Mr. Day to Mr.
Buck.
Department of State,
Washington, August 25,
1898.
No. 146.]
Sir: I inclose copy of a letter addressed to me
by Mr. Francis Forbes, of New York, representing the New York Condensed
Milk Company, which, it is alleged, has suffered for a number of years
past through the persistent counterfeiting of its labels in Japan, and
which has been unable to obtain a remedy through the registration of its
legitimate trade-mark on the ground that it was already in use by others
than the applicant.
Mr. Dun’s No. 478 of April 23, 1897, transmitted hither copies of the
regulations respecting patents, trade-marks, and designs of Japan, as
translated by the British legation in Tokyo. The provision on which the
Japanese refusal to register the trade-mark of the New York Condensed
Milk Company appears to rest would seem to be found in the second
article of the trade-marks regulations, reading thus:
Art. ii. The following can not be
registered as trade-marks: * * *
3. Such as are identical with or similar to trade-marks already
registered or trademarks used by others before the application
for registration was made, and which are intended to be applied
to identical goods.
To construe this provision literally with respect to the application of
the legitimate proprietors of a well-known trade-mark, designating an
article in world-wide use for many years, in such manner as to favor
those who have notoriously counterfeited that mark before the real
owners made application to secure their rights, would hardly seem to
accord with the purpose of the provision quoted. Its object would seem
to be to assure to the bona fide possessors and users of a trade-mark
already in use, although not registered in Japan, freedom to use the
same against the attempt of any subsequent party to appropriate that
mark, and so deprive the original owners of their equitable right
thereto. Recognition of the moral right of the original inventor and
user of the trademark is the essential thing aimed at, not deprivation
of his moral rights through the virtual recognition of a subsequent
counterfeit.
Even were the particular product now in question an article of Japanese
manufacture, yielding a direct profit to the natives of the country, it
is hardly to be conjectured that the Japanese Government would regard it
as a moral obligation to protect the native spurious production at the
expense of the genuine imported article. But when, as in the present
instance, the counterfeit is of foreign origin, the cans being, it is
alleged, of German make, and the contents the unsalable and inferior
production of German and Swiss factories, not only does any
consideration of pecuniary profit to Japanese industries become illusory
and
[Page 465]
indefensible, but, on the
other hand, considerations of public health may suggest the unwisdom of
permitting a virtually privileged trade in an unwholesome food product
under the color and reputation of an old and honorably established
name.
The matter is commended to you for careful consideration and for
conference with the proper Japanese authorities, with a view to
ascertaining whether it may not be practicable to construe and apply
this article in accordance with its obvious intent, and not, as would
appear to be the case in the present instance, to the prejudice of the
original and bona fide owners of a long-established trade-mark.
The Department will await your report on the subject with interest.
Respectfully, yours,
[Inclosure in No. 146.]
Mr. Forbes to Mr.
Day.
Mutual Life Building, 34 Nassau Street,
New
York, August 20,
1898.
Dear Sir: The following facts seem to be
sufficient to authorize me in bringing them to your attention:
The New York Condensed Milk Company, one of the oldest and largest of
the manufacturers of condensed milk in the United States, shipped
condensed milk to Japan for many years prior to any other
manufacturer of condensed milk. Such exportations to Japan were made
in almost the same form as at present.
For the past eight or nine years their labels have been persistently
counterfeited, but until the treaty with the United States it was
impossible to either register their marks or prosecute
infringers.
After the treaty an attempt was made by the company to register their
mark in Japan. The application was refused on the ground that the
trade-mark was already in use by others than the applicants. The use
by others was simply the use of lithographs of the Eagle Brand, and
therefore an illegal use, and the use which it was desired to stop.
The ruling is substantially that, if the marks of a citizen of the
United States are counterfeited before registration, such fraudulent
use is such a use under the Japanese law as to prevent
registration.
Such a ruling places all foreign marks in the power of Japanese
infringers.
The New York Condensed Milk Company do not understand that they have
any further right of appeal from this decision; and they further
feel themselves justified, because of the grave character of the
position taken by the Japanese patent office, viz, in calling an
infringing use of a trade-mark such as will prevent registration
under the law, in making the request that you present this matter to
the Japanese Government for a ruling thereon, which ruling will
affect not only this particular case of the New York Condensed Milk
Company, but also all other cases of applications by citizens of the
United States.
The letter of an attorney employed in Japan to make the registration
is inclosed. This letter was forwarded to me while at Brussels in
December, 1897. I personally called the attention of the Japanese
delegates who were attending the Convention for the Protection of
Industrial Property to the matter. They gave me no hope that the
registration would be allowed by the Japanese patent office.
