The Acting Secretary of State to Minister Rockhill.

No. 105.]

Sir: Referring to your dispatches Nos. 148 and 160, of November 10 and December 1 last, respectively, on the subject of negotiations for trade-mark regulations in China, I have to inform you that the department has received from the French, British, and German ambassadors notes looking to securing the withdrawal of the objection which, under the department’s instruction, you have made to section 25 of the project intended to serve as a basis for negotiations on the subject of the registration of trade-marks in China.

As indicative of the reply sent to each of these ambassadors, I inclose herewith a copya sent to the French ambassador.

I am, sir, etc.,

Robert Bacon.
[Page 251]

memorandum.—trade-marks in china.

The representatives of Great Britain, France, Austria, Italy, and Germany some time ago made representations in Peking with regard to the regulations on trade-marks. The Chinese Government agreed to the proposed changes. Mr. Rockhill explained that the State Department likewise agreed except with those enumerated in article 25 of the project.

The representatives of the first-mentioned powers fear grave dangers for their trade interests if article 25 should be omitted. The reason they give is that such countries, situated near China, would gain unjust advantages over those which geographically are placed at a greater distance, because the merchants of the former would be able to use the trade-marks at a much earlier date.

memorandum to german ambassador.

The Department of State and that of the Interior have given consideration to the memorandum of the German embassy, dated January 18, 1906, looking to the withdrawal of the objection raised, under instructions, by the American minister at Peking to section 25 of the project for regulations governing the registration of trade-marks in China, formulated by the representatives of Germany, Austria, France, Great Britain, and Italy.

Section 25 in question reads:

“All demands of registration made by means of the competent Chinse authorities before the going into force of the present regulation shall be considered as having been made the day of the regulation going into force.”

The probable effect of this section would be to destroy the priority of date which may have been made under the trade-mark regulations heretofore published, and to reduce the effect of such registrations to the day of going into force of section 25 in question.

It is necessary in this connection to give consideration to section 7 of the project, which reads as follows:

“If within a delay of four months, counting from the day of registration of a trade-mark in a foreign country, there is presented a demand of registration in China of this mark, the original date of registration in the foreign land must be recognized if the demand is accompanied with the production of a writing certifying the registration made in the foreign land.”

It appears from reports of the American consuls-general at Shanghai and Tientsin that last year four American firms at Shanghai and sixteen American firms at Tientsin filed applications for registration of trade-marks in the bureaus heretofore established at those places.

Now, if section 7 and section 25 both remain in this project, these twenty American firms who have effected registration of their trade-marks under the provisional regulations heretofore promulgated would be stripped by section 25 absolutely from any priority arising from the fact of such registration, and the day after the new regulations of the present project become effective, if each of these American firms shall file application for registration of these marks, it may meet upon that day a demand of registration filed by a subject or citizen of one of the European powers named, whose demand, filed that day, will be entitled to a priority of four months by reason of a demand of registration filed within that period in some European trade-mark registry bureau.

In such case the actual legal right already secured and vested in this American firm by reason of its prior actual registration under the provisional regulations in China is destroyed, while an effective and controlling priority will be given by virtue of section 7 to this European competitor, whose registration in Europe has been effected many months later, for it is to be observed that this project is to take effect one year after its publication in the Gazette of Peking.

The priority provisions of section 7 correspond to the priority provisions of the International Convention for the Protection of Industrial Property, and are intended to furnish a limited working period within which any unjust advantage derived from geographical proximity may be overcome. This Government is [Page 252]not disposed to question the general utility of delayed priority, but its value and existence bear no possible relation to the concomitant demand embodied in section 25, that existing property rights of American citizens should be struck down.

This Government can see no ground for apprehension on the part of other powers that there will be grave dangers for their trade interests if section 25 is omitted. On the other hand, grave dangers may be feared to the financial interests of the twenty American firms heretofore referred to if their existing rights swept away by section 25 of the project. This Government proposes as an amendment to section 25 the following:

“All demands of registration made by means of the competent Chinese authorities before the going into force of the present regulation shall be considered as assimilated to the right of priority provided by section 7, and shall be effective from their dates.”

  1. Not printed. See memoranda from and to German embassy immediately following.