The latter says:-
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Whereas the United States undertakes to protect the citizens of any country in the exclusive use within the United States of any lawful trade-marks, provided that such country agrees by Treaty or Convention to give like protection to citizens of the United States:
"Therefore the Government of China, în order to secure such protection in the United States for its subjects, now agrees to fully protect any citizen, firm, or Corporation of the United States in the exclusive use in the Empire of China of any lawful trade-marks to the exclusive use of which in the United States they are entitled, or which they have adopted and used, or intend to adopt and use as soon as registered, for exclusive use within the Empire of China. To this end, the Chinese Government agrees to issue. by its proper authorities, Proclamations, having the force of law, forbidding all subjects of China from infringing on, imitating, colourably imitating, or knowingly passing off an imitation of trade-marks belonging to citizens of the United States, which shall have been registered by the proper authorities of the United States at such offices as the Chinese Government will establish for such purpose, on payment of a reasonable fee, after due investigation by the Chinese authorities and in compliance with reasonable Regulations."
It is in the Japanese and American Treaties that mention is first met with of "provisions of the Regulations" and "reasonable Regulations." All that China undertook by these Treaties was to take steps to protect in China foreign trade-marks against infringement by Chinese subjects only, for, owing to extra-territoriality in China, Chinese Courts have no jurisdiction over the subjects or citizens of Treaty Powers, nor was there at that time any redress in the Courts of Treaty Powers in China against infringement in China of the trade-marks of the subject or citizen of oue Treaty Power by the subject or citizen of another Treaty Power.
In pursuance of the Articles of the above Treaties, the Chinese Custom authorities at Shangbae prepared in January 1904 draft Trade-marks Regulations; but in June of the same year Provisional Trade-marks Regulations were submitted by the Board of For various reasons the Commerce to the Representatives of the foreign Powers.
latter were found unacceptable to the majority of the Representatives; and, after some discussion, they were revised by a Conimittee of the foreign Representatives, and a fresh draft was presented to the Chinese Government in April 1905.
Previously to 1902 there had been complaints of infringements of foreign trade- marks in China by Chinese subjects; but they were comparatively few in number and of little consequence, and redress was usually obtained by punishment of the offcoders and by injunctions in the form of Proclamations issued by the Chinese authorities forbidding continuance of the offences. It was recognized that the infringement of foreign trade-marks in China was to a very small extent the work of Chinese, and in June 1905 a new turn was lent to the negotiations by the commencement of a series of Agreements between the Treaty Powers, through an exchange of notes between their Representatives at Peking, for the mutual protection of their trade-marks registered in the country of the other against infringement in China. These Agreements further provided that the Courts in China of the Powers parties to the Agreements were empowered to deal with cases of infringement. For various reasons Japan considered a separate Convention, and not merely an Agreement by exchange of notes, uccessary for the purpose.
Meantime the Chinese Government, while inserting several amendments in, made a few concessions to, the revised draft of the foreign Representatives; but the amend- ments were considered objectionable and the concessions inadequate. One of the chief objections to the 1905 draft as revised by the Board of Commerce was the denial of extra-territorial rights in trade-marks disputes, and it was recognized that until certain fuudamental principles were established it was useless to continue negotiations. The Chinese Government were so informed, and this action was approved by the Governments concerned.
Thus matters continued until October 1906, when a new, entirely recast, confused, and in many places unintelligible set of draft Regulations was handed in by the Board of Commerce accompanied later by a French translation. The Secretary of the Board of Commerce was informed that the question of trade-marks was under discussion with the Wai-wu Pu, and that it could not be taken up with the Board of Commerce. In December the Wai-wu Pa forwarded these Regulations, but it was found that, while extra-territoriality was conceded and the fees slightly reduced, the Regulations were still
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very defective and objectionable. This conclusion was communicated to the Chinese Government, who were at the same time informed that in future negotiations on the subject the draft revised by the Committee of the Foreign Representatives should form the basis of discussion. This action was approved by the Governments concerned.
While the negotiations with China were proceeding, Agreements for the mutual protection in China of their trade-marks registered in the country of the other were entered into between Great Britain, the United States, Russia, Germany, Denmark, Holland, Belgium, and Portugal, and their Consular Courts in China were given jurisdic- tion in cases of infringement; but the negotiations with Japan, which is without a doubt the great offender, are still proceeding.
The Japanese Trade Marks Law came into force in 1999, and it is well known that British trade-marks registered in England have since that date been registered by Japanese in Japan as Japanese marks, and that Japanese goods bearing these counter- feit marks have been placed on the Chinese market in competition with British-mado goods, and it is also well known that these counterfeit marks have been declared by the Japanese Government to be unassailable because they had not been challenged within a period of three years from the date of their registration in Japan. This is the Japanese law. In China there is no remedy in the case of such an offence. The British merchant had no means of registering his trade-mark in that country, where there is as yet no machinery for the purpose and, even did the machinery exist, extra-territo- riality prevents Chinese Tribunals from exercising jurisdiction over the subjects or citizens of the Treaty Powers, who are subject to the jurisdiction of their own Courts only. Offences such as these point to the urgent necessity of an Agreement or Convention with Japan for the protection of British trade-marks which have been in use in China for many years, such a Convention as will give the fullest protection at the hands of Japanese Courts in China,
What, then, are the British marks in use in China that require protection? They are (1) British trade-marks duly registered in England as well as (2) marks which, although they cannot be registered in England, are as bond fide British trade-marks as if they had been so registered. The infringements of British trade-marks in China which Japanese subjects have been proved to have committed, show conclusively that any ordinary Agreement between Great Britain and Japan for the mutual protection in China of their respective trade-marks registered in the country of the other is totally inadequate. It is right that proprietors of British trade-marks, if they wish to protect their marks in Japan, should register them in Japan; but to compel the proprietors of British trade-marks, in order to guard against infringements of their marks in use in China and not in Japan to register these marks in Japan would entail a very heavy expenditure. Even now in China, where no Trade-marks Law is yet in force, British registered trade-marks, as well as open marks (ie., marks that cannot be registered in England), are protected by the Chinese authorities against infringement by Chinese in China, and yet these same marks cannot be protected in China against Japanese infringement unless they are registered in Japan by their proprietors. In any Agree- ment between Great Britain and Japan for the mutual protection of trade-marks in use in China what is wanted in a Convention by which not only the trade-marks of either country duly registered in the country of the other, but also the trade-marks of either country registered in its own country as well as open marks (ie., marks incapable of registration, but recognized as bond fide marks and protected as such in the country of origin) shall be protected by the British and Japanese Courts in China against infringe- ment by the subjects of the other country. Anything short of this, as will be shown later, will prove injurious to British commercial interests in China. The first paragraph of Article 1 of the draft Convention of the 17th June, 1907, guaranteed protection to the trade-marks of either country registered in the country of the other, but the second paragraph provided that the same protection should be accorded to marks in use in China three years prior to the coming into force of the Convention, and, as has been already stated, the Japanese law lays down that if a mark remains unchallenged for a period of three years it is unassailable. If the marks referred to in this second. paragraph were genuine Japanese marks, the paragraph was meaningless.
Again, the first paragraph of Article 1 of the counter-draft of the Convention of April 1909 merely guaranteed protection against infringement of marks in use in China which had been registered in the country of the other, for the second paragraph of the Article is too vague to include marks duly registered in the country of origin, bat not. registered in the other country, and it was for this reason that the amplification of the first paragraph was suggested by His Majesty's Minister, and the addition was intended
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