Minister Rockhill to the Secretary of State.

No. 95.]

Sir: I have the, honor to inclose herewith a personal note from Baron von Mumm, the German minister, dated August 11 last, in reference to an exchange of notes for extending to China the provisions of our respective trade-marks convention. I was authorized to effect such exchange by your instruction of April 17, 1905, and by your cablegram of July 24.

I also inclose a copy of a note which I wrote my German colleague in reply to his of the 11th August.

Yesterday Baron von Mumm called on me and requested me to ask you whether you would authorize me to include “Schutzgenos-sen” or protégés in the notes to be exchanged between us. He assured me that Germany had no Chinese protégés except in the leased territory of Kiao-chou, and that his Government had no intention of extending protection to any natives except to those in the actual employ of the German Government in China. All the other “Schutzgenossen” were either Germans or citizens of friendly nations, chiefly Swiss, not represented by diplomatic or consular officers in China and whose protection was intrusted to Germany.

Baron von Mumm assured me that most of the other powers with whom Germany had exchanged notes for reciprocal protection of trade-marks in China had agreed to the German request of the inclusion of “Schutzgenossen,” which he held was necessary, so that the terms of the German trade-mark law might be complied with.

Although I fail to see that any of Baron von-Mumm’s arguments meet the objections I made to this point in my note, I told him that I would at once submit the matter to you and ask that you wire me whether I can comply with his request.

I would also be pleased if you would instruct me on the second point raised by the German minister concerning the use of the term “punishment,” which I assume covers both civil and criminal suits.

I have the honor, etc.,

W. W. Rockhill.
[Inclosure 1.]

Baron von Mumm to Mr. Rockhill.

My Dear Colleague: With reference to your conversations with Baron von der Goltz concerning the reciprocal protection of our trade-marks, I submit to your examination and eventual approval herewith the draft of a note which I am ready to address to you. I would be obliged if in exchange you would kindly let me have, through Baron Goltz, the draft of your proposed answer. The formal exchange can then take place under the same date.

From the English version, which Baron Goltz sent me, my draft differs in some minor points: I have added the word “Schutzgenosse” in accordance with our agreements with other countries on the same subject, as we might as well give each other all protection we possibly can “Schutzgenossen,” according to the terms of our laws, are either former German subjects, who have lost their nationality without acquiring another one, or they are citizens of friendly [Page 229] nations (chiefly Swiss) not represented by diplomatic or consular officials, who, in consequence of existing treaties, have asked for our consular protection and have been duly registered at a German consulate; they are employees of the legation or the consulates. My wording of the note affords your citizens protection against infringements also from protégés, and I would in consequence consider it fair if your note would grant to our “Schutzgenossen” your consular protection against falsifications by adding the words “and protégés” after German subjects.

Furthermore, I did not speak of “extension to China of the provisions of the trade-marks conventions existing between our two countries.” Probably this term would have been quite correct, but as I don’t know exactly at present the contents of those provisions I do not know if their “extension” to China would be feasible. As my instructions don’t mention this extension, but simply authorize me to provide with you for mutual protection of our trade-marks in China, I believe to be on the safer side, if I follow, as I have done, the wording of your exchange of notes with Sir Ernest. I may mention here that I have used in German two terms: “Handels und Fabrikmarken,” but suppose that the English term “trade-marks” covers them both sufficiently.

Lastly, I beg to draw your attention to the words “punishment of such infringements” in the English draft. You will be a better judge than myself in telling me, if these words do not perhaps only comprise the prosecution in criminal proceedings whilst our aim would of course be to afford protection against infringement of trade-marks as well on the “zivil- wie auf dem strafgerichtlichen Wege”—i. e., the person whose trade-mark was infringed, could, for instance, sue as well in a civil law case for damages or ask for punishment by criminal court. My term “auf zivil- wie strafgerichtlichen Wege einzuschreiten” covers both; it is for you to judge how you might best express this in your note.

Hoping to hear from you soon, I remain, my dear colleague,

Yours, sincerely,

(Signed)
A. Mumm.

[Subinclosure—Translation.]

I have the honor to inform your excellency that I have been empowered by the imperial chancellor, in the interests of German and American trade, to insure by an agreement with you the reciprocal protection of German and American trade-marks in China against counterfeiting on the part of German citizens and protégés and in like manner on the part of citizens of the United States and dependencies.

Since your excellency also has received a corresponding authorization from your honorable Government, I hereby declare that, by virtue of the imperial law of May 12, 1894, for the protection of trade-marks, German consular judges are empowered to proceed by civil and criminal action against German citizens and protegés under their jurisdiction on the ground of the counterfeiting of the trade-marks of citizens of the United States of America, likewise of American protegés, which have been properly registered in Germany.

As I am looking forward to the receipt of a corresponding declaration on your part, I am empowered and ready to inform the imperial consular authorities in China at once in the above sense, as soon as your excellency shall have given me the announcement that the American consuls in China will be furnished with like instructions.

I also avail myself of this occasion to renew to your excellency the assurance of my highest consideration.

[Inclosure 2.]

Mr. Rockhill to Baron von Mumm.

My Dear Colleague: I have been unavoidably prevented by my pressing work here from replying earlier to your note of the 11th instant, in regard to our proposed exchange of notes for the reciprocal protection of German and American trade-marks in China. I beg that you will accept my apologies.

[Page 230]

I fear that without instruction from the department I can not include “Schutzgenossen” (or protegés) in my note, for I do not apprehend that persons of other nationality than German can have the same rights as Germans to protection against infringement of their trade-marks in China by Americans, unless the government of the country of which they are citizens or subjects have a trade-mark convention with the United States. This remark applies to “protegés” of Swiss origin to whom you refer, but more particularly to employees of the German legation and consulates in China, most of whom are presumably Chinese. The United States has no “protégés” in China, so I could not expect you to include this class in your note to me. If the term were applied only to former German subjects whose actual status is in abeyance, as it were, through prolonged sojourn abroad, but who have not absolutely lost their German nationality, I might see my way to include this term with a definition of it.

As regards your remark on the use of the term “punishment” that it may be understood as implying only prosecution in criminal proceedings and as precluding civil, I am disposed to think that “punishment” covers, both. I am not prepared, however, to state what are the provisions of our law as to the protection afforded by it to the German owners of trade-marks duly registered in the United States, but whatever they are, and presumably they are satisfactory to your Government, since it has a convention with the United States for the reciprocal protection of our respective countries of trade-marks of our nationals, I can assure you that we are willing to extend them to your people in China where “effectual provision” exists in our Consular Courts against all infringement by all American, citizens.

Should you deem it necessary that I should include “Schutzgenossen” in my note, it will afford me much pleasure to submit the suggestion to the Department of State for its instructions.

Very sincerely, yours,

(Signed)
W. W. Rockhill.