The Secretary of State to
Minister Rockhill.
Department of State,
Washington, June 30,
1906.
No. 159.]Sir: With instruction No. 105 of February 20
last the department sent you a copy of its reply to the notes of the
French, British, and German ambassadors regarding trade-mark regulations
in China. On the 12th ultimo the German ambassador made a reply to that
memorandum, a translation of which reply is inclosed herewith, urging
this Government to withdraw its opposition to section 25 of the draft
previously submitted, and advancing arguments in support of his
position.
This reply was submitted to the Secretary of the Interior, for reference
to the Commissioner of Patents, for consideration. Copies of the reply
of the Secretary of the Interior and of a letter from the Commissioner
of Patents are inclosed herewith. You will observe that the conclusion
reached by the Commissioner of Patents is that if the American merchants
have acquired no rights under the imperfect system of registration
heretofore effected at Tientsin and Shanghai the German ambassador’s
proposal to supplement section 7 and retain section 25 may be concurred
in; but if they have acquired rights thereby the position heretofore
assumed by this department should be maintained.
Whether or not definite valuable rights were thus acquired is a question
of law and of fact. That American merchants supposed themselves to be
obtaining rights is sufficiently indicated by their making application
for registry. It may, however, be that the Chinese Government’s
declaration, cited by the German ambassador, “That applications received
by the branch registry offices should not be granted a right of priority
and that no registry should be made,” deprives such prior registration
of all value.
Aside from this consideration, it may also be that for this Government to
insist on the recognition of prior registry by American merchants would
be a disadvantage to these merchants themselves, as it would necessarily
involve the recognition of prior registry by merchants of all
nationalities, and it would, perhaps, be better to waive all rights
under prior registration and to start anew upon a basis of equal
opportunities. It may be that adjacent trade rivals of the American
merchant may be found to have anticipated his registry of his own
marks.
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You are instructed to consult with the American commercial community and
to inform the department, by cable if practicable, whether or not rights
are held to have been acquired by the registration heretofore effected,
and whether or not the German ambassador’s proposal would, if accepted,
adversely affect them.
I am, sir, etc.,
[Inclosure
1—Translation.]
The German Ambassador
to the Secretary of State.
Imperial German Embassy,
Washington, May 12,
1906.
Mr. Secretary of State: The memorandum of
the State Department of February 17 last concerning the regulation
of the protection of trade-marks in China has been laid before the
Imperial Government, and I have the honor by instruction to submit
to your excellency some remarks of the Imperial Government on the
said memorandum.
According to the German view, it is urgently desirable that the
principle be adhered to of conceding to applications for registry of
trade-marks filed in branch registry offices at Tientsin and
Shanghai only those rights which are established in article 25 of
the draft of a Chinese trade-mark law. This appears just, moreover,
for the reason that the “Provisional Regulations,” in accordance
with which applications for registry of trade-marks have heretofore
been made, have not yet gone into force, although they were
published at the proper time. As is seen from the inclosed
translation of a letter from the Imperial Chinese Government, dated
December 22, 1904, the latter expressly declared that applications
received by the branch registry offices should not be granted a
right of priority and that no registry should be made. The granting
of a right of priority would involve a serious injury to the
interests of those persons who, relying on the declaration of the
Chinese Government, have hitherto refrained from filing their
trade-marks.
The Government of the United States entertains the apprehension that
trademarks filed meantime by American citizens would, after the
going into force of the new Chinese law, have to yield the
precedence to those which, in accordance with article 7 of the
draft, are to enjoy a right of priority of four months, counting
from their registry in a foreign country. This apprehension would
appear, however, to be unfounded. As is so correctly stated in the
memorandum of February 17 last, the provisions of article 7
correspond to those of section 4 of the International Convention for
the Protection of Industrial Property. However, inasmuch as the
legal aspect (relation) is the same, the construction which has been
placed upon said section in practice by the United States would
likely, in view of article 7, lead to the result that the right of
priority here established could only be asserted with regard to such
foreign marks as have been registered in a foreign country after the
going into force of the Chinese law. Such a construction would
probably also be in conformity with the principles of American law
(cf. the decision of the Patent Office in re Stiff v. Galbraith, Official Gazette, vol. 107, p. 2532).
Should the United States Government deem it important to have the
provisions of article 7 supplemented by a clause to the effect that
“the right of priority shall extend only to such trade-marks as have
been registered in a foreign country after the going into effect of
the law,” the German Government would offer no objection.
I have the honor to request your excellency to kindly consider our
standpoint and reply thereon.
Please accept, Mr. Secretary of State, the renewed assurance of my
most distinguished consideration.
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[Inclosure 2.]
The Secretary of the
Interior to the Secretary of
State.
Department of the Interior,
Washington, June 19,
1906.
Sir: Your letter of May 22, 1906, has been
received, transmitting copy of translation of a note from the German
ambassador, with its inclosure, consisting of translation of a note
from Prince Ch’ing to the German minister to China, relative to the
project for affording protection to trade-marks of foreigners in
China, formulated by the representatives of certain powers in that
country. The particular point which is discussed in said note from
the German ambassador is the suggestion made in the note of the
State Department to said ambassador dated February 17, 1906, that
section 25 of the project in question, which now reads as follows:
“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 having been made
the day of the regulation going into force”
should be amended so as to read as follows:
“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.”
The priority provision of section 7 of the project, referred to in
the proposed amendment, is 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.”
The proposed amendment to section 25 of the projected Chinese
trade-mark regulations suggested in your memorandum of February 17,
1906, was drafted by the Commissioner of Patents, in order that such
regulations might not work injury to the interests of 20 American
firms which have heretofore registered trade-marks at Shanghai and
Tientsin. As section 7 gives a four-months preference to trade-marks
registered in foreign countries, and section 25 as originally drawn
provides that all trade-marks registered in China prior to the going
into effect of the proposed regulations, shall be regarded as having
been made on the date when the same go into effect, these provisions
would place the American firms at a disadvantage in case their marks
should conflict with trade-marks registered in Europe and
subsequently (within four months) presented for registration in
China.
It is noted that the German ambassador, while unwilling to accept the
amendment suggested in the State Department memorandum, would offer
no objection to supplementing article 7 by a clause to the effect
that “the right of priority shall extend only to such trade-marks as
have been registered in a foreign country after the going into
effect of the law.”
In response thereto I have the honor to transmit herewith copy of a
letter from the Commissioner of Patents,a to whom the matter was referred, expressing
his views upon the proposed amendments to the regulations. It will
be seen therefrom that the discussion resolves itself, in his
opinion, to the question whether the registrations filed at Shanghai
and Tientsin by the American firms (which he presumes were made
under article 9 of the treaty between the United States and China of
October 8, 1903) were of any legal force whatever. He assumes that
this question, however, is not referred to him for determination. If
these firms did acquire any rights by such registrations the rights
would be surrendered if section 7 and section 25, in its original
form, both remain in the project.
The conclusion reached by the Commissioner of Patents is that if the
American firms described did in fact acquire legal rights by virtue
of their registrations already made, the position heretofore taken
by the State Department that section 25 of the project be amended so
as to assimilate these rights of
[Page 255]
priority to those provided by section 7 should
be adhered to; but if they acquired no rights by such registrations,
the proposed modification of section 7 and the retention of section
25, as suggested by the German Government, may be concurred in.
The conclusion reached by the Commissioner of Patents is concurred in
by me.
Very respectfully,
E. A. Hitchcock, Secretary.
