Edward & John Burke, Limited, v. Bishop

• Citation: 175 F. 167
• Parties: EDWARD & JOHN BURKE, Limited, v. BISHOP.
• Decision Date: 14 January 1910
• Court: U.S. District Court — Southern District of New York

175 F. 167

EDWARD & JOHN BURKE, Limited, v. BISHOP.

United States Circuit Court, S.D. New York.

January 14, 1910

[Copyrighted Material Omitted]

Edmund Wetmore and Oscar W. Jeffery, for complainant.

Parker & Aaron, for defendant.

RAY District Judge.

The complainant is, and at the time of the commencement of this suit was, a corporation organized and doing business under the laws of the Kingdom of Great Britain and Ireland, and for many years has had, and now has, a place of business in the city of New York, U.S.A. Its business is that of export bottlers of stout, ales, whiskies, and other goods. It is the successor in business of the firm of Edward & John Burke composed of Edward Burke, John Burke, and John Gardner Nutting. In 1870 that firm was the sole export bottlers for the United States of the stout brewed by Arthur Guinness, Son & Co., Limited, and they continued to be such sole export bottlers of such stout until 1874 or 1875. For about 50 years the complainant and its predecessor have exported to the United States this Guinness' Stout in bottles bearing labels and capsules in the following style, dress, and collocation (with some insignificant alteration of detail) viz.: The bottle itself is of the shape and size of the ordinary lager beer or beer bottle. On one side is an oval label with the picture of a small harp thereon (trade-mark), such label bearing the words, in large print, 'Guinness's Extra Stout, James Gate, Dublin,' and, in small type, the words, 'Printed and issued by us as our trade-mark and label, Arth Guinness, Son & Co.,' a number printed in large red figures, and also, in small type, the words 'Bottled by E. & J. Burke, Limited, Dublin, Ireland, who sell no other brown stout in bottles. ' Below this, and attached horizontally, is another oval label of the same color bearing the words:

'Guinness' Extra Foreign Stout, Dublin. We the undersigned guarantee and hold ourselves responsible that we bottle none other than Guinness's Finest Foreign Stout which we have continuously done for past half century. Edward & John Burke, Limited. Established in Dublin in 1849.'

On the opposite side is another oval label bearing the legend in large print:

'E. & J. Burke, Guinness' Foreign Stout, Brewed in Ireland. Caution-- None genuine without our patent capsule bearing our trade mark. Edward and John Burke, Limited. Dublin.'

The caution is in smaller type. Above the caution is the picture of a cat between the words, 'trade' and 'mark,' and underneath the cat is the monogram, 'E. & J. B.' All these labels are of a buff or yellowish color, except the central part of the third one has some check marks made by red lines. The capsule, covering the nose of the bottle and extending downward something more than an inch, is red, except the tip or very top of the capsule, which is yellow, and both side and top have the said trade-mark (cat) and monogram, and letters 'E. & J. Burke, Dublin,' thereon. That which first catches the eye or attracts attention is the red capsule. The next prominent feature is the first and second label mentioned and their color and arrangement with reference to each other; the first being perpendicular to the other. If one stops to read, the third label tells who bottled the stout. All the labels tell that the contents are Guinness' Stout.

The defendant, Isaac C. Bishop, is a citizen of the United States, residing in the Southern district of the state of New York and doing business in the city of New York. He is a dealer in stout, ale, and other beverages, but not a bottler or an importer. Prior to the commencement of this suit, April 1, 1904, he sold in his said business bottled stout, contained in bottles of the same size and shape as those of complainant. This stout was manufactured by Arthur Guinness, Son & Co. of Dublin, Ireland, at that place, and was bottled by T. B. Hall & Co. of Liverpool, England, and imported to the United States by William A. Ross doing business in the city of New York under the name and style of William A. Ross & Bro. by whom it was sold to the defendant. This stout was put up and sold in bottles of the same size and shape as Burke's, dressed and labeled as follows, viz.: The first label in all respects, including size, shape, and color, is the same as the first-mentioned label on the complainant's bottles, substituting the words, 'T. B. Hall & Co., 79 to 83 Norfolk street, Liverpool,' for the words, 'E. & J. Burke, Limited, Dublin. ' The second label, of the same size, shape, and color of complainant's and attached at the same place and in the same way, reads:

'Auk's Head Bottling. Guinness's Extra Foreign Export Stout, Brewed by Arthur Guinness, Son & Co., Ltd., James's Gate, Dublin, and guaranteed genuine by W. A. ross & Brother, Belfast & Liverpool, who sell no other stout.'

