The Minister in Nicaragua (Jefferson) to the Secretary of State

No. 854

Sir: For the information of the Department I have the honor to append herewith a Spanish copy and translation of the note of May 24, 1920 of the Minister of Development to the Minister for Foreign Affairs, which was recently handed to me.

It will be noted that request is made that there be denounced the Convention on trade marks, patents, etc., signed at Buenos Aires on August 20, 1910, of which the United States is a signatory. Action is temporarily withheld awaiting advice from the Department regarding same.

I have [etc.]

Benjamin L. Jefferson

The Nicaraguan Minister of Fomento and Public Works (Zavala) to the Minister of Foreign Affairs (Urtecho)

No. 1164

Mr. Minister: This Ministry, for reasons set forth by the Director General of Public Works in the report which I have the honor to transcribe to you, deems it advisable to denounce the convention of August 20, 1910, on trade marks, to which said report refers; and therefore I request you kindly to denounce said convention in conformity with article XIX of the same:

“I have the honor to submit for your consideration the following observations:

“Article II of the Convention on Trade Marks, signed at Buenos Aires the 20th of August, 1910, by the delegates of the American Republics to the Fourth International American Conference textually reads:

‘Article II. Any mark duly registered in one of the signatory States shall be considered as registered also in the other States of the Union,80 without prejudice to the rights of third persons and to the provisions of the laws of each State governing the same.

‘In order to enjoy the benefit of the foregoing, the manufacturer or merchant interested in the registry of the mark must pay, in addition to the fees or charges fixed by the laws of the State in which application for registration is first made, the sum of fifty dollars gold, which sum shall cover all the expenses of both Bureaux for the international registration in all the signatory States.’

“From the cited text, a citizen, for example, of the United States of America, who pays the ‘fees or charges’ which the law of the [Page 221] United States prescribes for the registry in that country of a trade mark, and moreover pays the fixed fee of $50 only once, a fee destined to cover the expenses of international registration in the appropriate bureau, will enjoy the benefit of having his mark registered in all the other States of the Union. Therefore, in the case of the aforesaid example, the citizen of the United States would also have, according to the article cited, his mark protected in Nicaragua, although we would collect no fee for it; also, as these cases, referring to the United States of America, will reach into the thousands annually, we shall have to establish a new Office of Registration of Trade Marks with a large personnel capable of attending to the great amount of work which would be created. Moreover, it is necessary to take into consideration that at present the greater part of the marks which are registered in this office come from the United States of America, and that from them the Treasury receives a considerable income, which will cease from the moment the owners of those marks, by paying to their own Government the fees which heretofore they have paid here, obtain in Nicaragua the protection of their marks, a thing which, as has been said before, they could only obtain heretofore by paying here also the fees which our law requires. In short, we stop collecting the fees which our law requires with the obligation of doing gratuitously the same service for which we used to receive payment, and moreover, we incur considerable expense which heretofore we did not have, for, as you well know, Mr. Minister, the registration of trade marks and patents today does not cost Nicaragua one centavo. For the reasons set forth, unless there be a better and more authoritative opinion, this office considers it advisable for Nicaragua to make use immediately of the right which article XIX gives it to denounce the convention, notifying, as therein stipulated, the other signatory States, through the medium of the Government of the Argentine Republic.”

I avail myself [etc.]

Juan J. Zavala
  1. File translation revised.
  2. Arts, xi–xvi of the convention provide for the establishment of a union of American nations with offices in Habana and Rio de Janeiro, to act as a clearing-house for registered trade marks.