File No. 406/213–215.
Chargé Jay to the
Secretary of State.
American Embassy,
Tokyo, July 1,
1908.
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.,
[Inclosure 1.]
Ambassador O’Brien to the Minister for
Foreign Affairs.
American Embassy,
Tokyo, June 27,
1908.
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.,
[Inclosure 2.]
The Minister for Foreign
Affairs to Ambassador O’Brien.
Department of Foreign Affairs,
Tokyo, June 30, 1908.
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:
- (3)
- Those which are or may be injurious to public order or
morality or calculated to deceive the public.
- (4)
- 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.
- (5)
- 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.,
