, the decision of which Lecouturier it is certainly satisfactory to learn from claims the benefit, and as the interpretation which he solicits from the court would have as effect to extend beyond what was its sole object, the matter judged by the decree of July 19th last.

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