File No. 893.54/312.
Consul General Sammons to Minister Reinsch.
Shanghai, February 17, 1915.
Sir: I have the honor to further supplement my despatch, No. 374 of the 2d instant by now appending a copy of a formal note of protest which I have received today from the Japanese Consul General:
Japanese Consulate General,
Shanghai, February 17, 1915.
Sir and dear Colleague: With reference to the dispute concerning certain trade-marks claimed both by Messrs. Chesebrough & Co., of your nationality, and Mr. Takejiro Matsumoto, of ours, I have received an instruction from our Home Government which runs substantially as follows:
Although the present case is one which relates apparently to the American and Chinese, it is in fact nothing but a dispute between like trade-marks possessed by both our nationals. As the trade-mark of the above-named American is not registered in Japan, it is not a case coming within the terms of the treaty between Japan and the United States relating to the mutual protection of patents, trade-marks, etc. Moreover, by virtue of Art. V of the Supplementary Treaty of Commerce and Navigation of 1904 concluded between China and Japan, China takes upon herself an obligation to protect our registered trade-marks. It will consequently constitute a violation of the treaty if the Mixed Court prohibit the sale by Chinese of any merchandise by sole reason of bearing the trade-marks possessed by Matsumoto. You (the Japanese Consul General) are, therefore, instructed to protest and to endeavor to prevent the Mixed Court from holding an examination on the matter, which has of necessity a great bearing upon the trademarks possessed by Matsumoto and registered legitimately at our Patent Office.
Under such instruction you will observe that I am duty bound to act accordingly. So if the case is at last brought before the Mixed Court, I have to lodge a protest against the hearing by the court, and should the court persist upon trying of the case, I shall ask the court to have our assessor sit.
I shall also be permitted to add that at the event of an adversary decision being rendered against Matsumoto, we shall be obliged, how deplorable as it may, to take a recourse to the same procedure as preferred by Messrs. Chesebrough & Co., against Chinese merchants dealing in the American goods bearing the trade-mark possessed by Matsumoto, which course unavoidably may entail a grave complication and loss to both parties, Japanese as well as American.
I have [etc.]
As heretofore indicated in my despatches on this subject, it is my intention, unless otherwise instructed, to recognize the duly authenticated certificates of registration of trade-marks, thus complying in a technical sense with the representations made by the Japanese Consul General. The plan of procedure to which I refer is more specifically outlined on page 4 of my despatch of the 2d instant, as follows:
In the meantime I have endeavored to expedite matters and provide a practical course of procedure for the future by seeking to arrange with the Japanese Consul General to proceed without delay in Mixed Court cases involving trade-mark infringements and to fine the Chinese retailers provided no certificate of registry is forthcoming; and if there is a certificate of registry to then refer the matter to the higher authorities at Tokyo or Washington to determine questions of canceling the imitation registration, priority of use, et cetera.
On behalf of our American interests here, it seems desirable to promptly bring matters of this nature before the eyes of the Chinese [Page 237]concerned and to assist them in comprehending the extent to which our trade-marks are pirated and imitated. I have assumed that this end may be accomplished by suitable procedure in the Mixed Court and by promptly inflicting fines where there is no certificate of registration covering imitations of our trade-marks.
The moral effect of this procedure, coupled with having it understood, in cases where duly authenticated certificates of registration are presented, that the matter, in being referred to the higher authorities, is merely held in abeyance and that the case is not actually forthwith dismissed, will, I believe, prove of great importance. In a technical legal sense, I further assume that this particular feature of my plan of procedure may be deemed untenable, but for practical purposes I believe that it will be possible to secure due observance of such policy.
In conclusion, I may add that, as heretofore pointed out, the Japanese Consul General, having verbally agreed to my plan of procedure, his formal protest on behalf of his Government may be accepted as applying to the jurisdiction Of the Mixed Court where trade-marks have been duly registered, under treaty stipulation or otherwise, at Tokyo or Washington, and where obviously the “higher authorities” must ultimately be appealed to in determining the merits of such registrations; that is to say, for an adjustment of trade-mark controversies involving improper and unwarranted registration of imitations, in a commercial sense, of designs possessing priority of use, et cetera.
As I have pointed out to the Japanese Consul General, we do not always know in advance who are responsible for marketing goods under trade-marks that are palpably imitations of American designs. This is particularly true as regards the Japanese imitations of American vaseline trade-marks. The Japanese packages, in most instances, give no satisfactory clue indicating who is responsible. But once the matter is brought into the Mixed Court, all parties concerned may be heard and offenders promptly fined where it appears they are not backed by their own Government’s certificate of registration, et cetera.
Non-interference in the Mixed Court, or otherwise, is what actual offenders desire. I assume that various Japanese offenders, in particular, wish to avoid publicity regarding their trade-mark pirating procedure. My controlling thought is to make the facts public and to warn all Chinese traders. Next, delays must be avoided if we are to satisfactorily guard American trade interests. Hence the plan of procedure providing for reasonable promptness in bringing about the preliminary hearing in the Mixed Court.
In no instance have we indicated a policy ignoring duly registered Japanese trade-marks (even if the names are imitations) albeit that procedure has been proposed by interested lawyers.
I have [etc.]