Papers Relating to the Foreign Relations of the United States, With the Address of the President to Congress December 7, 1915

File No. 893.54/314.

Minister Reinsch to the Secretary of State.

[Extract.]

No. 554.]

American Legation,
Peking, February 27, 1915.

Sir: Referring to the Legation’s telegram of February 15, 8 p.m., I have the honor to enclose correspondence in reference to certain Japanese infringements of American trade-marks in the China market.

The more complicated situation presented by the Vaseline case involves a claim by the Japanese Consul General at Shanghai, apparently supported by his Government, to suspend—subject to a determination by the courts in Japan of the rival pretensions of American and Japanese claimants—any action instituted by the American owners of a trade-mark in a Chinese court for civil or penal redress against Chinese dealing in infringements of Japanese origin, even though the Japanese claimant makes no pretension of prior use of the mark in China, or of having obtained by registration or proclamation any Chinese sanction for his claim to the use of the mark in this country. I cannot but feel that this extraordinary attempt to extend into Chinese jurisdiction the effect of Japanese domestic regulations would be, if not to deprive Americans altogether of the trade-mark rights secured them by the Treaty of 1903,⁶⁹ at any rate to make enforcement of those rights subject in every case to the determination of a Japanese court.

These cases emphasize the advisability of American exporters to this market availing themselves of the practical expedient of registering their trade-marks in the Trade-Mark Office at Tokyo, in order not only to be able to assure themselves of the right of action against Japanese infringers in the consular courts of Japan in China, as provided by the Treaty of 1908 between the United States and Japan,⁶⁸ but also in order to obviate the possibility of having their treaty rights to Chinese protection against persons and firms under Chinese jurisdiction complicated and called into question. It is respectfully suggested that the necessity of safeguarding their interests by registration in the Tokyo Trade-mark Office should again be called to the attention of American exporters, either through the Daily Trade and Consular Reports, or through the confidential circulars of the Department of Commerce.

I have [etc.]

Paul S. Reinsch.

[Inclosure 1—Telegram—Paraphrase.]

Consul General Sammons to Minister Reinsch.

American Consulate General,
Shanghai, February 13, 1915.

The American Vaseline trade-mark was registered in August, 1908, and again in July, 1913; a proclamation in its favor was issued in August, 1913; unable as yet to ascertain whether the Japanese mark has been registered for use in China.

The Japanese Consul General has now been instructed to protest against action in the Mixed Court in cases in which the mark or imitation is registered in Japan, holding that previous registration in China does not apply unless perhaps later for the purpose of determining priority.

[Inclosure 2—Telegram—Paraphrase.]

Minister Reinsch to Consul General Sammons.

American Legation,
Peking, February 18, 1915.

In further reference to Shanghai’s despatch No. 374 of the 2d instant, Mr. Reinsch advises Mr. Sammons that, in his view, the rights of trade-mark protection in China, in so far as concern prosecutions by Americans against Chinese, are determinable by the local law as depending upon priority of use, registration and proclamation; he therefore considers that a registration in Japan for use there would confer upon a Japanese infringement no locus standi in the case of an American owner of a trade-mark seeking in a court of Chinese jurisdiction for redress against violations of his rights under Chinese law by Chinese subjects.

69. For. Rel. 1903, p. 96.
68. For. Rel. 1908, pp. 521–523.