File No. 893.54/322.
Chargé MacMurray to the Secretary of State.
Peking, July 20, 1915.
Sir: Referring to despatch No.554of February 27 last, in which the Legation reported concerning infringements of certain American trade-marks (particularly the Chesebrough Company’s Vaseline trade-mark), I have the honor to enclose for the information of the Department further correspondence in reference to the Vaseline case.
From Shanghai’s despatch of March 27, No. 427, of which a copy was stated to have been forwarded direct to the Department,17 the [Page 243]Legation understood that on the hearing of the case against Yung Chi Hsiang and others the Chinese magistrate of the Mixed Court had concurred in fact in the opinion of the American assessor, but that he was unwilling to join in a judgment of conviction without reference to the higher authorities, in view of the representations which the Japanese Consulate General had made to the Chinese local authorities as well as to our Consulate General. On April 14 last, having been advised by the Consulate General that the special envoy or commissioner of foreign affairs at Shanghai, Mr. Yang Cheng, had directed the magistrate to dismiss the prosecution, the Minister and I called at the Foreign Office and explained to the Minister for Foreign Affairs and his secretary, Dr. Hawkling Yen, the facts of the case and the view that such action as was contemplated would not only be detrimental to the rights of the American firm in interest, but would also establish a precedent under which the rights and duties even of Chinese subjects in respect to the use of trade-marks in China would be subjected to the test not of Chinese law alone but also of the law of any country whose nationals might register in their home trade-mark offices the marks already registered in China and entitled to Chinese protection. The Minister for Foreign Affairs seemed fully appreciative of the fact that the result of such action would be to oust China from a certain measure of its jurisdiction over its own nationals, and he promised to consult with the other interested Ministries with a view to the issuance of instructions to the Shanghai authorities to remove any obstacle to the rendering of a decision by the Mixed Court. Mr. Lou has subsequently informed me that such instructions were in fact issued, in spite of the fact that the Japanese Legation has made formal written protest against the rendering of a decision in the case by the Mixed Court. There appears, however, to have been some misunderstanding by the Chinese authorities at Shanghai, either as to their instructions or as to the wishes of our Consulate General; for as late as June 24, in reply to an inquiry as to the cause of the delay in the decision, Dr. Yen informed me that the commissioner at Shanghai had reported that the case was held in abeyance at the wish of the Consulate General, which was awaiting further instructions from the Legation.
When at last the case was set for decision, on the 17th instant, it appeared that during the period of delay the Mixed Court magistrate had been dissuaded from the opinion which he had theretofore shared with the American assessors, and declared himself in favor of dismissing the case on the ground that the fact of infringement must first be established in a Japanese court. As soon as possible after receiving the report to that effect in the Consulate General’s telegram of July 17, 4 p.m., I wrote Dr. Yen a personal note informing him of this development in the case, and requested him to bring the matter to the attention of Mr. Lou. Considering the views which the Minister for Foreign Affairs has expressed on this subject, I am in hopes that he will at once take steps to counteract the interference of the Japanese authorities which stands in the way of a judgment on the merits of the case. Should no such action be taken, I propose, on receiving from the Consulate General at Shanghai a further report as to the attitude of the magistrate and of the [Page 244]commissioner for Foreign Affairs, to enter a formal protest against the action of a court of Chinese jurisdiction in denying to an American firm the remedies to which they are entitled under Chinese laws for the protection of their treaty rights in the use of their trademark in China.
I have [etc.]