Papers Relating to the Foreign Relations of the United States, For the Year 1887, Transmitted to Congress, With a Message of the President, June 26, 1888

No. 351.
Sir L. S. Sackville West to Mr. Bayard.

Washington , October 19, 1887. (Received October 21.)

Sir: In compliance with instructions which I have received from the Marquis of Salisbury, I have the honor to transmit to you herewith copies of an “act to consolidate and amend the law relating to fraudulent marks on merchandise” which has recently been passed in Great Britain, together with copies of a memorandum explaining the nature of its provisions. In framing this act, Her Majesty’s Government have sought to protect not only the interests of British subjects but also those of subjects and citizens of foreign states, by providing remedies against the fraudulent practices in question, whether committed to the detriment of British or foreign manufacturers.

The Government of the United States being a party to the international union for the protection of industrial property, Her Majesty’s Government feel confident that the passing of this act will be recognized by them as an attempt to carry out in their complete spirit the principles of that union, of which the main motive is the prevention of fraudulent practices of this description.

In transmitting to you for the information of the Government of the United States the act and memorandum in question, I am instructed to recommend them to your careful consideration and to state that Her Majesty’s Government appeal with some confidence to that of the United States to take any steps which may be in their power to initiate legislation in the same direction whereby reciprocal protection might be afforded in America in similar circumstances to British subjects.

I am, etc.,

L. S. Sackville West.

Merchandise-marks act, 1887.

[50 and 51 Vict., ch. 28.]

Chapter 23.—An act to consolidate and amend the law relating to fraudulent marks on merchandise. [23d August, 1887.]

Be it enacted by the Queen’s most Excellent Majesty, by and with the advice and consent of the Lords spiritual and temporal, and Commons, in this present Parliament assembled, and by the authority of the same, as follows:

1. This act may be cited as the Merchandise-marks act, 1887.

2. (1) Every person who—

(a) Forges any trade-mark; or

(b) Falsely applies to goods any trade-mark or any mark so nearly resembling a trade-mark as to be calculated to deceive; or

(c) Makes any die, block, machine, or other instrument for the purpose of forging, or of being used for forging, a trade-mark; or

(d) Applies any false trade description to goods; or

(e) Disposes of or has in his possession any die, block, machine, or other instrument for the purpose of forging a trade-mark; or

(f) Causes any of the things above in this section mentioned to be done, shall, subject to the provisions of this act, and unless he proves that he acted without intent to defraud, he guilty of an offense against this act.

(2) Every person who sells, or exposes for or has in his possession for sale, or any purpose of trade or manufacture, any goods or things to which any forged trademark or false trade description is applied, or to which any trade-mark or mark so nearly resembling a trade-mark as to he calculated to deceive is falsely applied, as the case may he, shall, unless he proves—

(a) That, having taken all reasonable precautions against committing an offense against this act, he had at the time of the commission of the alleged offense no reason to suspect the genuineness of the trade-mark, mark, or trade description; and

(b) That on demand, made by or on behalf of the prosecutor, he gave all the information in his power with respect to the persons from whom he obtained such goods or things; or

(c) That otherwise he had acted innocently; be guilty of an offense against this act.

(3) Every person guilty of an offense against this act shall be liable—

(i) On conviction on indictment, to imprisonment, with or without hard labor, for a term not exceeding two years, or to fine, or to both imprisonment and fine; and

(ii) On summary conviction, to imprisonment, with or without hard labor for a term not exceeding four months, or to a fine not exceeding £20, and in the case of a second or subsequent conviction, to imprisonment, with or without hard labor, for a term not exceeding six months, or to a fine not exceeding £50; and

(iii) In any case, to forfeit to Her Majesty every chattel, article, instrument, or thing by means of or in relation to which the offense has been committed.

(4) The court before whom any person is convicted under this section may order any forfeited articles to be destroyed or otherwise disposed of as the court thinks fit.

(5) If any person feel aggrieved by any conviction made by a court of summary jurisdiction, he may appeal therefrom to a court of quarter sessions.

