File No. 406/242–244.

Chargé Jay to the Secretary of State.

No. 419.]

Sir: With reference to the department’s instruction No. 174 of July 16 last1, on the subject of protection of trade-mark registrations in Japan, I have the honor to inclose herewith copies of correspondence between the Japanese officials and the British Embassy of Tokyo, which have kindly been placed at my disposal by the latter.

It appears from the letter of Mr. Nakamatsu, the director of the patent bureau, to Mr. Crowe that Article XII of the Japanese trademark law is interpreted to apply only to cases where business had actually been begun in Japan and thereafter discontinued and does not apply to cases where no business at all has been done in Japan.

Mr. Nakamatsu further asserts that there is no provision in Japanese law in virtue of which a registered trade-mark can be canceled on the ground that business has not been begun in Japan.

[Page 528]

The British Embassy has addressed an inquiry to the Japanese foreign office for further information on this subject and I have been promised a copy of their reply when it is received.

I have, etc.,

P. A. Jay.
[Inclosure 1.]

The Director of the Japanese Patent Office to Mr. E. F. Crowe.

Sir: In reply to your letter of the 11th instant I beg to say that Article XII of the Japanese trade-mark law is applicable only to the case where business has been discontinued in which a registered trade-mark was in use, but not to the case of nonuse of a registered trade-mark. Nor is there any provision in the law by which a registered trade-mark can be canceled on the ground that it has not been used, or on the ground that the person who had had the trade-mark registered has not begun business at all.

I have, etc.,

Morio Nakamatsu.
[Inclosure 2.]

The British Ambassador to the Japanese Minister for Foreign Affairs.

M. le Ministre: With reference to the convention for the mutual protection of trade-marks in China and Korea which it has been proposed to conclude between our two Nations, I have the honor to inform your excellency that I have been instructed by His Majesty’s Prince, secretary of state for foreign affairs, to obtain definite information from your excellency on the following point:

There are probably a great many British trade-marks which are used in China and Korea, but not in Japan, which the owners thereof would desire to have protected in China and Korea from imitation by Japanese.

If the convention is signed, will the Imperial Japanese Government be prepared in any case to vest their courts in China and Korea with power to deal with cases of piracy by Japanese subjects in those countries of British marks registered in Japan with the object of obtaining such protection and not necessarily with a view to use in Japan, conditionally upon His Majesty’s Government according complete reciprocity?

In other words, would the Imperial Japanese Government consider that owners of British marks registered in Japan but used only in China and Korea will be entitled to the benefits of the convention when signed?

For example, I would like an expression of opinion from your excellency on the following point:

Article XII of the Japanese trade-mark law says: “The right of exclusive use of a trade-mark expires with the cessation of the business for which it is used by the proprietor.”

Supposing that a British subject registered a trade-mark in the Japanese patent bureau for goods which he was dealing in in Japan and China, and that he subsequently found the mark unsuited to the Japanese market and gave up using it here, but continued the use of the mark in China, would it be possible for an interested party to demand the cancellation of the mark on the ground of the cessation of the business in Japan for which the mark was used by the proprietor?

If under the present law a mark could be canceled under such circumstances as detailed above, I venture to think that your excellency will see that some assurance from the Japanese Government which would cover cases of this sort will be required before any convention can be concluded.

I take, etc.,

Claude MacDonald.
  1. Not printed.