[Page 466]
Prior to the conclusion of the trade-mark treaty with Japan your
Department called the attention of the company to the Japanese
infringement complained of. For your convenience I inclose a copy of
the letter of Mr. W. W. Rockhill, Third Assistant Secretary, dated
August 8, 1894, and a copy of the letter of Mr. N. W. McIvor,
consul-general, Kanagawa, Japan, dated July 9, 1894, inclosed in the
letter of Mr. Rockhill, and a copy of the reply of the New York
Condensed Milk Company, dated August 13, 1894. A later letter has
been received by the company from Edward Bedloe, United States
consul at Canton, China, a copy of which is also inclosed.
Is it not proper for me to ask you to send such instructions to the
representatives of the United States as shall cause the Japanese
patent office to make the desired registration, and also shall bring
about the protection of the mark in China, where there is as yet no
trade-mark law?
A copy of the genuine label is inclosed.
Yours, respectfully,
[Subinclosure No. 1.]
Department of State,
Washington, August 8,
1894.
New York Condensed Milk
Company,
71 Hudson Street, New
York.
Gentlemen: I inclose herewith for your
information a copy of a dispatch from the consul-general of the
United States at Kanagawa reporting the manufacture and sale in
Japan of an imitation of the “Gail Borden Brand” of condensed milk
prepared by your company.
He incloses a sample of the label used and two cans with their
labels. These inclosures are transmitted to you herewith, the cans
being sent under separate cover.
I am, etc.,
W. W. Rockhill,
Third Assistant Secretary.
[Subinclosure No. 2.]
Mr. McIvor to Mr.
Uhl.
Consulate-General of the United States,
Kanagawa, Japan, July 9, 1894.
No. 41.]
Sir: I have honor to report to the
Department the manufacture and sale in Japan of what seems to be an
imitation of the “Gail Borden Eagle Brand” condensed milk, prepared
by the New York Condensed Milk Company, 71 Hudson street, New
York.
In conversation with two or three gentlemen the matter was referred
to and I secured a can, supposed to be spurious, which I inclose
herewith, marked “Inclosure l.’ I then secured a can, which I am
assured was purchased direct and is genuine, marked “Inclosure 2.” I
submitted the labels to a practical printer, who reports to me that
the label on inclosure 2 is printed, while that on inclosure 1 is
lithographed or engraved. I have also secured from Tokyo a third
label, marked “Inclosure 3” which seems to be an engraved imitation.
I have not had an analysis made of the contents of the spurious
can.
Owing to the scarcity of natural milk in Japan the trade in canned or
condensed milk is quite heavy, and the Eagle Brand has probably the
best reputation, which fact has caused this brand to be imitated
more than any other.
I am informed by a former agent of Messrs S. A. Barnes & Co.,
publishers, of New York, that while foreign copyrights and patents
are not protected under the laws of Japan, a general order has been
made that in the case of an imitation the brand may be used, but the
name can not be reproduced, in support of which statement an
original communication from the Japanese home office is presented, a
copy of which I inclose, marked “Inclosure 4.”
Basing my judgment on the communication of the State Department to
Messrs. S. A. Barnes & Co., in October, 1888, and on various
letters submitted, I concluded that the order prohibiting the use of
the name was not an order of general application, but was made in
the particular case on the ground that the reprint of Messrs.
[Page 467]
Barnes & Co’s. books
were issued from a Government printing office, and had no
application beyond the correction of the infringement complained of;
but Mr. F. Schroeder, the agent above referred to, informs me that
the order has been given general application.
I make this report because I understand that the New York Condensed
Milk Company has no agent here to represent it, and thinking that
the Department, if it has been decided that it has the right to call
the attention of the Japanese Government to the use of the name of
one of our manufacturers, might wish to inform the New York
Condensed Milk Company of the fraudulent use of its name, that the
company may cause such an investigation to be made by its agents as
will point out the offenders.
I have, etc.,
N. W. McIvor, Consul-General.
[Subinclosure No. 3.]
New
York, August 13,
1894.
Hon. W. W.
Rockhill,
Third Assistant Secretary
of State, Washington, D. C.
Dear Sir: We are in receipt of your favor
of the 8th instant, with documents inclosed as stated, and the
package referred to is also at hand. Permit us to thank you and the
Department for so kindly supplying us with the information above
acknowledged. Regarding the in closures, would state that the
inferences drawn by the honorable consul-general at Kanagawa are
correct.
- Inclosure No. 1 is a very clever lithographic reprint of our
regular label registered in the United States Patent Office, and
that not only that, but the can itself is a very careful
reproduction of our can, and we believe emanates from Germany or
England. The contents of the can, however, consist of a very
poor and dangerous quality of condensed milk, being rancid and
unfit for use and apparently made from skimmed milk.
- Inclosure No. 2 represents original and genuine can and label,
containing the usual quality of condensed milk put up by us,
same being in a perfect state of preservation.
- Inclosure No. 3 represents an entirely different counterfeit
label than the one indicated as No. 1, and we think is the work
of natives, and is evidently printed from type.