(6) Any offense for which a person is under this act liable to punishment on summary conviction may be prosecuted, and any articles liable to be forfeited under this act by a court of summary jurisdiction may be forfeited, in manner provided by the summary jurisdiction acts: Provided, That a person charged with an offense under this section before a court of summary jurisdiction shall, on appearing before the court, and before the charge is gone into, be informed of his right to be tried on indictment, and if he requires be so tried accordingly.

3. (1) For the purposes of this act—

The expression “trade-mark” means a trade-mark registered in the register of trade-marks kept under the patents, designs, and trade-marks acts, 1883, and includes any trade-mark which, either with or without registration, is protected by law in any British possession or foreign state to which the provisions of the one hundred and third section of the patents, designs, and trade-marks act, 1883, are, under order in council, for the time being applicable.

The expression “trade description” means any description, statement, or other indication, direct or indirect—

(a) As to the number, quantity, measure, gauge, or weight of any goods; or

(b) As to the place or country in which any goods were made or produced; or

(c) As to the mode of manufacturing or producing any goods; or

(d) As to the material of which any goods are composed; or

(e) As to any goods being the subject of an existing patent, privilege, or copyright, and the use of any figure, word, or mark which, according to the custom of the trade, is commonly taken to be an indication of any of the above matters, shall be deemed to be a trade description within the meaning of this act.

The expression “false trade description” means a trade description which is false in a material respect as regards the goods to which it is applied, and includes every alteration of a trade description, whether by way of addition, effacement, or otherwise, where that alteration makes the description false in a material respect, and the fact that a trade description is a trade-mark, or part of a trade-mark, shall not prevent such trade description being a false trade description within the meaning of this act.

The expression “goods” means anything which is the subject of trade, manufacture, or merchandise.

The expression “person,” “manufacturer, dealer, or trader,” and “proprietor” include any body of persons corporate or unincorporate.

The expression “name “includes any abbreviation of a name.

(2) The provisions of this act respecting the application of a false trade description to goods shall extend to the application to goods of any such figures, words, or marks, or arrangement or combination thereof, whether including a trade-mark or not, as are reasonably calculated to lead persons to believe that the goods are the manufact me or merchandise of some person other than a person whose manufacture or merchandise they really are.

(3) The provisions of this act respecting the application of a false trade description to goods, or respecting goods to which a false trade description is applied, shall extend to the application to goods of any false name or initials of a person, and to goods with the false name or, initials of a person applied, in like manner as if such name or initials were a trade description, and for the purpose of this enactment the expression “false name or initials” means, as applied to any goods, any name or initials of a person which—

(a) Are not a trade-mark, or part of a trade-mark, and

(b) Are identical with, or a colorable imitation of, the name or initials of a person carrying on business in connection with goods of the same description, and not having authorized the use of such name or initials, and

(c) Are either those of a fictitious person or of some person not bona fide carrying on business in connection with such goods.

4. A person shall be deemed to forge a trade-mark who either—

(a) Without the assent of the proprietor of the trade-mark, makes that trade-mark or a mark so nearly resembling that trade-mark as to be calculated to deceive; or

(b) Falsifies any genuine trade-mark, whether by alteration, addition, effacement, or otherwise;

and any trade-mark or mark so made or falsified is in this act referred to as a forged trade-mark: Provided, That in any prosecution for forging a trade-mark the burden of proving the assent of the proprietor shall lie on the defendant.

5. (1) A person shall be deemed to apply a trade-mark or mark or trade description to goods who—

(a) Applies it to the goods themselves; or

(b) Applies it to any covering, label, reel, or other thing in or with which the goods are sold or exposed or had in possession for any purpose of sale, trade, or manufacture; or

(c) Places, incloses, or annexes any goods which are sold or exposed or had in possession for any purpose of sale, trade, or manufacture, in, with, or to any covering, label, reel, or other thing to which a trade-mark or trade description has been applied; or

(d) Uses a trade-mark or mark or trade description in any manner calculated to lead to the belief that the goods in connection with which it is used are designated or described by that trade mark or mark or trade description.

(2) The expression “covering” includes any stopper, cask, bottle, vessel, box, cover, capsule, case, frame, or wrapper; and the expression “label” includes any band or ticket.

