8
it is open to question whether the registration of the same or similar marks by more than one applicant is fair or reasonable. There are many marks in use in Shanghae to-day which bear a very close resemblance to one another. One mark, perhaps, is registered, the others have been used for a longer or shorter period, and their use is either known and permitted, or it may not be known,
Would it not be fairer in such a case to grant registration to the owner of the mark registered in a foreign country, and to none of the others, than to register them all?
Again, in the case of similar marks, none of which are registered in a foreign country, would it not be preferable to grant registration only to the user who could establish priority and to deny registration to others?
It would seem that on the one hand the applicant has good grounds for preference, while on the other his claim to registration rests merely on his being the first comer.
How far this point may be covered by Regulation 13 it is impossible to say until the code is compiled, defining the basis on which claims to cancellation must rest.
Prior use of a mark for two years gives the proprietor the right over all comers, and under Regulation 8 (c) such marks will not be granted registration on the application of any one party. The Regulation says "cannot be registered," but it may be taken for granted that the meaning is "cannot be registered by any one but the party showing his prior right, based on two years' use." This question of priority, carrying with it protection, has apparently been differently viewed by different readers of the Regulations. To some it appears quite plain that the wording of the Regulations secures permanent protection to the owners of marks such as described in clause 8 (c) without its being incumbent on them to register now or at any future time, i.e., priority of use constitutes protection in perpetuity free of all obligation to comply with the ordinary terms of registration. Again, the necessity for the code forces itself upon one, to determine a disputed point, but speaking with all deference to the above opinion, it is difficult to believe, viewing the Regulations as a whole, and claiming only a reasonable interpretation of their clauses, that the above opinion will prove to be the correct one.
Regulation states that exclusive right to a trade-mark is conditional on registration, in accordance with the Rules and Regulations, and no distinction between old and new marks is made or even implied.
Regulation 13 affords a very reasonable period of three years for owners of established marks to obtain redress for infringement, but, if established marks are entitled to perpetual protection, the object of the three years' limit in which to lodge a protest is not apparent.
In Regulation 9 exclusive rights in any trade-mark, whether registered abroad or in China, lapse after a period of twenty years, unless renewed in accordance with Regulation 10, and there is nothing in these clauses to justify the inference that renewal at home takes the place of renewal in China.
Supplementary Regulation 26 makes provision for the registration in China of trade-marks already registered abroad. If it is assumed that trade-marks registered abroad do not require registration in China, this provision is superfluous, and the same may be said of detailed Rule 9. It may, of course, be argued that these provisions are necessary in order to enable applicants to register marks already registered abroad, should they elect to do so, without any compulsion in the matter being employed, but it may fairly be assumed, in answer to this argument, that if protection without registration is assured, the alternative, involving heavy expenditure, is hardly likely to be chosen, and need not be reckoned with.
As further showing the necessity to register all marks to which exclusive rights are claimed or desired, Supplementary Regulation 27 states clearly that marks formerly protected by proclamation will cease to enjoy that protection unless registration be made within six months of the opening of the Registration Office.
Mr. Jamieson. Allow me to interrupt for one moment. You may not be aware that most Chinese firms' marks are registered locally by local proclamation, and, as I read their Rules as being primarily intended for Chinese, this applies to Chinese and not to foreigners. I think that explanation may tend to clear up the reading of that Rule.
Mr. Scott. This seems to indicate even more clearly than any of the other Regulations the intentions underlying them, viz., that all trade-marks, if claimed to be the exclusive property of any individual, firm, or corporate body, must be registered, as protection will not be continued even to those marks in respect of which the Chinese authorities are cognizant, and for which they have received fees. "The British Trade-marks Act, 1883," section 103, paragraph 1, says: "Arrangements with foreign States, for the mutual protection of trade-marks, &c., that any person who has applied for protection for any invention, design, or trade-mark, shall be entitled to registration of his design or trade-mark in priority of other applicants." Paragraph 3 says: "The applications for the registration of a trade-mark under this section must be made in the same manner as ordinary applications."
