The Secretary of State to Minister Rockhill.

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.

[Page 253]

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.,

Elihu Root.
[Inclosure 1—Translation.]

The German Ambassador to the Secretary of State.

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.

Sternburg.
[Page 254]
[Inclosure 2.]

The Secretary of the Interior to the Secretary of State.

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.
  1. Not printed.