A trade-mark or mark or trade description shall be deemed to be applied whether it is woven, impressed, or otherwise worked into, or annexed, or affixed to the goods, or to any covering, label, reel, or other thing.

(3) A person shall be deemed to falsely apply to goods a trade-mark or mark who, without the assent of the proprietor of a trade-mark, applies such trade-mark, or a mark so nearly resembling it as to be calculated to deceive; but in any prosecution for falsely applying a trade-mark or mark to goods the burden of proving the assent of the proprietor shall lie on the defendant.

6. Where a defendant is charged with making any die, block, machine, or other instrument for the purpose of forging, or being used for forging, a trade-mark, or with falsely applying to goods any trade-mark or any mark so nearly resembling a trade-mark as to be calculated to deceive, or with applying to goods any false trade description, or causing any of the things in this section mentioned to be done, and proves—

(a) That in the ordinary course of his business he is employed on behalf of other persons to make dies, blocks, machines, or other instruments for making, or being used in making, trade-marks, or, as the case may be, to apply marks or descriptions to goods, and that in the case which is the subject of the charge he was so employed by some person resident in the United Kingdom, and was not interested in the goods by way of profit or commission dependent on the sale of such goods; and

(b) That he took reasonable precautions against committing the offense charged; and

(c) That he had, at the time of the commission of the alleged offense, no reason to suspect the genuineness of the trade-mark, mark, or trade description; and

(d) That he gave to the prosecutor all the information in his power with respect to the persons on whose behalf the trade-mark, mark, or description was applied—he shall be discharged from the prosecution, but shall be liable to pay the costs incurred by the prosecutor, unless he has given due notice to him that he will rely on the above defense.

7. Where a watch-case has thereon any words or marks which constitute, or are by common repute considered as constituting, a description of the country in which the watch was made, and the watch bears no description of the country where it was made, those words or marks shall prima facie be deemed to be a description of that country within the meaning of this act, and the provisions of this act with respect to goods to which a false trade description has been applied, and with respect to selling or exposing for, or having in possession for sale, or any purpose of trade or manufacture, goods with a false trade description, shall apply accordingly, and for the purposes of this section the expression “watch” means all that portion of a watch which is not the watch-case.

8. (1) Every person who, after the date fixed by order in council, sends or brings a watch-case, whether imported or not, to any assay office in the United Kingdom for the purpose of being assayed, stamped, or marked, shall make a declaration declaring in what country or place the case was made. If it appears by such declaration that the watch-case was made in some country or place out of the United Kingdom, the assay office shall place on the case such a mark (differing from the mark placed by the office on a watch-case made in the United Kingdom), and in such a mode as may be from time to time directed by order in council.

(2) The declaration may be made before an officer of an assay office, appointed in that behalf by the office (which officer is hereby authorized to administer such a declaration), or before a justice of the peace or a commissioner having power to administer oaths in the supreme court of judicature in England or Ireland, or in the court of session in Scotland, and shall be in such form as may be from time to time directed by order in council.

(3) Every, person who makes a false declaration for the purposes of this section shall be liable, on conviction on indictment, to the penalties of perjury, and on summary conviction to a fine not exceeding £20 for each offense.

9. In any indictment, pleading, proceeding, or document, in which any trade-mark or forged trade-mark is intended to be mentioned, it shall be sufficient, without further description and without any copy or fac simile, to state that trade-mark or forged trade-mark to be a trade-mark or forged trade-mark.

10. In any prosecution for an offense against this act—

(1) A defendant, and his wife or her husband, as the case may be, may, if the defendant thinks fit, be called as a witness, and, if called, shall be sworn and examined, and may be cross-examined and re-examined in like manner as any other witness.

(2) In the case of imported goods, evidence of the port of shipment shall be prima facie evidence of the place or country in which the goods were made or produced.

11. Any person who, being within the United Kingdom, procures, counsels, aids, abets, or is accessory to the commission, without the United Kingdom, of any act which, if committed in the United Kingdom, would under this act be a misdemeanor, shall be guilty of that misdemeanor as a principal, and be liable to be indicted, proceeded against, tried, and convicted in any county or place in the United Kingdom in which he may be, as if the misdemeanor had been there committed.