I believe it to be a fact that in no country in Europe or elsewhere can permanent protection be claimed for a trade-mark unless it be registered in accordance with the laws of that country, and why should the contrary be expected of China? The concluding clause of the British Treaty with the United States for the protection of trade-marks, of the 24th October, 1877, reads: "It is understood that any person who desires to obtain the aforesaid protection must fulfil the formalities required by the laws of the respective countries."
If it were
The question whether the proposed fees are reasonable or otherwise entirely depends on the decision of the point we have just been considering. only necessary to register new marks, the fees, though high compared with England or France, are moderate when compared with the scale charged in the United States, but even then some of the items charged are perhaps open to criticism.
A comparison of the English scale may, in the first instance, be useful.
England China Application to register £ s. d.(The French scale is considerably lower.)
It will be noted that the English scale makes registration very cheap, and it is only when it is sought to prove that a registered mark is not in order, or to appeal to the Board of Trade against a decision of the Comptroller, that the fees are slightly in excess of the Chinese scale. To continue; on the assumption that marks registered abroad must be registered here, the cost per mark would be as follows:-
Application Haikwan taelsIn addition to this, it must be remembered that it would probably be necessary to spend several half-hours at 1 tael each searching the registers. The result of which might be a refusal to grant registration, followed by an application for reconsideration of ruling, costing 5 taels.
It may be remarked here that those who hold that registration of registered marks is unnecessary would undoubtedly find their marks registered by others, owing to the registration office not being in possession of the necessary data preventing such registrations.
An application for cancelment would cost the rightful owner 30 taels for each occasion of infringement, which, in the end, would be much more expensive than
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8
it is open to question whether the registration of the same or similar marks by more than one applicant is fair or reasonable. There are many marks in use in Shanghae to-day which bear a very close resemblance to one another. One mark, perhaps, is registered, the others have been used for a longer or shorter period, and their use is either known and permitted, or it may not be known,
Would it not be fairer in such a case to grant registration to the owner of the mark registered in a foreign country, and to none of the others, than to register them all?
Again, in the case of similar marks, none of which are registered in a foreign country, would it not be preferable to grant registration only to the user who could establish priority and to deny registration to others?
It would seem that on the one hand the applicant has good grounds for preference, while on the other his claim to registration rests merely on his being the first
comer.
How far this point may be covered by Regulation 13 it is impossible to say until the code is compiled, defining the basis on which claims to cancellation must rest.
Prior use of a mark for two years gives the proprietor the right over all comers, and under Regulation & (c) such marks will not be granted registration on the applica- tion of any one party. The Regulation says "cannot be registered," but it may be taken for granted that the meaning is "cannot be registered by any one but the party showing his prior right, based on two years' use." This question of priority, carrying with it protection, has apparently been differently viewed by different readers of the Regulations. To some it appears quite plain that the wording of the Regulations secures permanent protection to the owners of marks such as described in clause 8 (c) without its being incumbent on them to register now or at any future time, i.e., priority of use constitutes protection in perpetuity free of all obligation to comply with the ordinary terms of registration. Again, the necessity for the code forces itself upon one, to determine a disputed point, but speaking with all deference to the above opinion, it is difficult to believe, viewing the Regulations as a whole, and claiming only a reasonable interpretation of their clauses, that the above opinion will prove to be the correct one.
Regulation states that exclusive right to a trade-mark is conditional on regis- tration, in accordance with the Rules and Regulations, and no distinction between old and new marks is made or even implied.
Regulation 13 affords a very reasonable period of three years for owners of estab lished marks to obtain redress for infringement, but, if established marks are entitled to perpetual protection, the object of the three years' limit in which to lodge a protest is not apparent.
In Regulation 9 exclusive rights in any trade-mark, whether registered abroad or in China, lapse after a period of twenty years, unless renewed in accordance with Regn- lation 10, and there is nothing in these clauses to justify the inference that renewal at home takes the place of renewal in China.