On the opposite side of the bottle is a third label of the same shape, size, and general color of complainant's third label omitting check marks, bearing the words, 'Ross's Brand,' with an auk's head between the word 'Ross's' and the word 'Brand.' Beneath the auk's head is printed:

'Great Auk's Head, Regd. Trade Mark. W. A. Ross & Brother, Belfast, Liverpool & London. Guinness's Extra Foreign Stout, brewed by Arthur Guinness, Son & Co., Ltd. James's Gate, Dublin, Ireland. Guinness's Stout.'

In small type running around the border are the words:

'This label is registered and entered at Stationers Hall, London. Used only by W. A. Ross & Brother, Belfast, Liverpool & London.'

Above this label is a fourth, of white paper, bearing the words, printed in red, 'Great Auk's Head.' The capsule, covering the nose of the bottle and extending down on the neck thereof as far as does complainant's capsule, is of the same red color as complainant's capsule, but has a small strip of blue added. On the side of this capsule is found the words, 'Guaranteed genuine, W. A. Ross & Brother,' and on the white top or tip is found the picture of the auk's head and the words, 'W. A. Ross & Brother, Ltd., Belfast & Liverpool.'

At a little distance the one bottle thus labeled and dressed resembles the other as so dressed and labeled so closely, when the sides bearing the two labels first described are presented to the eye and the bottles stand side by side, that the one would easily and probably be mistaken for the other. On close inspection and reading we discover the difference. Presenting the other sides of the two bottles standing side by side (those sides bearing the trade-marks, cat, and auk's head respectively and the name 'E. & J. Burke' in large letters on the one and 'Ross's Brand' in large letters on the other), and the resemblance is much less marked.

When thus presented to a purchaser or consumer, he would not be liable to mistake the one for the other provided he wanted stout of Burke's bottling and looked to see if he had it, although he might not understand that 'Ross's Brand' and 'Auk's Head' are not of Burke's bottling. Simply taking in at a general glance the two bottles, or not having but one before him and guided, as naturally he would be, by the general size and shape of the bottle and the most distinctive feature, the color (red) of the capsule, the ordinary purchaser or customer, calling for a bottle of Guinness' Stout of Burke's bottling, would readily accept the one for the other, the 'Ross's Brand' for the Burke. The first label described, the brewers require all bottlers to affix to their bottles; name of the bottler printed thereon being made to correspond with the fact. The second and third labels are of the bottler's own choice or design. The position the second label shall occupy is fixed by the bottler. The bottler also selects his own capsule and its color. The close resemblance of a bottle of Guinness' Stout bottled by Hall & Co. and imported and sold by W. A. Ross & Bro. to a bottle of the same stout bottled by Burke and imported and sold by them is too close, too similar, to be the result of accident or of anything but study and a purpose to imitate the labels and dress of E. & J. Burke. The color, size, and shape of the second label and its position on the bottle and the color and length of the capsule indicate this very plainly. Then, again, there is too much similarity in the placing of the large letters on the third label. 'Guinness's Stout' on Ross' bottle is in the same place we find 'Guinness's Foreign Stout' on Burke's bottle.

Why say 'Ross's Brand,' instead of 'W. A. Ross &amp Brother,' in large capitals on the third label? This is designed and calculated, whether designed or not, to deceive and mislead; to give the impression to one accustomed for some twenty years to have access to stout of Burke's bottling only that Ross' brand of Guinness' Stout is one brand of Burke's bottling. The word 'brand' may be used to indicate the manufacturer or the quality of the contents, or with something else as a means of identification, or to indicate the trade-mark, or quality or kind as indicated by the brand or mark. See Century Dictionary, 'Brand.' On Burke's bottle, at top of the third label, the words 'E. & J. Burke, Trade Mark,' and monogram surrounding the picture of the cat, indicate very clearly the trade-mark. On defendant's bottle in this third label with the auk's head occupying the same place, substantially, as the cat on Burke's label, and surrounded by 'Ross's Brand, Great Auk's Head, Regd. Trade Mark, ' the word 'Brand' in large capital letters conveys a double meaning, and in connection with its position and the rest of the collocation aids to deceive; at least it tends to confusion. I assume that both had the right to use bottles of the same size and shape, and that both had the right to use, and were required to use, the first label...