78
2
insertion in these Chinese Regulations of safeguards intended to insure to foreign proprietors of trade-marks the exercise of rights which are allowed to them by their own law, and for this reason I have not been able to see the utility of adding to Article 6, as suggested by the Board of Trade in the telegram already referred to, the words but registration of a mark under this Regulation shall not prevent any person from continuing to do that which he was lawfully doing before the date of such regis tration." Although this is my opinion, there will be found in the draft, as Article 22, a French addition to much the same purpose as the Board of Trade clause, I have accepted it merely because my French colleague said that it was a point on which his Government laid much stress, and I have great doubt whether he attached to it the same importance as his Government did.
As I have had the honour to point out in previous despatches, these Regulations will have no other effect than to prevent Chinese subjects from counterfeiting foreign trade-marks. They will not in any manner hinder the use of a foreigner's trade-mark by another foreigner, whether by attaching it to goods manufactured by him in China, e by importing into China goods so marked. The only restraint upon a foreigner in China is the law of his own country, and His Majesty's Government has already done all that is feasible in this direction by seeking to enter into Agreements with other Treaty Powers, to mutually apply the domestic law against those who use trade-marks to which they are not entitled--an imperfect remedy, it may be conceded, but at the same time all that is attainable where the counterfeiter is a foreigner.
Consequently, the importance of these Regulations to foreign proprietors of trado. marks may be very easily exaggerated. Instances of Chinese subjects counterfeiting a foreign trade-mark have certainly occurred in the past, but not many have been reported. I am acquainted with one case in which a Chinese official had copied a foreign trade-mark on soap. He was prosecuted in the Mixed Court at Shanghae, and eventually an order was obtained prohibiting him from using the mark. Öther trade-marks have been protected by Proclamations issued by the local authorities. It will be remembered that His Majesty's Consuls-General at Shanghae and Tien-tsin both reported that there was no difficulty under the old procedure in obtaining protection for British trade-marks against Chinese subjects. The correspondence on this subject, moreover, shows that it is not the Chinese, but the foreigner who is considered likely to pirate trade-marks, and against these the Chinese Regulations, as I have shown, afford no protection.
The Chambers of Commerce and the China Association, the Board of Trade itself, and the solicitors to Price's Candle Company, all appear to be under the impression that these Chinese Regulations will be enforceable against foreigners, as may be gathered from the papers inclosed in your Lordship's despatches Nos. 312 of the 18th November, 318 of the 30th November, 1904, and No. 11 of the 17th January, 1905, but this view is clearly untenable, as has been stated above.
To put the case shortly, registration or deposit of a trade-mark under these Regulations confers on the proprietor no right as against any person not a Chinese subject, and no penalty for an infringement of any of the clauses of Article 21 can be inflicted on a foreigner by virtue solely of this Chinese enactment.
It is desirable that the very limited application of these Regulations, and of the extremely slight advantage to be gained by registration or deposit of marks, should be clearly explained to the British proprietors of trade-marks, lest they should unwittingly be led to incur great and useless expense in the payment of fees. Their best protection lies in the registration in those foreign countries from which they apprehend goods may be imported into China bearing counterfeit reproductions of their trade-marks.
The inclosed draft will, I believe, he found on examination to contain nearly all the amendments proposed in the proof forwarded to your Lordship by the Board of Trade in their letter of the 9th March last. The comparison should be made, not with the translation inclosed in my despatch No. 286 of the 8th August last, but with the revised version that accompanies this despatch.
The following are the principal differences:-
Article 2. In accordance with the expressed wish of the mercantile community, and with the spirit of Article VII of the Mackay Treaty, it is proposed that there shall be one central Bureau for Registration of Trade-marks at Shanghae. The Chinese Regulation, by which this Bureau was to be at Peking, would cause great inconvenience to the foreign proprietor, owing to the distance of the capital froni the principal centre of commercial affairs.
As a
The last two sentences of paragraph 1, on p. 2, have not been inserted. Chinese official will have to be Registrar, and will certainly be more or less unac-
3
quainted with the proper methods of conducting business, it would not be desirable to leave too much to his initiative.
In the proposed addition to Article 7 the words: "But in no other case shall it These words have not been inserted. be necessary to prove registration abroad.” Presumably they were suggested by the supposition that proof of registration in the proprietor's country was necessary before registration in China would be allowed (see Trade-mark Owners' Association to Foreign Office of the 5th October, and British-American Tobacco Company to Foreign Office of the 28th September, 1904). The original Regulations do not bear that construction, and the present draft entirely excludes such an interpretation.
To the enumeration of marks which cannot be registered has been added "free marks.' This was done at the instance of Germany, and it seems a very desirable addition.
The final clause of paragragh 2, on p. 3, has not been inserted. To give to the Chinese Registrar discretion in the case contemplated would not be advisable.
In the first paragraph of Article 5, the second member providing for a block
"Six months" in being supplied will be found in the "Detailed Rules," No. 1. graph 2 is extended to "nine months."
para-
Regulation 9 has been restated according to the correct intention of the original Chinese. The object, apparently, is to give to a foreign proprietor as long an enjoy- ment of his registered trade-mark in China as a Chinese proprietor would enjoy in the other country, and not to make the period begin to run from the date of the registra- tion abroad. Such a rule might in extreme cases compel a proprietor to pay the fees merely to enjoy protection for a few months, on the expiration of which he would have to renew his registration.
The proposed insertion of (b) and (c) in the Board's redrafting of Regulation 12 has not been adopted. As observed before, it is not desirable to leave too much to the discretion of a Chinese Registrar. The same remark applies to the Board's suggestions for the amendment of Regulation 13.
In Article 20, regarding suits for infringement of trade-marks, (a) has been amended so as to bring it into accordance with the existing practice based on the provisions of the Chefoo Convention in regard to "Judicial proceedings in Mixed Cases." For this reason the wording of the preamble of Regulation 21 has been changed, the law of the defendant's country being applicable where he is a foreigner, and China having no power to declare what penalties shall be inflicted on foreigners.
The tariff has been amended in accordance with the suggestions of the commercial bodies at Shanghae. It is hoped that this will be found to meet the desire of the Board of Trade that the fees shall be as low as possible.
In a telegram of the 13th April your Lordship communicated to me some further suggestions made by the Board of Trade after consultation with the Chambers of Commerce. Of these some will be found to have been inserted in our draft.
The proposed addition to Article 4 seems to lack practicability, as a Chinese or Japanese word is in itself of a pictorial nature, and translation would not make it more readily recognizable. On the proposed addition to Article 6 I have commented in the previous part of this despatch. With regard to the publication of the Gazette in English as well as Chinese, I have informed your Lordship of the opposition of the French Minister to this proposal, but I shall use every endeavour to have it included.
The suggestion that a definition should be added that "person" includes "firm, company, or corporation," has been partly met by the insertion of the words commercial house" after "person," but the Chinese language has no word for 'corporation," and "
"would be included under "commercial house."
I have, &c.
company
(Signed)
ERNEST SATOW.
P.S.-It will be noticed that no form for depositing marks has been provided, and this will have to be added in the course of the discussions.
E. S.