File No. 893.54/322.
Chargé MacMurray to
the Secretary of State.
[Extract.]
No. 695.]
American Legation,
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.]
[Inclosure.]
Minister Reinsch
to the Minister for Foreign
Affairs.
No. 303.]
American Legation,
Peking,
April 17, 1915.
Excellency: Referring to the conversation
of Wednesday last in which I laid before your excellency certain
considerations in regard to the prosecution in the Mixed Court at
Shanghai of a certain Chinese dealing in a product bearing an
infringement of the vaseline trade-mark which is the property of an
American company, I have the honor to enclose herewith for your
consideration a memorandum setting forth the essential facts in the
case.
I avail [etc.]
[Subinclosure.]
memorandum.
The trade-mark Vaseline, the property of the Chesebrough
Manufacturing Company, an American corporation, was registered for
use in China at the registration office maintained by the Maritime
Customs at Shanghai, in August of 1908; it was again similarly
registered in July 1913, and in the following month a proclamation
for its protection was duly issued by the proper Chinese authorities
as contemplated by Article 9 of the Sino-American Commercial Treaty
of 1903.
The American company was thus entitled under the treaty to the
protection of the Vaseline trade-mark against all persons under
Chinese jurisdiction and was particularly entitled to seek in the
Chinese courts proper civil or penal redress for any infringements
of its property right in that trade-mark by persons under Chinese
jurisdiction, whether by original imitations of that trade-mark, or
by dealing in such imitations wherever originating. In the absence
of any evidence that the registration by the American company was
invalid because of fraud, there thus accrued to the Chesebrough
Company an absolute right to protection arising out of the
obligations of the Chinese Government and indefeasible by the action
of third parties whether of American, Chinese or other
nationality.
In February of the present year the Chesebrough Company brought to
the attention of the American Consulate General in Shanghai the fact
that certain imitations of its products, of Japanese manufacture,
were being sold in China under its trade-mark by certain native
firms; and it indicated its intention of prosecuting in the Mixed
Court the Chinese dealers guilty of infringing its trade-mark by the
sale of imitations in violation of Chinese law. It is understood
that objection was made by the Japanese Consulate General at
Shanghai to the prosecution in the Chinese court of cases involving
an industrial property right which might prove to have become
associated with the Japanese products in question by virtue of the
registration of the Vaseline trade-mark by the Japanese
manufacturers in the registration offices at Tokyo. Under
instructions from the Government of the United States, however, the
Legation advised the American company, through the Consulate General
at Shanghai, that it considered the Mixed Court competent to try
persons under Chinese jurisdiction for offenses against Chinese law,
and that it could perceive no ground on which third parties could
deprive American citizens of their recourse to Chinese judicial
agencies for the purpose of vindicating the rights accruing to them
from the obligations undertaken by the Chinese Government under the
treaty with the United States.
[Page 245]
The Chesebrough Company accordingly instituted criminal action in the
Mixed Court against Kuang Sung Chiang, demanding that the accused be
fined, that their stock of the infringing product be confiscated,
and that they be permanently enjoined from dealing in such products
falsely bearing the Vaseline trade-mark. The case came to trial
about the middle of March but the decision has hitherto been
reserved.
The Legation is now informed by the American Consul General at
Shanghai that the special commissioner for foreign affairs at that
port has received instructions to dismiss this case.
On the 14th instant the American Minister laid before his excellency
the Minister for Foreign Affairs the view that the dismissal of this
case would not only deprive the American owners of the trade-mark of
the rights granted them by Chinese law in pursuance of the Treaty of
1903, 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 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 American Legation accordingly hopes that the Chinese Government
will see its way to withdraw any obstacle which may have been
interposed to the vindication of the Chesebrough Manufacturing
Company’s rights in a court of Chinese jurisdiction.
[Inclosure 2.]
Chargé MacMurray
to Consul General Sammons.
No. 1128.]
American Legation,
Peking,
June 16, 1915.
Sir: The Legation has received the
despatch No. 503 of the 9th instant, in which you transmit for its
information a memorandum by the assessor dealing with the
conclusions arrived at by the Mixed Court in the case of Connell
Brothers against Hsu Ho Ching, in the matter of infringement of the
Eagle Brand trade-mark. If this memorandum is correctly understood,
its purport is that the Mixed Court handed down no decision in the
case but confined itself to a recommendation that the principle at
issue should be referred to the respective representatives in Peking
of the interested parties—American, German and Chinese.
Should this understanding of the action taken by the Mixed Court
prove correct, the Legation fears that it may have established a
precedent exceedingly dangerous to the trade-mark rights of
Americans in China. From the instructions that have been sent you in
reference to the Vaseline cases, to which the present case should be
assimilated, as indicated in the Legation’s telegraphic despatch of
June 4, 2 p.m., it is to be inferred that it is the view of our
Government that the judicial protection of American trade-marks in
China against the infringement or dealing in infringements by
Chinese vendors is an absolute treaty obligation undertaken by the
Chinese Government, which cannot be suffered to be questioned or
made subject to the veto of the Chinese executive authorities, and
in which the consular or diplomatic representatives of a third power
can have no locus standi by reason of the fact that the
infringements originated in their country. In that view of the case,
“the representatives in Peking of the interested parties,” have no
competence whatsoever to intervene in the judicial proceedings; and
the inclusion in that category of the representatives of German
interests begs the question that the nationals of a third country
can obtain, by registration of an American trade-mark in their home
registration offices, a right to intervene and to obstruct the
Chinese Government’s fulfillment of its treaty obligations to the
American Government.
The Legation has accordingly telegraphed you that the case should be
treated as a judicial matter not subject to review by any executive
authorities—particularly by the representatives of German
interests—and that the Consulate General should therefore use all
proper endeavors to bring about the decision of the case by the
Mixed Court.
I am [etc.]
[Page 246]
[Inclosure 3—Extract.]
Consul Gauss, in
charge, to Chargé MacMurray.
American Consulate General,
Shanghai,
July 12, 1915.
Sir: I have the honor to acknowledge the
receipt of the Legation’s telegram of July 10, 5 p.m.,17 concerning the case in the
Mixed Court at shanghai involving the infringement of the Vaseline
trade-mark of the Chesebrough Manufacturing Company.
Mr. Bishop now informs me that he has been able to have the case set
down for Saturday, July 17, for final judgment. This is the first
opportunity for the hearing of the case under the congested calendar
of the Mixed Court. Mr. Bishop has discussed the case at some length
with the magistrate and informs me that he believes that a
satisfactory judgment can be had.
I have [etc.]
