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
Chargé Sleeper to the Secretary of State.
Habana, August 20, 1906.
Sir: I have the honor to acknowledge receipt of department instruction No. 29, of May 19, 1906, relative to the unjust confiscation of American trade-marks by Cuban citizens.
In reply I beg to inclose herewith a copy of Minister Morgan’s note on the subject to the Secretary of State, dated June 15, 1906, together with translation of Secretary O’Farrill’s reply of the 15th instant, accompanied by a translation of a note from the secretary of agriculture, industry, and commerce, setting forth the reasons which make compliance with the request of the Merchants’ Association impossible under the regulations which now govern trademark registration in Cuba.
I have, etc.,
Minister Morgan to the Secretary of State and Justice of the Republic of Cuba.
Your Excellency: Acting under particular instructions from my Government and in continuation of our conversation of recent date upon the subject on which I have now the honor to address you, in behalf of the Merchants’ Association of New York, I beg to call your excellency’s attention to the prevalent and unjust confiscation by Cuban citizens of valuable trade-marks which American citizens have established by years of use and advertising, and to request that either through new regulations or a more exact interpretation [Page 500] and enforcement of those which at present exist, the department of agriculture, industry, and commerce may find it possible to afford relief to the large number of American firms whose complaint the Merchants’ Association voices, which have suffered from the appropriation of their trade-marks by citizens of the Republic.
While Cuban owners are amply protected in the United States by both statute and common law in their enjoyment of this form of property, American owners enjoy under the administration of the existing Cuban law no corresponding or adequate protection for theirs, and are placed at the mercy of Cuban registrants irrespective of prior use by legitimate owners. Were the conditions reversed in the respective countries, the character and magnitude of the injustice suffered would be quickly and keenly appreciated by Cuban exporters to the United States. Especially would this be true if applied to rare and costly brands of Cuban tobacco and cigars.
The need of mutual fair dealing in the matter of trade-mark registration is evident and relief should be afforded which should include the restoration in Cuba of their rights to those Americans who have been deprived of them already.
I commend to your excellency’s attention the inclosed memorandum based upon a series of facts supplied to the Merchants’ Association by a large number of American exporters who have suffered under the existing unsatisfactory condition, entertaining every expectation that it will meet with your sympathy and approval and will coincide with the beliefs which you already hold in regard to the necessity of amending and revising the regulations which govern trade-mark registration in the Republic.
I avail, etc.,
The Secretary of State and Justice of the Republic of Cuba to Chargé Sleeper.
State Department,
Habana, August 9, 1906.
Mr. Chargé d’affaires: Referring to the legation’s polite note No. 43 of June 15 last, by which, at the instance of the Merchants’ Association of New York, attention is called to the laws of this Republic governing the registration of trade-marks, and its hardships said to be occasioned thereby to a large number of American houses, attached I have the honor to transmit herewith a copy of the reply sent by the secretary of agriculture, industry, and commerce relative thereto.
I reiterate, etc.,
Secretary Casuso to the Secretary of State and Justice of the Republic of Cuba.
Department of Agriculture, Industry, and Commerce,
Habana, July 27, 1906.
Sir: Together with your polite communication dated June 22 last, there was received in this department copy of note No. 43 from the minister of the United States of America, in which, at the instance of the Merchants’ Association of New York, attention is called to the laws established in Cuba governing the registration of trade-marks and the hardships said to be occasioned thereby to a large number of American houses.
This is not the first time that our department has given attention to the matters referred to in the attached note of the minister of the United States of America.
Then, as now, this department understands that in the consideration and granting of applications for registry of trade-marks in the Republic, for native as well as foreign, the strictest compliance with the provisions of existing trademark legislation has been and is being exacted and followed.
The manufacturers and merchants of the United States asked that Cuba recognize the same customary practice and procedure which, they say, is observed [Page 501] in that country relative to trade-marks, under which adoption or use of same, independent of its registry, shall be respected. They also invoke, in reciprocity, the assurance of the same observed protection accorded to Cuban trade-marks in that country.
