Mr. Buck to Mr. Hay.
Tokyo, Japan, December 9, 1898.
Sir: Referring to the Department’s instruction No. 146, dated August 25, 1898, upon the subject of the refusal of the Japanese Government to register the “Eagle Brand” mark of the New York Condensed Milk Company, I have the honor to inform you that, acting upon my instruction, Mr. Herod, the secretary of legation, at an interview with the private secretary of the minister of foreign affairs, brought to that gentleman’s attention the subject of complaint of the condensed milk company, and as requested and at a later date, November 7, forwarded to the foreign office a copy of the instruction under reply asking whether or not it was the intention of the Japanese Government to modify the trade-mark regulations so as to allow the registration of trade-marks which had been imitated prior to the application for registration.
As elicited by the correspondence between Mr. Herod and the minister of foreign affairs, as well as by interviews between the former and the director of the patent bureau (see inclosures 1, 2, 3, and 4), the fact is that the New York Condensed Milk Company has neither directly nor by any authorized attorney applied for the registration of the “Eagle Brand” mark. An examination of the archives of the patent bureau shows that on May 4, 1897, one Maurice Russell, a British subject, applied through his attorney for registration in his own name as owner of the trade-mark in question. Mr. Russell held no power of attorney from the New York company; does not set out that he is their agent; but, as a British subject resident in Japan, applied for the registration of a mark which had been notoriously used by others for many years. A preliminary notice that the application would be rejected unless further evidence of conclusive ownership was forthcoming was sent to Mr. Russell’s attorney on June 25, 1897. No such evidence was produced. In fact, contrary to the statements made by Mr. Russell’s attorney, S. Nukiyama, no further steps were taken to secure the registration; the case, according to the records of the patent bureau, was allowed to go by default, and on August 25, 1897, the application was finally rejected.
From the above record of the case it will be seen that the New York Condensed Milk Company is not now in a position to call into question the Japanese Government’s interpretation of paragraph 3 of Article II of the regulations governing trade-marks, inasmuch as no application for registration has been made by the company itself or by a duly qualified agent thereof.
However, as a second and proper application for the registration of the “Eagle Brand” mark may disclose the existence of imitations on the market in Japan, and so place that company in the position which they have anticipated, it will be well to lay before the Department the reasons which govern the Japanese patent bureau’s interpretation of Article II of the trade-mark regulations, which interpretation, as stated by Mr. Mitsuhashi, is to the effect that “they can not but refuse the registration of such marks as are identical with or similar to those already in use by others in Japan before the application for registration was made; if such case should happen, no matter whether the applicant may be a Japanese or a foreigner.” In other words, the trade-mark must be novel for the purpose for which it is to be used.
The Japanese laws regarding trade-marks, patents, and designs, the benefits of which Americans now enjoy in virtue of the convention of [Page 470] 1897, have not been altered since promulgation in 1888. Prior to the ratification of the late treaty between Germany and Japan and the negotiations of patent and trade-mark conventions between Japan and other powers, the laws concern themselves with the applications for the registration of trade-marks of Japanese subjects alone. In the contemplation of the law the rights of foreigners were in no way involved. A foreigner could not secure the registration of his trademarks, nor could he prevent their imitation. Foreign trade-marks had no existence except for one purpose, i. e., that of proving that the Japanese applicant for registration for the trade-mark was not the owner of a novel mark. It will be readily seen then that there was no means by which the imitations of foreign marks could be suppressed, and naturally where profit offered the Japanese did not hesitate to manufacture and put on sale imitations of many of the well-known articles of trade imported from foreign countries, with the result that some of the imitating manufacturers here have become established in a paying business. It can not be contended, I believe, that the patent and trade-mark convention was intended to be retroactive in effect; that the Japanese imitator who has acquired a paying business while not infringing the rights of others—for no rights in industrial property except those of the Japanese were recognized by the Government—could be deprived of his property upon the conclusion of an agreement between Japan and a foreign power, that from and after a certain date the contracting countries would mutually extend to the citizens or subjects of the other all rights enjoyed by their own subjects in regard to trade-marks.
The rights of Americans to secure protection for their trade-marks commenced on the date of the exchange of ratifications of the patent and trade-mark convention. From that date they enjoyed all rights belonging to Japanese subjects. If a mark is novel and its ownership bona fide it is entitled to registration. If it has been used by others in Japan prior to the date of the application, it is no longer novel and is not entitled to registration. If the patent bureau has been consistent in its rulings these have been all the rights enjoyed by Japanese subjects hitherto and prior to 1897. To sustain its position the patent bureau claims that it has invariably refused the registration of the application of a Japanese when it has learned that the mark is not novel and that the ownership is not bona fide. A case in point is that mentioned by Messrs. J. Curnow & Co., of Yokohama, in their letter to the New York Condensed Milk Company—inclosed with the Department’s instructions—from which I quote: “For many years a brand of milk known as ‘Eagle’ was manufactured and sold in Japan, and applications had been made to register falsely, but all applications like the one shown for years had been refused.”
If the New York Condensed Milk Company finds that its “Eagle Brand” is being counterfeited, and this fact is known to the patent bureau, I doubt if an application for registration would be successful. It would, I fear, meet the same fate as have many others made by foreigners for marks that have been imitated prior to the trade-mark conventions between Japan and other countries.
It may be, however, that another application properly made will result in a registration of the mark, and consequently I should not feel authorized to attempt to secure a suppression of the imitated article on account of sanitary reasons until I shall have learned definitely that there is no other means of protecting the American article.
I have, etc.,