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. 531.
Mr. Bayard
to Mr. Bell.
Washington, May 13, 1887.
Sir: I inclose herewith for your information a copy of a letter to this Department from John H. Flagg, esq., attorney for the Devoe Manufacturing Company, of New York, in relation to the alleged action of Messrs. Engelhard & Co., of Java, in fraudulently filing the Devoe Company’s trade-mark for registration in Java and the other Dutch colonies.
[Page 899]I will thank you to bring this matter to the attention of the foreign office, with the request that the necessary steps may be taken for the protection of the rights of the Devoe Manufacturing Company in the premises.
I may add that Mr. Flagg is in error in his statement that this Government adhered to the international convention on the 19th of March last.
The formal date of our assent is not yet determined, but will probably be about the end of this month.
I am, etc.,
Mr. Flagg to Mr. Bayard.
Sir: I have the honor to submit the following statement of facts touching the business of the Devoe Manufacturing Company, which is now seriously imperiled (so far as its exports to the Dutch East Indies are concerned) by reason of a recent law of the Netherlands Government relating to the registration of trade-marks. It appears that the Devoe Manufacturing Company is a corporation existing under the laws of the State of New York, whose business is the refining and packing of petroleum wholly for export; that for many years it has exported annually a large quantity of refined petroleum, and especially to the Dutch East Indies, to which were exported cases of 10 gallons each (according to figures given by the United States consul at Batavia):
| In 1883 | 1,417,547 |
| In 1884 | 1,859,643 |
| In 1885 | 1,439,173 |
| In 1886 | 1,863,331 |
Whereas the total consumption of these colonies for the same period was (cases of 10 gallons each):
| 1883 | 1,976,281 |
| 1884 | 2,094,238 |
| 1885 | 1,960,874 |
| 1886 | 2,106,163 |
Thus showing the exceeding popularity of the Devoe brand of oil in the colonies, which constituted a very large portion of all the refined oil of every description consumed therein. That for many years, and during all the period covered by the exportation above referred to, the Devoe Company has had its own exclusive trademark or brand, legally authorized in the United States and everywhere recognized, and that each case of oil exported has been branded therewith, as follows:
Devoe’s
Pat’d June 23rd, 1863.
Brilliant oil.
Improved.
Pat’d June 28th, 1864.
Patent can.
The Devoe M’f’g Co.,
New York.
65 pounds of oil.
That owing to the high grade of oil known as this brand and they long period of time during which it has been supplied, it has become well known by all consumers, and is in large demand, far in excess of any and all other brands known to the trade throughout the Dutch East Indies. That on the 18th of February last the Devoe Company received by cable from Mr. Hatfield, the United States consul at Java, information that the firm of Englehard & Co., of Java, had there filed their (the Devoe Company’s) trade-mark for registration in the colonies, and asking if such action on the part of E. & Co. was by authority of the Devoe Company. Whereupon the Devoe Company immediately cabled in reply that such registration was entirely unauthorized, and requesting the consul to take steps to protect the company’s interests, and, if needful, to employ counsel. This was supplemented by a letter to Mr. Hatfield, giving him ample authority to draw on the company for all needful expenses to insure a vigilant and, if possible, successful opposition to this action of E. & Co.
That in point of fact and authority had ever been given to said Engelhard & Co., or any other person or firm to register the said trade-mark in behalf of the Devoe Company. That on investigation, the Devoe Company soon thereafter learned that E. & Co. claimed that their action was authorized by a recent law of the Netherlands Government, known as “Staatsblad No. 109,” officially made known in the colonies on the 8th of June, 1885, but of the existence of which he said Devoe Company had previously had no knowledge, E. & Co. asserting the lawful right under said law to register the trade-mark of any other person as their own without authority of that person and notwithstanding his protest against such action, thereby depriving the lawful owners of the valuable benefits, advantages, and commercial facilities which rightfully belonged to them, as in the case of the Devoe Company, after the establishment of a large and profitable business and the uninterrupted enjoyment of these privileges for a period of many years.