According to our trade-mark law, which is fundamentally taken from the royal decree of August 11, 1884, manufacturers, merchants, farmers, etc., fulfilling all legal requisites, applying for trade-marks to distinguish their products or goods, have a right to the registry of same, except in cases where a trade-mark has already been applied for by another, or there has already been registered an identical or similar trade-mark to protect the same products, goods, etc. (clauses 5 and 6 of article 5 of the said royal decree), article 8 of said royal decree providing as follows: That “when two or more apply for the same trade-mark, the right of possession will be allowed to the one who first presented his application, according to the day and hour in which filed.” Therefore, if by chance, at such time, there appears no registry in this department of any trade-mark, equal or similar to the one sought to be registered for the same product, either native or foreign, this department could not, without breaking the law, deny the registration of one found to be in due form, simply because there may be in circulation in the country another one equal or similar of a foreign origin, which is not registered in Cuba, with the exception of those known by a single commercial name, and these need no previous registration for their protection.
For governing registration of United States trade-marks and patents, there were issued by the Division of Customs and Insular Affairs of the War Department at Washington, circulars Nos. 12 and 21, of April 11 and June 1, 1899, respectively, and order No. 160 of the government of intervention, series of 1901, according to which it was made an indispensable condition, in order to obtain right of protection for same in this Republic, that there must be previously filed with this Government a certified copy of the patent or of the registration of the trade-mark issued by the United States Patent Office.
From this it is evident, first, that the procedure followed up to the present, time relating to American trade-marks, is founded on provisions, clear and conclusive, that date not from the establishment of this Republic, as erroneously stated in the attached memorandum, but from the time of the government of intervention in Cuba; and, second, that if such cases as those referred to in said memorandum have arisen, wherein Cuban industries or manufacturers have asked and obtained the registration from this department of native trademarks, identical with some of theirs, the fault lies solely and exclusively with the owners of same, who, manifesting indifference to the provisions of the laws cited, have, in order to avail themselves of the advantage of their protection in Cuba, neglected the indispensable compliance therewith, notwithstanding the official publications published for that purpose and the facilities accorded them during the epoch of the government of intervention, which did not even require the translation into Spanish of documents filed, and reducing the charge for registry of the said trade-marks to $1 currency, as compared with $12.50 which is charged for all others, native as well as foreign.
On the other hand, this department, inspired by a sentiment of justice, perhaps not in fairness to our legislation, but to prevent possible usurpation of foreign trade-marks by native manufacturers or merchants, has accorded to those asking it the necessary time to present legal documentary proofs of the registration of the trade-marks in the country of origin, in order that they may register them here in due form of law.
What the merchants of the United States on the whole desire is, as said before, that the Government of our Republic consider the fact that any American trade-mark being in circulation or use in this or that country, although it is not registered here, as sufficient for recognition of the right, of possession as lying in the holder, and denying in consequence the right to register same to any other industry or manufactory that makes application subject to the provisions of existing legislation in the premises, in reciprocity to that which, according to said merchants is the custom in force in their country.
This might be, perhaps, very convenient, notwithstanding that in the convention of March 20, 1883, and in the order concerning the registration of international trade-marks of manufacture and commerce, dated April 14, 1891, and subsequent trade-mark laws, it was made an indispensable requisite for a trade-mark, in order to receive protection from the country in which same was sought, to be previously filed therein. But it is not for this department to discuss the point, as in fairness to all concerned it will be necessary to continue the application with strict compliance thereto of the laws governing [Page 502] in each case. Therefore foreign trade-marks, including American, can only be considered as valid and in force, in this department, when they are found to have been duly filed therein, laying aside, consequently, all those that are not, whatever may be the conditions in the country of origin, as has been done heretofore, without injury to those who believing their interests damaged by the concession of any Cuban trade-mark, through fraud or infringement (usurpation) of title, by the party receiving the concession, may carry their demands before the tribunals of justice for a settlement by civil process.
In view of what has been stated, the writer has the honor to propose to you that you answer in the terms above expressed to the information asked for in the note and memorandum that accompany your communication of June 22, believing it opportune at the same time if you deem it proper that in order to avoid as much as possible the recurrence of the facts that caused the complaint treated of during the existence of the present trade-mark legislation, that public notice be given in the form deemed most convenient, whether by means of the Official Gazette or through our minister plenipotentiary in Washington, or both together, that holders of American trade-marks registered in the United States Patent Office must register them in this Republic in conformity with the prescribed existing laws, if same has not already been done, as the only means whereby they will be duly protected herein against any fraud which the department could not otherwise prevent through lack of proper jurisdiction thereover, from an administrative view in accordance with the prescribed rules.
All of which I have the honor to submit in reply to your aforesaid letter of June 22 last.
Very respectfully,