petition was caused to be made by the said Order, or on its behalf, and it denies that the said registration was for the name Chartreuse, and that any rights were conferred by the same registration to the said Order or to the complainants herein. 6. It denies that the appointment and powers of Henri Lecouturier and his agreement with Mr. Joseph Cusenier are correctly set forth in Paragraph 6 of the petition, and it alleges that said Mr. Lecouturier was expressly and duly authorized and instructed by the Courts of the Republic of France to continue the business formerly carried on by the Carthusian Monks at the place where such business had been carried on by them, and that the title to all the trademarks, tradenames and goodwill was vested in him by virtue of Decrees of the Courts having jurisdiction in the premises, and that he was given the exclusive right to harvest the plants, to which the cordial manufactured by the monks owed its peculiar qualities and reputation. 7. It admits that a bill was filed by the petitioners herein against it praying for the usual injunction and accounting. It was alleged in said bill that the defendants had made use of the word "Chartreuse" as a trademark to designate the said cordial or liqueur manufactured by them and that they attempted to sell to the public a spurious imitation article falsely representing that it was made pursuant to the so-called secret recipe which complainants claimed to own, and that said imitation liqueur was offered in bottles and cases similar in appearance to those long used by the complainants for the purpose of injuring the complainants and of deceiving the public. No evidence was introduced that any representation had ever been made by the defendant that the liqueur manufactured by it was made according to any recipe owned by complainants. It was found by the Circuit Court of Appeals. that the liqueur had never been designated by the complainants as Chartreuse, that said word was of geographical origin and had been used on the labels in a geographical sense and that it had acquired a secondary meaning, indicating both that it was manufactured by monks and that it was made at a certain place, that its reputation was due to a great extent to the peculiar plants which grew in that locality; that the defendants had acted in good faith and in pursuance of the decrees of the Courts of the Republic of France by which the liquidator had been appointed, that the proof of deception was extremely unsatisfactory, that the parties represented by the defendant had acquired the right in France to use the old labels and bottles and to designate their liqueur by the name of "Chartreuse", and also the right to manufacture their liqueur at the place where the herbs grew which gave the said liqueur its peculiar character and that they were entitled to mention this fact on their labels and bottles and to all the advantages resulting therefrom, and that to deprive them of the right to mention said locality would be to deprive them of a substantial right. In giving the defendant the right to make use of the word "Chartreuse,'' if it was so used as clearly to distinguish such liqueur from the liqueur or cordial manufactured by the complainants, the said Circuit Court of Appeals followed, as is stated in its opinion, the English Decree, which is referred to in the brief attached to the petition as the leading authority in favor of the complainants herein. The said Cusenier Company further presents its cross petition and respectfully shows as follows: 1. That the complainants herein were, prior to the passage of the Association Act of 1901, an illegal and unauthorized association, having no civil rights and existing only by reason of a toleration which was entirely extra-legal and could be withdrawn at any time. 2. Before said Lecouturier was appointed as liquidator under the Association Act all the property of the Order, including all trademarks and goodwill, had been transferred by it to one Rey, a former procureur of the Order, by a deed bearing date of the 20th of November, 1897. 3. Thereafter it was finally decided by a Court of competent jurisdiction of the Republic of France, viz., the Court of Cassation, by its decision of July 31, 1906, that said Rey was a passive trustee and that the property transferred to him formed part of the assets to be so liquidated, and the title thereto was vested in the said Lecouturier and passed to the Compagnie Fermiere de la Grande Chartreuse, whose agent the defendant is. 4. That all the proceedings appointing said Lecouturier as liquidator and determining the extent of the rights vested in him, and all the other proceedings determining the rights of the respective parties herein, were made by Courts of competent jurisdiction in France after due notice to the complainants herein, and after they had been heard in respect to their rights; that all such property, trademark, good will, so vested in Lecouturier were obtained at a judicial auction sale held by order of the Court having jurisdiction of the premises, by the Compagnie Fermiere de la Grande Chartreuse, and are now vested in it. That these defendants were the agents, at the beginning of the suit, of said Mr. Lecouturier, and are now the agents of the Compagnie Fermiere de la Grande Chartreuse. 5. The complainants herein had no property in the United States, they did not manufacture the liqueur here. After they began the manufacture at Taragona they completely abandoned the old labels and trademarks and use of the word Chartreuse, and gave the widest publicity, not only in trade papers but in papers of general circulation, to the fact that the old labels no longer indicated that the liqueur was manufactured by them. The evidence adduced by complainants shows that this fact was known to the trade and there is no evidence whatever that any one of the public was deceived into the belief that the liqueur sold by the defendant was manufactured by the Monks. 6. The word "Chartreuse" was a geographical term, designating the place or territory where the monks formed their establishment, it was never used by the monks to designate their liqueur; at the most it could be said to have acquired a secondary meaning, denoting not only that the liqueur was manufactured by monks but primarily that it was manufactured at a certain place, the habitat of the herbs to which the liqueur owes its peculiar aroma and qualities. 