12. (1) Where, upon information of an offense against this act, a justice has Issued either a summons requiring the defendant charged by such information to appear to answer to the same, or a warrant for the arrest of such defendant, and either the said justice on or after issuing the summons or warrant, or any other justice, is satisfied by information on oath that there is reasonable cause to suspect that any goods or things by means of or in relation to which such offense has been committed are in any house or premises of the defendant, or otherwise in his possession or under his control in any place, such justice may issue a warrant under his hand by virtue of which it shall be lawful for any constable named or referred to in the warrant, to enter such house, premises, or place at any reasonable time by day, and to search there for and seize and take away these goods or things; and any goods or things seized under any such warrant shall be brought before a court of summary jurisdiction for the purpose of its being determined whether the same are or are hot liable to forfeiture under this act.

(2) If the owner of any goods or things which, if the owner thereof had been convicted, would be liable to forfeiture under this act, is unknown or can not be found, an information or complaint may be laid for the purpose only of enforcing such forfeiture, and a court of summary jurisdiction may cause notice to be advertised stating that, unless cause is shown to the contrary at the time and place named in the notice, such goods or things will be forfeited, and at such time and place the court, unless the owner or any person on his behalf, or other person interested in the goods or things, shows cause to the contrary, may order such goods or things or any of them to be forfeited.

(3) Any goods or things forfeited under this section, or under any other provision of this act, may be destroyed or otherwise disposed of, in such manner as the court by which the same are forfeited may direct, and the court may, out of any proceeds which may be realized by the disposition of such goods (all trade-marks and trade descriptions being first obliterated), award to any innocent party any loss be may have innocently sustained in dealing with such goods.

13. The act of the session of the twenty-second and twenty-third years of the reign of her present Majesty, chapter 17, entitled “An act to prevent vexatious indictments for certain misdemeanors,” shall apply to any offense punishable on indictment under this act, in like manner as if such offense were one of the offenses specified in section 1 of that act, but this section shall not apply to Scotland.

14. On any prosecution under this act the court may order costs to be paid to the defendant by the prosecutor, or to the prosecutor by the defendant, having regard to the information given by and the conduct of the defendant and prosecutor respectively.

15. No prosecution for an offense against this act shall be commenced after the expiration of three years next after the commission of the offense, or one year next after the first discovery thereof by the prosecutor, whichever expiration first happens.

16. Whereas it is expedient to make further provision for prohibiting the importation of goods which, if sold, would be liable to forfeiture under this act; be it therefore enacted as follows:

(1) All such goods, and also all goods of foreign manufacture bearing any name or trade-mark being or purporting to be the name or trade-mark of any manufacturer, dealer, or trader in the United Kingdom, unless such name or trade-mark is accompanied by a definite indication of the country in which the goods were made or produced, are hereby prohibited to be imported into the United Kingdom, and, subject to the provisions of this section, shall be included among goods prohibited to be imported as if they were specified in section 42 of the customs consolidation act, 1876.

(2) Before detaining any such goods, or taking any further proceedings with a view to the forfeiture thereof under the law relating to the customs, the commissioners of customs may require the regulations under this section, whether as to information, security, conditions, or other matters, to be complied with, and may satisfy themselves, in accordance with those regulations, that the goods are such as are prohibited by this section to be imported.

(3) The commissioners of customs may from time to time make, revoke, and vary regulations, either general or special, respecting the detention and forfeiture of goods the importation of which is prohibited by this section, and the conditions, if any, to be fulfilled before such detention and forfeiture, and may by such regulations determine the information, notices, and security to be given, and the evidence requisite for any of the purposes of this section, and the mode of verification of such evidence.

(4) Where there is on any goods a name which is identical with or a colorable imitation of the name of a place in the United Kingdom, that name, unless accompanied by the name of the country in which such place is situate, shall be treated for the purposes of this section as if it were the name of a place in the United Kingdom.

(5) Such regulations may apply to all goods the importation of which is prohibited by this section, or different regulations may be made respecting different classes of such goods or of offenses in relation to such goods.

