File No. 406/213–215.

Chargé Jay to the Secretary of State.

No. 371.]

Sir: I have the honor to transmit herewith copies of notes exchanged between Mr. O’Brien and Count Hayashi on the subject of the registration and protection of trade-marks, with special reference to the recent negotiations.

The meaning of Count Hayashi’s note, stripped of technicalities, appears to be that any registered trade-mark, which is similar to the known trade-mark of another, may be canceled within three years, on the ground of such similarity; or it may be canceled at any time thereafter if the registered mark is calculated to work fraud upon the public, as all such imitations naturally are.

This reply of Count Hayashi, taken with other official and semiofficial statements of a like nature, seems to warrant the belief that the Japanese Government intends, by a broad construction of the existing law, to cancel or reject all wrongful registrations, no matter how long they may have been registered.

I have, etc.,

Peter A. Jay.
[Inclosure 1.]

Ambassador O’Brien to the Minister for Foreign Affairs.

Monsieur le Ministre: I have the honor to inform your excellency that I have read with much satisfaction your note No. 17 of March 27 last on the subject of the registration and protection of trade-marks.

That the policy pursued by the patent bureau in regard to the examination of trade-marks has uniformly been guided by justice, and impartiality has never, I need scarcely say, been questioned by my Government. There are, however, certain points regarding the operation of the existing trade-mark legislation upon which I should be glad to have further enlightenment, and, accordingly, I [Page 526] beg that your excellency will be good enough to furnish me, in complement to the particulars contained in the note under acknowledgment, with additional information respecting the validity of illegitimate trade-marks, in the event of such trade-marks being registered.

I avail, etc.,

T. J. O’Brien.
[Inclosure 2.]

The Minister for Foreign Affairs to Ambassador O’Brien.

Monsieur le Ministre: I have the honor to acknowledge receipt of your excellency’s note No. 134, dated 27th instant, desiring additional information respecting the validity of illegitimate trade-marks in the event of such trademark being registered in the imperial patent bureau.

Items 3–5 of Article II of the trade-mark law now in force in Japan enumerate the following classes of characters, devices, and signs which can not be registered as trade-marks:

Those which are or may be injurious to public order or morality or calculated to deceive the public.
Those identical with or similar to marks already registered by another, or marks so registered in respect of which one full year has not yet elapsed since their invalidation, which are to be applied to the same description of goods.
Those which are identical with or similar to marks which have been used by another person from a time prior to the operation of this law.

Article X of the same law explicitly provides that in the event of a trademark falling under any of these three classes being registered by mistake such registration shall be invalid. It should be added that the proviso of the same article stipulates that in the case of those trade-marks coming under the provisions of the above-mentioned items 4 and 5, the registration thereof shall not be invalidated if at least three years have passed since such registration; but as this stipulation is not made with respect to trade-marks mentioned in items 1–3 of Article II it is to be concluded that application may be made for the cancellation of their registration at any time whatever subsequent to such registration.

The legislative reason for making the discrimination above referred to between the two categories of illegitimate trade-marks appears to be as follows:

The main object of the provisions of items 4 and 5 is the protection of the individual interests of the owners or users of trade-marks, and therefore it need cause no wonder that if such interested persons should for a period of not less than three years fail to take measures for the defense of their own rights they should no longer be able to insist upon the invalidation of illegitimate trademarks affecting their interests. On the other hand, in the case of trade-marks coming under items 1–3 of Article II since such trade-marks are defective in themselves or are calculated to lead the general public into gross errors, there is no reason why the ground for their invalidation should be removed by any lapse of time.

If, moreover, both the above-mentioned grounds exist simultaneously in respect of a trade-mark, application for the cancellation of its registration may be made on either ground not later than three years from the date of such registration; and after the lapse of the said period of three years, its invalidation may be applied for on any of the grounds set forth in items 1–3 of Article II above referred to, such as, for instance, the ground of its misleading the public.

I avail, etc.,

Count Hayashi.