Bearing on this subject, we would state that we have experienced a
great deal of trouble from the counterfeiting of our labels both in
China and Japan, but since the proclamation issued by the
magistrates of Canton in 1888, through the efforts of the Hon.
Charles A. Seymour, we have been less troubled in the former
country. On the other hand, greater activity Seems to be now
displayed in Japan, and while we think it might prove somewhat
advantageous to take steps there toward inducing the Government to
prohibit the reproduction of the names on our labels it would not
eradicate the practice of putting up dangerous and inferior goods.
This question of quality is one that vitally affects the people of
Japan. Thousands of infants in that country are annually raised on
our product, and even the imperial household, we are reliably
informed by a native merchant of Yokohama, is dependent upon this
substitute for mother’s milk. If the proper authorities of Japan
could be convinced that the lives of their people were menaced by a
toleration of spurious imitations of our goods, they might see tit
to take up the matter upon a different standpoint than one of mere
commercial justice.
We hand you herewith a translation of proclamation referred to in the
early part of this letter as issued in Canton. We might add,
however, with reference to this latter city, that since the new
magistrates have been in power we have not been successful in
obtaining a further publication of this proclamation. Considering
the foregoing, we think that the matter of our protection with the
people of Japan rests upon a somewhat different footing than it
would if the subject involved an article that did not vitally
concern the health and happiness of the people themselves. We take
pleasure in inclosing you a duplicate copy of this letter and also
of the proclamation, thinking that possibly you might prefer to take
this matter up direct with the consul-general at Kanagawa. If,
however, such is not the case, we shall be glad to do so ourselves
if you will kindly advise us of your preference.
In closing this letter allow us again to thank you, and the
consul-general also, for so kindly advising us on this matter.
Very truly, yours,
New York Condensed Milk Company.
In all cases presented for an examination we have found that the
goods labeled with the counterfeits are always the unsalable
product of unknown European manufacturers and the contents of
cans of doubtful constituents, rancid, and dangerous to use.
[Page 468]
[Subinclosure No. 4.]
Consulate of the United States at Canton,
China, March 15, 1898.
The New York Condensed Milk
Company,
71 Murray street. New York,
N. Y., U. S. A.
Gentlemen: This district is cursed with
thousands of cans of condensed milk made in Germany and Japan,
purporting to be genuine “Gail Borden, Eagle Brand.”
I have obtained by personal purchase from dealers several cans of
this spurious milk and shall send samples of it on to you by the
next steamer, Rio, leaving Hong-kong March
23, instant.
I have also counterfeit labels, a specimen of one of which I inclose
herewith.
I have, etc.,
Edward Bedloe,
United States Consul.
[Subinclosure No. 5.]
Tokyo, Japan, November 2, 1898.
Messrs. J. Curnow &
Co.,
Yokohama, Japan.
Gentlemen: The trade-mark on the design of
an eagle spreading its wings, catching a twig under its feet, and
keeping in its bill the three ribbons on which the words “Eagle
Brand” and “Gail Borden” are written, was sent on application for
registration of Japanese Government through my hand on the 29th
April of this year, the number of application being 12092, and this
application was first rejected for grant on June 25 by the examiner
at the patent bureau with the following explanation: Such trade-mark
as the specification and sample of the ticket of this application
affirm and has been long since commonly used as a trade-mark not
registered for condensed milk by the merchants in this country.
Although in the letters of the words on ribbons or in some other
minute point a few differences may be detected, the essential point
and the common name of the chop must be necessarily the same; that
is to say, “the eagle ticket” would be right and common calling of
either. Such being the fact according to the No. 3, article second
of Imperial Japanese trademark regulations, this application is to
be refused to register. Now, the No. 3, article second of the
trade-mark regulations, is this article.
II. The following can not be registered as trade-mark:
- 1.
- * * *.
- 2.
- * * *.
- 3.
- Such as are identical with or similar to trade-mark
already registered as such have been used by others before
the application was made, and which are intended to be
applied to similar goods. After this I tried three times to
deny the evidence that the eagle is in common use in Japan
as the trade-mark of condensed milk, but these efforts
proved in vain because the examiner at the patent office
afforded as many evidences which cost prima fair, and the
case settled unsuccessfully on the 23d of September.
(Translated and copied from office note.)
I remain, yours, faithfully,
[Subinclosure No. 6.]
New York Condensed Milk
Company,
New York.
Dear Sirs: In answer to yours of October 4,
we now have to regret to inform you that your trade-mark can not be
registered in Japan, although we think an appeal should be made
against such a foolish decision. In a long interview the writer (our
Mr. Maurice Russell) had with Mr. Nukiyama, he said nothing could be
done, it being proved that for many years a brand of milk known as
the Eagle was manufactured and sold in Japan, and that applications
had been made to register the (false) label, but all applications
like the one shown for years had been refused. You will see that we
have lost no time in either applying or definitely forwarding you
the reply, and can only again offer our services on your behalf.
Yours,
J. Curnow & Co.,
Yokohama.