That if the said E. & Co. succeed in wresting the Devoe Company’s brand and trademark from the said company, no other person, save E. & Co., can thereafter sell or offer for sale the Devoe brand in the colonies, Article X of the said law providing that “He who sells, offers, delivers, distributes, or has for sale or distribution such merchandise, which itself or on its packing bears the trade-mark to which another one is entitled, is condemned to imprisonment or to public works, according to his nativity, from eight to three months, with or without a fine, from twenty-five to six hundred guilders.” And by Article XI * * * said marks are to be destroyed, and, if not feasible, the goods themselves are to be destroyed.”
That the motive of the said E. & Co. in thus seizing upon and attempting to register the trade-mark of the Devoe Company clearly appears to have been for the purpose and with the sole object of depriving the lawful owners thereof of the right to its use and to exclude from importation into the colonies the brand of oil covered thereby, it appearing that the said E. & Co. are interested in another brand of oil which they desire to promote by these bold and high-handed proceedings—all of which is fully shown by the official dispatches of the. United States consul hereinafter referred to.
That judicial proceedings have been commenced through the timely intervention of Mr. Hatfield, the United States consul at Batavia, to prevent the issuance of the said trade-mark to E. & Co. under their said application, on the ground that to issue the same to them would be to defraud the lawful owners of their rightful property long recognized and enjoyed.
That the suit is soon to be tried, the main question involved being whether under said law any person not interested can thus seize upon and appropriate to himself and to the exclusion of the legitimate owner an established and well-known trade-mark, under which, as in the present instance, millions of dollars of American exports have for many years been annually sold throughout the colonies.
Should the decision vest this trade-mark in E. & Co., the large and profitable business of the Devoe Company, which it has taken years to establish, will not only be irreparably ruined, but, as we have seen, any agent of the company attempting to sell its distinctive brands of oil is liable to fine and imprisonment and to have his goods condemned and destroyed.
Such a result would be manifestly repugnant to the friendly feeling of the two countries, which would seek to promote and extend their mutual commerce rather than to impair or destroy it (without hope of gain in any direction by so doing), and it is to be seriously doubted whether any such construction of the new statute as is contended for by E. & Co. was ever contemplated by the law-making power of the Netherlands Government.
In consideration of the foregoing facts we earnestly request you to invoke the intervention of the Netherlands Government, to the end that the said statute may be at once repealed, or essentially modified, so as to secure substantial justice to American exporters in the use of their own established brands and trade-marks, and also that said Government may cause a delay in the judicial proceedings now pending until such modification of the law shall have taken place, or until such other steps shall be [Page 901] taken as will avert the serious consequences of a decision adverse to the Devoe Company.
All the essential facts herein stated are more explicitly set forth in dispatches of the United States consul at Batavia to the Department (Nos. 203 and 207) dated, respectively, February 27, 1887, and March 9, 1887, and that of the United States consul at Padang (No. 3), dated February 18, 1887, to which, of course, considerate attention will be given by the Department.
The convention for the protection of industrial property, made at Paris March 20, 1883, to which the Netherlands Government is a party, and to which the United States assented on the 19th of March last would seem to give every assurance of the earnest desire of each Government to countenance no such spoliation of private property as herein complained of, and it may be questionable whether this convention itself does not extend to the colonies of the Netherlands Government, and would not be decisive of the case presented, had ratifications been exchanged prior to the action of E. & Co. in filing our trade-mark on or about February 7 last. Not only has the trademark of the Devoe Company been seized by unauthorized parties, but, following this adventure, many other trade-marks of other, importers have since been appropriated in like manner, and there is great apprehension in commercial circles throughout the colonies owing to these high-handed proceedings. A large number of respectable and well-known merchants have already petitioned the local authorities to recommend a repeal or modification of the law, as being unfair and dishonest toward the lawful owner of trade-marks, and as injurious to the consumer, who has no protection against fraud and imposition, while at the mercy of any monopoly that may be established to supply the demand for goods which, under fair and open competition, can no longer be furnished without incurring the risk of the penitentiary and the imposition of heavy fines and forfeitures.
While we have ventured to suggest such action as we think would result in averting the impending injury to this important market for petroleum exports, we nevertheless desire to leave the Department absolutely free to exercise its own better discretion as to the steps needful to be taken, only adding that it seems imperative to act at once, and by cable, since the pending case may otherwise be determined against us before the Home Government of the Netherlands can be advised of the gross denials of commercial privileges to the injury of American citizens, which are sought to be sanctioned under the forms of law in the colonies.
Respectfully, yours,
Attorney for The Devoe Manufacturing Company