Papers Relating to the Foreign Relations of the United States, With the Annual Message of the President Transmitted to Congress December 3, 1906, (In two parts), Part I

Minister Conger to the Secretary of State.

American Legation,
Peking, December 8, 1904.

No. 1762.]

Sir: I acknowledge receipt of department instructions No. 843, of October 12, 1904, inclosing copies of correspondence between the Department of State and the German embassy at Washington, concerning the postponement of the new Chinese trade-mark regulations.

Notwithstanding the efforts of several of the ministers to have the regulations postponed, their postponement has not yet been accomplished. In order to come to some agreement with these ministers the wai wu pu recently proposed certain alterations in the regulations, but, not being satisfactory to either the German or British minister, have not yet been put in force.

I have, etc.,

E. H. Conger.

[Inclosure.]

proposed changes in experimental trade-mark regulations.

* * * * * * *

I. It is proposed to alter regulation 26 of the original plan and change the first time limit from six months to twelve months, during which time trademarks already registered in another country shall be entitled to precedence.

The reason for this is, that it is clearly intended in regulation 26, to fix the time limit for the special benefit of trade-marks registered abroad. But how is it for their benefit? In that all trade-marks already registered abroad before these regulations go into effect will be given precedence if application be made within six months after these regulations go into effect, and no matter whether such applications be made early or late all will be given precedence alike, and will be dealt with as having been made at the same time; and since, according to regulation 6, if several applications be made at the same time permission to register must be given to all; therefore, if there be any conflicting trade-marks, no matter which application was made first, and no matter whether they are or are not indentical, or similar, permission to register must be given to all of them. Moreover, applications made according to this article are not like applications for ordinary trade-marks and need not observe regulation 5, filing their application for six months before registration is allowed. The convenience and special benefit of this is very great as compared to that in the case of ordinary trade-marks. So this period for six months can not but be regarded as a very important matter as regards trade-marks already registered abroad; for if a nation be very far away, or if its commercial citizens can not acquaint themselves with these regulations, then the benefits of the regulations are entirely lost; and it is hard to guarantee that there will not be some foreigners who will desire to have this time limit at the beginning extended. And if such is the case, then, since China has made these regulations for the benefit of foreign trade-marks, if she should not succeed in giving them the complete protection she intended to give, there will be much cause for regret. As herein stated, therefore, the six months will be extended to twelve, and then, even if a country be very distant, it can still receive the advantages and special benefits of the regulations. Moreover, in that time the commercial people of all countries can become thoroughly acquainted with the intent of these regulations; and the result will be practically the same as if the date of putting the regulations into effect had been postponed six months.

II. Applications made according to regulations 25 and 26 will not be required to pay the application fee of 5 taels.

III. Applications made according to regulation 26 need not be examined to determine whether or not they are in accordance with the requirements of Article VIII, section 4, but shall be granted registration without such examination.

The reason for this is as folows: Among those who discussed the matter of postponing the date when these regulations should go into operation, there were some who wished that applications made according to regulation 26 should not be examined in this respect to determine whether or not they should be registered. They say that in article 6 of the agreement drawn up by the International Convention for the Protection of Industrial Property, it is stipulated that “any trade-mark regarded as lawful in its own country, provided there be nothing in it to the prejudice of the public order, upon application for registration in any country a party to this convention, shall at once be granted registration.” In the special article for mutual protection entered into by Germany and Italy in 1892, it is stipulated in article 6, that if trade-marks are already registered in any of the outside possessions of the countries which are parties to the agree-men, then, even though the form of the trade-mark or anything connected therewith be not according to the law of the said countries, still, said countries can not for that reason refuse registration within their own borders also. The above change, then, regarding applications made according to regulation 26, is made in order that the wishes of those interested might be fulfilled.

Once more let us explain fully the foregoing items. As to the provisions of Article VIII, section 4, of the original regulations, regarding the necessity of recognition by some distinctive feature, the customs of different countries are not the same. What one country recognizes as a distinctive feature another country will not, and will claim that registration should not be permitted. The various regulations on the point are numerous. For instance, according to the German rules it is not permissible to register a trade-mark which has only numerals or letters thereon without a special distinctive feature. France, on the other hand, permits registration if numerals or letters are used, provided the class of the goods is made clear.

Among those who speak of postponing the date upon which the regulations shall go into effect there are some who say that one who requests registration under these regulations ought not to have his application examined as stated in Article VIII, section 4, before registration is allowed, because there may be differences between the trade-mark regulations of China and of his own country, and it is feared that a trade-mark already recognized as lawful at home, and registered there, may be denied registration in China. Such being the case, and the 26th regulation being altered, as shown above, it will be unnecessary to insist on the provisions of Article VIII, section 4, but all trade-marks recognized in their own country as having a distinctive feature, and registered there, shall be recognized in China also as having a distinctive feature, and it will not be necessary to reject any under the provision of Article VIII, section 4.