CO129-331 - Public Offices - 1905 — Page 565

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Inclosure 2 in No. 1.

The Marquess of Lansdowne to Signor Carignani.

Sir,

Foreign Office, August 7, 1903. I HAVE the honour to acknowledge the receipt of your note of the 30th ultimo, informing me of the desire of the Italian Government to come to an arrangement with His Majesty's Government for the mutual protection of British and Italian trade- marks in China, and stating that any claim which English manufacturers may have to present to His Italian Majesty's Consuls and Consular Tribunals in China, in order to obtain protection for trade-marks, duly registered in the Kingdom of Italy, as against Italian subjects, will henceforward be adjudicated, in the first instance, by the Consular Tribunals, and, in the last instance, by the Court of Appeal at Ancona.

In reply to your inquiry whether Italian subjects will be able to invoke the same legal protection in China, on the part of the English Consular authorities, in all that concerns their property in trade-marks duly registered in Great Britain, I have the honour to state that, under the Order in Council of the 2nd February, 1899, it is open to an Italian whose trade-mark has been infringed by a British subject in China to take proceedings against the latter in the British Court, provided that the consent in writing of His Majesty's Minister or Chargé d'Affaires be obtained to the prosecution. Such consent, however, may be withheld if His Majesty's Minister or Chargé d'Affaires is not satisfied that effectual provision exists for the punishment in the Italian Consular Court of Italian subjects infringing British trade-marks.

A copy of your note will be sent to His Majesty's Chargé d'Affaires at Peking, and Mr. Townley's attention will be called to the statements contained in it as to the competence in such matters of the Italian Consular Courts,

I have, &c.

(Signed) LANSDOWNE.

Inclosure 3 in No. 1.

Signor Pansa to the Marquess of Lansdowne.

(Translation.) My Lord,

Italian Embassy, London, October 9, 1903. THE substance of your note of the 7th August respecting the reciprocal protection of British and Italian trade-marks in China was duly communicated to the Royal Ministry for Foreign Affairs. The Ministry has now commissioned me to communi- cate to your Lordship a copy of the instructions (with inclosures) sent by the Royal Government to their Representatives in China for the proper application of the Italian Law to Italian forgers of trade-marks, which have been properly registered, and belong to subjects of Great Britain and of the other States with whom an agreement has been made.

I inclose a copy of the documents in question, and have, &c.

Moreover, the Royal Consuls should observe how Articles 296 and 297 of the penal code establish, in the case of an infringement of a mark, penalties different from those sanctioned by the Special Law.

It is advisable that the Consuls should remember the principle of jurisprudence, according to which, in deciding the question of infringement, one should, rather than examine minutely the analogies and differences to be found in the two marks, ask oneself if the public, for whose consumption is destined the merchandize stamped with the mark which forms the subject of complaint, might be deceived and induced to mistake one mark for the other.

It is also understood that the protection in question includes both industrial and commercial trade-marks, in accordance with the Law of the 30th August, 1868, and that not only the manufacturers but all nationals of the countries which are parties to the recent Agreement can have redress against infringement of marks properly registered.

(Signed)

PANSA.

Inclosure 4 in No. 1.

Instructions as to the application of Consular Jurisdiction to the Controversies respecting the Protection of Trade-marks in China.

(Translation.)

is

THE Law to be applied in the settlement of cases of infringement of trade-marks committed by Italian citizens is that of the 30th August, 1868, of which a copy inclosed, together with a copy of the Regulations issued under that Law. A copy is also inclosed of the Law sanctioning the Madrid Agreement of the 17th April, 1891, for the international registration of trade-marks.

According to this Agreement, the trade-marks registered for international purposes at Berne by the Administration of the country of origin have a right to protection in all the States which have adhered to the Agreement. Hence, a certificate given by the Berne Bureau, resulting in the international registration of the mark, can be accepted without objection on the part of Italy, in lieu of an Italian certificate registering the mark in dispute.