(6) The commissioners of customs, in making and in administering the regulations, and generally in the administration of this section, whether in the exercise of any discretion or opinion, or otherwise, shall act under the control of the Commissioners of Her Majesty’s treasury.

(7) The regulations may provide for the informant reimbusing the commissioners of customs all expenses and damages incurred in respect of any detention made on his information, and of any proceedings consequent on such detention.

(8) All regulations under this section shall be published in the London Gazette and in the Board of Trade Journal.

(9) This section shall have effect as if it were part of the customs consolidation act, 1876, and shall accordingly apply to the Isle of Man as if it were part of the United Kingdom.

(10) Section 2 of the revenue act, 1883, shall be repealed as from a day fixed by regulations under this section, not being later than the 1st day of January, 1888, without prejudice to anything done or suffered thereunder.

17. On the sale or in the contract for the sale of any goods to which a trade-mark, or mark, or trade description has been applied the vendor shall be deemed to warrant that the mark is a genuine trade-mark and not forged or falsely applied, or that the trade description is not a false trade description within the meaning of this act, unless the contrary is expressed in some writing signed by or on behalf of the vendor and delivered at the time of the sale or contract to and accepted by the vendee.

18. Where, at the passing of this act, a trade description is lawfully and generally applied to goods of a particular class, or manufactured by a particular method, to indicate the particular class or method of manufacture of such goods, the provisions of this act with respect to false trade descriptions shall not apply to such trade description when so applied: Provided, That where such trade description includes the name of a place or country, and is calculated to mislead as to the place or country where the goods to which it is applied were actually made or produced, and the goods are not actually made or produced in that place or country, this section shall not apply unless there is added to the trade description, immediately before or after the name of that place or country, in an equally conspicuous manner, with that name, the name of the place or country in which the goods were actually made or produced, with a statement that they were made or produced there.

19. (1) This act shall not exempt any person from action, suit, or other proceeding which might, but for the provisions of this act, be brought against him.

(2) Nothing in this act shall entitle any person to refuse to make a complete discovery or to answer any question or interrogatory in any action, but such discovery or answer shall not be admissible in evidence against such person in any prosecution for an offense against this act.

(3) Nothing in this act shall be construed so as to render liable to any prosecution or punishment any servant of a master resident in the United Kingdom who bona fide acts in obedience to the instructions of such master, and, on demand made by or on behalf of the prosecutor, has given full information as to his master.

20. Any person who falsely represents that any goods are made by a person holding a royal warrant, or for the service of Her Majesty, or any of the royal family, or any Government department, shall be liable, on summary conviction, to a penalty not exceeding £20.

21. In the application of this act to Scotland the following modifications shall be made:

The expression “summary jurisdiction acts” means the summary procedure act, 1864, and any acts amending the same.

The expression “justice” means sheriff.

The expression “court of summary jurisdiction” means the sheriff court, and all jurisdiction necessary for the purpose of this act is hereby conferred on sheriffs.

22. In the application of this act to Ireland the following modification shall be made:

The expression “summary jurisdiction acts” means, so far as respects the police district of Dublin metropolis, the acts regulating the powers and duties of justices of the peace of such district, and as regards the rest of Ireland means the petty sessions (Ireland) act, 1851, and any act amending the same.

The expression “court of summary jurisdiction” means justices acting under those acts.

23. The merchandise marks act, 1862, is hereby repealed, and any unrepealed enactment referring to any enactment so repealed shall be construed to apply to the corresponding provision of this act; provided that this repeal shall not affect—

(a) Any penalty, forfeiture, or punishment incurred in respect of any offense committed against any enactment hereby repealed; nor

(b) The institution or continuance of any proceeding or other remedy under any enactment so repealed for the recovery of any penaly incurred, or for the punishment of any offense committed before the commencement of this act; nor

(c) Any right, privilege, liability, or obligation acquired, accrued, or incurred under any enactment hereby repealed.

Memorandum.

