Mr. Griscom to Mr. Hay.
Tokyo , October 17, 1903 .
Sir: I have the honor to acknowledge the receipt of your instruction No. 14 of the 2d ultimo directing me to investigate and report upon the protest of the G. & J. Tire Company against the copyrighting of their trade-mark in Japan by Rikicki Sumi, a bicycle dealer of Osaka.
As mentioned in the company’s letter to the Japanese consulate in Chicago, Rikicki Sumi has in fact registered as a trade-mark for bicycle tires “G. & J.” in roman letters, and the registration was published as No. 19792 in the Official Gazette of July 30, 1903. The rights to use this well-known American trade-mark in Japan thus belong exclusively to Rikicki Sumi unless the cancellation of his registration can be brought about.
Subject to certain conditions, anyone may register any trade-mark to use for his goods unless such trade-mark has already been registered by another in the Japanese patent office.
Among trade-marks which may not be registered, according to Article II, of the trade-mark law, are:
- Article II, 4. Those which are exactly similar to or resemble one already in use for the same article by other persons, or one which has not for more than one year lost the effect of registration.
- Article II, 5. Those which are exactly similar to or resemble one in use by another person prior to the coming into force of these regulations.
- Article II, 6. Those which show the common name of an article or its place of production, or which show its grade, quality, or shape by customary commercial letters, diagrams, or marks, or which mention commonly used names of persons, companies, or partnerships, or business names by common type of letters.
With reference to Article II, clause 5, Mr. W. Silver Hall, the best-known patent agent in Japan, says, in his Manual of Japanese Patent, Trade-Marks, and Designs Law:
Apparently this would prevent A from registering a trade-mark similar to a foreign trade-mark previously known and used in Japan as distinguishing goods imported by B; but in several test cases, one of which was carried to the supreme court, in which the plaintiff B applied for the cancellation of a trade-mark registered by the defendant A on the ground that he, B, had used it for many years to distinguish goods of the same class which he had been in the habit of importing, and which were extensively known and used in Japan, it has been decided that no such protection against infringement of a trade-mark of this class can be granted, nor can it be recognized in any way unless it has been actually registered in the Japanese patent bureau, and in fact the continued use of such a mark by B renders him liable to prosecution for infringing A’s registered trade-mark.
As there are many such trade-marks which were known and used in Japan by foreigners before they were entitled to claim registration, these decisions are of considerable importance and emphasize the necessity of registering a foreign trade-mark before it becomes known and valuable in Japan.
Mr. Hall further sets forth that the decisions of the Japanese patent tribunal have been explicit that Article II, clause 5, could only refer to trade-marks registered here, although that class of marks was already fully covered by clause 4 of the same article. Such has been the interpretation of the law. Redress under that section would seem to have proved thus far unobtainable.
The trade-mark “G. & J.” is perhaps debarred from registration under Article II, clause 6, as among those which mention “business names by common type of letters.”
[Page 625]Any registration may be annulled if within three years it be proved to have been illegal, and the only course which suggests itself to me would be for the G. & J. Company to authorize an agent in Japan to apply to the patent bureau for the cancellation of Rikicki Sumi’s registration, taking the matter into the law courts if thought advisable. The Japanese patent bureau recognizes only the legally authorized agents of interested parties. This legation can not represent the G. & J. Tire Company, of Indianapolis, vis-a-vis that bureau, and it is presumed that the Department does not desire the legation to take up the matter until the G. & J. Company have exhausted the legal remedies which they have directly available.
I have, etc.,