(This Document is the Property of His Britannic Majesty's Government.)
104
485
CHINA TRADE.
CONFIDENTIAL.
[5513]
No. 1.
14 MAR 08.
[February 17.]
SECTION 1.
Sir C. MacDonald to Sir Edward Grey.—(Received February 17.)
Tokió, January 18, 1908.
(No. 10.) Sir,
I HAVE the honour to forward to you herewith copy of a despatch which I have addressed to Sir J. Jordan on the subject of Japanese infringements of British trade-marks in China.
At the same time I would beg to lay before you the following remarks on the general subject of trade-mark imitations in Japan and China, and the legal remedies available against them. These remarks are based on a Memorandum drawn up by the Commercial Attaché of this Embassy.
Trade-mark imitations in Japan may be divided into the following five classes:
1. Where a trade-mark pirate has been successful in registering a foreign trade-mark, and is therefore legally entitled to use it on his inferior goods.
A remedy exists in this case if the pirate's trade-mark resembles one already registered by another person, when cancellation may be demanded at the Patent Bureau (cf. Lea and Perrin case), or if the mark was in use prior to 1899, and three years have not elapsed since its registration. Otherwise the mark is unassailable, and the only alternative for the manufacturer whose mark has been pirated is to start an entirely new one for the Japanese market (cf. Winsor and Newton case).
2. Where a pirate imitates a foreign trade-mark registered in Japan by the foreigner, but makes several differences in the mark and adds his own name and address.
The best procedure under these circumstances is to get a decision from the Patent Bureau as to whether the imitation resembles the registered trade-mark closely enough to enable the original owner to bring an action against the imitator with any chance of success. Should the Patent Bureau's decision be favourable, an action may then be brought. (This is the course which might have been followed with advantage in the "Black and White" whisky case.)
3. Where a pirate imitates a foreign trade-mark registered in Japan, but makes either no differences, or very trifling ones, and carefully conceals his own name and address.
The only remedy is to set detectives to work to discover the pirate and bring an action against him. It is an expensive course, and foreigners are often reluctant to take the necessary steps. (A good example of this sort of imitation is Crosse and Blackwell's vinegar.)
4. Where a pirate imitates a foreign trade-mark not registered in Japan. Nothing can be done to the pirate in this case. He can, in fact, usually succeed in registering the trade-mark in his own name if he wishes to, in spite of the provision of Article 2, clause 3, of the Trade-mark Law, that trade-marks in regard to which the apprehension exists that they will deceive people cannot be registered.
5. When a Japanese manufacturer, to further his sales, uses a mark which, though not actually an imitation of any foreign trade-mark, is got up in foreign style, and arranged so as to lead an unsuspecting native to imagine that he is buying a genuine foreign article. The following may be quoted as examples of this class:
Biscuits: These are put up in tins in a style which, though they would not deceive a foreigner for a moment, make the ordinary Japanese think he is buying a foreign article.
Sugar, which in its cube form is made to resemble that made by the Western Sugar Refining Company.
Inks: Caw's inks are not absolutely imitated, though the casual impression on looking at the Japanese production at a distance is that it is Caw's.
Pencils, studs, and sleeve-links, polishing powders, boot polishes, soaps, scents, hair-oil, sauces, paints, varnishes, &c., are made locally to look like the imported article.
[2842 r-]
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