“The merchandise marks act, 1887,” has been passed with the object, inter alia, of giving effect to the international convention signed at Paris on the 20th March, 1863, for the protection of industrial property, and also of giving effect, to a certain extent, to the recommendations made at the second meeting of the conference held in Rome in the early part of 1886.

Her Majesty’s Government have been assured that a habit largely prevails in various parts of the world of marking goods with false indications of origin, which habit tends to defraud, not only the purchaser who buys articles produced in one place believing them produced in another, but also those trade communities who, having justly attained a high reputation for excellence, find their name pirated by makers of inferior goods, not only in their own, but also in foreign countries. It is believed that any enactment which tends to discourage this habit, and to afford to the purchaser reasonable assurance that the goods he buys are what they purport to be, will be for the benefit, not only of the whole body of the consumers, but also of trading communities both in the United Kingdom and in foreign countries.

The act deals with two principal classes of offenses: those connected with forged or imitated trade-marks, and those connected with false trade descriptions. It is an offense under the act to forge a trade-mark, or to make or have in possession any machine or other instrument for the purpose of forging a trade-mark.

It is also an offense to apply any false trade description to any goods, or to be in possession for sale of any goods to which a false description or trade-mark has been applied.

A “trade-mark” is defined so as to include foreign trade-marks entitled to protection in the United Kingdom, as well as trade-marks registered in the United Kingdom.

A “trade description” is defined as meaning any description, statement, or other indication, direct or indirect—

1. As to the number, quantity, measure, gauge, or weight of any goods;

2. As to the place or country in which the goods were produced;

3. As to the mode of manufacture of such goods;

4. As to the material of which they are composed; or

5. As to their being the subject of any existing patent or copyright.

A “false trade description” means a trade description which is false in a material respect as regards the goods to which it is applied.

An application includes not only a direct application, but an application to any cover, label, etc., in or with which the goods are sold, and also placing goods in any covering, label, etc., to which a trade-mark or trade description has been applied.

The several offenses of making and applying forged marks, applying false descriptions, and selling goods so falsely marked, are punishable under the act with imprisonment and fine according to the two British methods of procedure by indictment and by summary conviction. It is competent for any foreigner in the United Kingdom, whether he be the proprietor of a pirated trade-mark, or a member of an injured community, to set the law in motion for the punishment of an offender.

Provision is also made under the act for the forfeiture and disposal of falsely-marked goods, whether found in the possession of an accused person or otherwise.

It is apparent, however, that much of the existing injury occasioned to traders and communities by false marking may be obviated by the prohibition on importation into the several countries of falsely-marked goods; and the attention of the representatives at the conferences of Paris and Borne was largely devoted to the formulation of principles upon which the countries of the union respectively should frame their customs regulations.

As to the precise limits of prohibition, complete unanimity was not, indeed, attained at the conferences. It was distinctly recognized that goods falsely marked, whether by means of forged trade-marks, false names, or descriptions, should throughout the countries of the union be seized at the port of importation; but the conference at Rome made an exception to the effect that the consent of the manufacturer should be taken as showing absence of fraudulent intent.

Her Majesty’s Government are assured, however, that trading communities suffer much injury to their commercial reputation through the importation by their own members of inferior goods made elsewhere, and they are aware that the same feeling is entertained in other countries.

Her Majesty’s Government therefore decided, in the bill which they submitted to parliament, and which has now passed into law, that no such exception shall be made; and the act accordingly provides for the issue of customs regulations under which all goods which are falsely marked in any manner specified in the act, and whether imported with the consent of the manufacturer or not, will be seized and forfeited.

Inasmuch as the existing mischief largely consists in marking goods made in one country with the names of manufacturers and places in another, and in the exportation of these goods to a third, it is evident that the interests of the injured manufacturer or community can be safeguarded only in the country of manufacture and in that to which the goods are exported.

Under the present act and the forthcoming customs regulations, the rights of all foreign manufacturers and trading communities will be protected alike in British courts of justice and at British ports-While Her Majesty’s Government, therefore, believe that the evils complained of can not be altogether suppressed without international harmony of legislation and customs regulations, they entertain a confident opinion that, under the merchandise marks act, foreign traders and communities will obtain in the United Kingdom a very ample protection.