7. The said Circuit Court of Appeals in its opinion recognized the fact that the primary meaning of the word "Chartreuse ' was geographical and that it only later acquired a secondary meaning, but yet it affirmed that part of the decree of the Circuit Court which holds that the word symbol "Chartreuse" constitutes a technical trademark. It recognized that there is no proof of actual deception, that the defendant has acted in absolute good faith and is not to be treated as a pirate, and it then proceeded to give the complainants relief which can only be justified if the fact of unfair competition had been affirmatively found to exist. 8. From this it will be seen that this case involves the determination of important questions: Whether geographical expressions can ever be considered as technical trademarks and entitled to protection as such; Whether a trademark or protection against unfair competition can be claimed, not only after the word and label for which protection is sought, have been abandoned, but after it has been proved that the former owner has given publicity to the fact that they no longer represent the article of his manufacture, and after it has been proved that he has succeeded in convincing the public of that fact. Whether, in the absence of any business or manufacture in the United States, a foreign corporation can claim title to a trademark, the title to which it has lost by virtue of a decree of a competent court in its country of origin, after full notice and opportunity to be heard, and whether relief can be granted on the ground of unfair competition after it has been affirmatively found that the defendant has acted in good faith, and when there is no evidence that the public has been deceived. WHEREFORE, in order that the foregoing and other matters may be properly considered and adjudicated, your petitioners pray that this Honorable Court will grant its cross writ of Certiorari, directed to said Circuit Court of Appeals, for the Second Circuit, requiring the complete record of this cause in said Court to be certified to this Court, and that this Court will thereupon proceed to correct the errors herein complained of, and such other errors as may appear in said record, and reverse the decree of said Circuit Court of Appeals, in so far as it affirms the decree of the Circuit Court, and remand said cause with directions to dismiss the bill herein and give to your Petitioners such other and further relief as the nature of the case may require, and to the Court may seem proper in the premises. CERTIORARI FORM XXV.-WRIT OF CERTIORARI FROM SUPREME COURT TO STATE COURT. [253 U. S. 480.] UNITED STATES OF AMERICA, SS: [SEAL OF THE SUPREME COURT OF THE UNITED STATES.] The President of the United States of America to the Honorable the Judges of the Supreme Court of the State of Pennsylvania, Greeting: Being informed that there is now pending before you a suit in which Philadelphia & Reading Railway Company is appellant, and Maria Domenica Di Donato is appellee, which suit was removed into the said Supreme Court by virtue of an appeal from Court of Common Pleas No. 1 of the County of Philadelphia, and we, being willing for certain reasons that the said cause and the record and proceedings therein should be certified by the said Supreme Court and removed into the Supreme Court of the United States, Do hereby command you that you send without delay to the said Supreme Court, as aforesaid, the record and proceedings in saià cause, so that the said Supreme Court may act thereon as of right and according to law ought to be done. Witness the Honorable Edward D. White, Chief Justice of the United States, the sixth day of May, in the year of our Lord one thousand nine hundred and twenty. JAMES D. MAHER, Clerk of the Supreme Court of the United States. CERTIORARI FORM XXVI.-WRIT OF CERTIORARI [175 U. S. 762, in which the author was counsel.] UNITED STATES OF AMERICA, 88: FROM [SEAL OF THE SUPREME COURT OF THE UNITED STATES.] The President of the United States of America to the honorable the judges of the United States circuit court of appeals for the second circuit, Greeting: Being informed that there is now pending before you a suit in which Lizzie Stearns Bleecker and Elsie L. Bleecker and The Steamship "Kensington,” her engines, &c., The International Navigation Company, claimant, on appeal and cross-appeal, which suit was removed into the said circuit court of appeals by virtue of appeals from the district court of the United States for the southern district of New York, and we, being willing for certain reasons that the said cause and the record and proceedings therein should be certified by the said circuit court of appeals and removed into the Supreme Court of the United States, do hereby command you that you send without delay to the said Supreme Court, as aforesaid, the record and proceedings in said cause, so that the said Supreme Court may act thereon as of right and according to law ought to be done. Witness the Honorable Melville W. Fuller, Chief Justice of the United States, the 31st day of October, in the year of our Lord one thousand eight hundred and ninety-nine: JAMES H. MCKENNEY, Clerk of the Supreme Court of the United States. CERTIORARI FORM XXVII.-STIPULATION THAT TRANSCRIPT OF PROCEEDINGS IN STATE COURT PREVIOUSLY FILED STAND AS RETURN. [253 U. S. 480.] IN THE SUPREME COURT OF THE UNITED STATES, OCTOBER TERM, 1919. The Writ of Certiorari in the above entitled case having been granted to the above entitled petitioner to review the judgment and decision of the Supreme Court of the State of Pennsylvania in the above case, in which Philadelphia & Reading Railway Company was Appellant and Maria Domenica Di Donato was Appellee: Now it is therefore stipulated and agreed between counsel for the above named petitioner and counsel for the above named respondent that the Transcript of Record of the said Supreme Court of Pennsylvania in said cause now on file in the Supreme Court of the United States be taken as a return to the said writ and that the Prothonotary of the Supreme Court of Pennsylvania forward a certified copy of this stipulation to the Clerk of the Supreme Court of the United States forthwith, as his return to the said Writ of Certiorari. Done the 10th day of May, A. D. 1920. GEORGE GOWEN PARRY, Counsel for Above Petitioner. ROWLAND C. EVANS, Counsel for Above Respondent. |