The Secretary of State to the Chargé in Mexico ( Johnson )
Sir: Reference is made to your despatch No. 2132 of January 11, 1930, and to previous correspondence in regard to the decision of the Supreme Court of Mexico handed down on October 26, 1929, which denied the right of The Palmolive Company, an American corporation, to bring suit for infringement of its trade-mark “Palmolive” which is registered in Mexico, on the ground that the corporation was not registered in Mexico in accordance with the provisions of Article 24 of the Mexican Commercial Code.
Numerous protests against the decision have been received not only from companies and associations interested in trade-mark protection but from others who, while not particularly interested in trade-mark rights, nor engaged in business in Mexico, have important business transactions with citizens and residents of Mexico. The companies interested in trade-mark protection are unanimously of the opinion that the decision contravenes the provisions of Article 2 of the Convention for the Protection of Industrial Property of 1883 as amended on June 2, 1911, to which the United States and Mexico are parties, and they concur in the views expressed by numerous other companies interested in trade with Mexico, that the decision, if adhered to, will deny the assistance of Mexican courts for the enforcement of obligations of citizens or residents of Mexico to American companies not engaged in business in Mexico unless the companies concerned comply with the onerous conditions of registration under the Commercial Code.
In view of the importance of the possible effect of the decision of the Supreme Court of Mexico on the business interests of the United States and Mexico if the views set forth above are correct, the Department has carefully considered the decision and is of the opinion that the decision contravenes Article 2 of the Convention for the Protection of Industrial Property signed at Washington on June 2, 1911, and is contrary to the Mexican Trade-mark Law of 1903 under the provisions of which the Palmolive trade-mark was registered in Mexico and is also contrary to the provisions of the Commercial Code. It would also seem to be clear that the decision, if adhered to, will injuriously affect the interests of citizens and residents of Mexico who have business dealings with American companies not engaged in business in Mexico.
The Department hopes that the Mexican Government will share this Government’s views that the interests of the two Governments will be furthered by any action which the Mexican authorities may take effectively to limit the application of the Supreme Court decision [Page 571] to companies which are actually engaged in business in Mexico on the basis of a domicile or an establishment in that country.
You are, accordingly, requested to discuss the matter informally with the Foreign Office and to urge its cooperation with a view to effecting a mutually satisfactory adjustment of the matter which will insure adequate redress and protection to The Palmolive Company and the definite exemption from the obligation of registration under the Commercial Code of companies which do not maintain a domicile or establishment in Mexico.
The Department desires, if possible, to avoid any discussion of the legal questions involved in the Court’s decision and hopes that you may be able to obtain a satisfactory adjustment of the matter without formal legal argument, but there is transmitted herewith for your information and possible use in your discussion with the Foreign Office a memorandum prepared by the Solicitor for this Department, which discusses statutory and treaty provisions involved in the decision under reference.
I am [etc.]