The Secretary of State to Minister Rockhill.

No. 70.]

Sir: I have to acknowledge the receipt of your dispatch No. 95, of September 15 last, inclosing a copy of correspondence between you and the German minister to China in reference to the proposed exchange of notes between you and him for the purpose of extending to China the provisions of the trade-marks convention of the United States and Germany.

Our trade-mark law (sec. 16, act of Feb. 20, 1905) makes provision for the bringing of an action for damages by the owner of a trade-mark registered under the act against any person who, without the consent of the owner, reproduces, counterfeits, copies, or imitates such trade-mark, etc. Section 19 provides for the obtaining of injunctions to prevent the violation of any right of the owner of a registered trade-mark and declares that upon a decree being rendered for the wrongful use of a trade-mark the owner shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages sustained. Section 25 declares that any person who shall procure the registration of a trade-mark or entry thereof in the office of the Commissioner of Patents by a false or fraudulent declaration or representation, or by any false means, shall be liable to pay any damages sustained in consequence thereof to the injured party, to be recovered by an action on the case.

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There is, however, no statute of the United States making the infringement, counterfeiting, etc., of a trade-mark criminal. It seems to me, therefore, that the word “punishment” should not be used in the draft of notes to be exchanged. The language employed in the exchange of notes concerning the protection of trade-marks in Morocco, viz, that “henceforth trade-marks of British citizens, having been duly registered in the United States of America, will be protected against infringement,” etc., or similar language, should be used.

For your convenient use I inclose herewith three copies of the pamphlet entitled “United States and Great Britain—Protection of Trade-marks in Morocco—Agreement Effected by Exchange of Notes, December 5, 1899.”

As the United States has no “protégés” in China, and as, under our treaties with China and the laws passed to carry them into effect, there would appear to be no authority for subjecting “protégés” to the consular jurisdiction, you should inform the German minister that this Government is unable to include “Schutzgenossen,” or “protégés,” within the scope of the proposed arrangement.

In answer to your request for instructions by cable, the following telegram was sent you on the 6th instant, which I now confirm.

“Acknowledging your ninety-five, infringement of trade-marks is not made criminal by our law, but ample provision is made therein for protection against infringement, by injunction and civil suits for damages. Period. Can not include ‘protégés’ within scope of arrangement, as that relation is unknown to our laws and treaties with China.”

I am, sir, etc.,

Elihu Root.