Supplementary Regulation 26 makes provision for the registration in China of trade-marks already registered abroad. If it is assumed that trade-marks registered abroad do not require registration in China, this provision is superfluous, and the same may be said of detailed Rule 9. It may, of course, be argued that these provisions are necessary in order to enable applicants to register marks already registered abroad, should they elect to do so, without any compulsion in the matter being employed, but it may fairly be assumed, in answer to this argument, that if protection without registration is assured, the alternative, involving heavy expenditure, is hardly likely to be chosen, and need not be reckoned with.
As further showing the necessity to register all marks to which exclusive rights are claimed or desired, Supplementary Regulation 27 states clearly that marks formerly protected by proclamation will cease to enjoy that protection unless registration be made within six months of the opening of the Registration Office.
Mr. Jamieson.Allow me to interrupt for one moment. You may not be aware that most Chinese firms' marks are registered locally by local proclamation, and, as I read their Rules as being primarily intended for Chinese, this applies to Chinese and not to foreigners. I think that explanation may tend to clear up the reading of that Kule.
Mr. Scott. This seems to indicate even more clearly than any of the other Regn- lations the intentions underlying them, viz., that all trade-marks, if claimed to be the exclusive property of any individual, firm, or corporate body, must be registered, as protection will not be continued even to those marks in respect of which the Chinese authorities are cognizant, and for which they have received fees. "The British
9
Trade-marks Act, 1883," section 103, paragraph 1, says: "Arrangements with foreign States, for the mutual protection of trade-marks, &c., that any person who has applied for protection for any invention, design, or trade-mark, shall be entitled to registration of his design or trade-mark in priority of other applicants." Paragraph 3 says: "The applications for the registration of a trade-mark under this section must be made in the same manner as ordinary applications."
I believe it to be a fact that in no country in Europe or elsewhere can permanent protection be claimed for a trade-mark unless it be registered in accordance with the laws of that country, and why should the contrary be expected of China? The concluding clause of the British Treaty with the United States for the protection of trade-marks, of the 24th October, 1877, reads: "It is understood that any person who desires to obtain the aforesaid protection must fulfil the formalities required by the laws of the respective countries."
If it were
The question whether the proposed fees are reasonable or otherwise entirely depends on the decision of the point we have just been considering. only necessary to register new marks, the foes, though high compared with England or France, are moderate when compared with the scale charged in the United States, but even then some of the items charged are perhaps open to criticism.
A comparison of the English scale may, in the first instance, be useful.
Application to register..
England.
£ s. d.
410
ප
5 0
I 0 0
China.
Haikwan taels.
5.00
Registration and certificate
30-00
Registration, one or more article in one class
Registration for series of marks, every additional
representation after the first in each class
0
5 0
Assignment to another party (partnership)
20:00
1 0 0
Renewal of registration (China, 20 years; England,
14 years)
25.00
0 0
2.00
0
1 0
If over 100 characters, per 100
0.50
0 0 4
1:00
England, per 4 hour..
0
0
Renewal of last certificate (copy of ratification) Reporting imitation (notice of opposition).. Application for reconsideration (appeal from Comp-
troller)
10.00
0 2 0
5.00
0 0
5.00
1 0 0
Copy of documents
300 words, per 100..
Inspecting register-
China, perhour
(The Fronch scale is considerably lower.)
It will be noted that the English scale makes registration very cheap, and it is only when it is sought to prove that a registered mark is not in order, or to appeal to the Board of Trade against a decision of the Comptroller, that the fees are slightly in excess of the Chinese scale. To continue; on the assumption that marks registered abroad must be registered here, the cost per mark would be as follows:-
Application..
Registration..
Copy of certificate from home, 58., say
Cost of translating documents into Chinese, say
Total
Haikwan tuels.
5
30
2
5
42
In addition to this, it must be remembered that it would probably be necessary to spend several half-bours at 1 tael each searching the registers. The result of which might be a refusal to grant registration, followed by an application for reconsideration of ruling, costing & taels.
It may be remarked here that those who hold that registration of registered marks is unnecessary would undoubtedly find their marks registered by others, owing to the registration office not being in possession of the necessary data preventing such registrations.
An application for cancelment would cost the rightful owner 30 taels for each occasion of infringement, which, in the end, would be much more expensive than
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