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This trade-mark was duly registered in England in 1886, and has been in use on goods for China belonging to the firm of Sir Elkanah Armitage and Sons, for nearly thirty years.
It was discovered early in 1906, on consulting newly published books of registered trade-marks, that the "Crocodile " trade-mark of Sir Elkanah Armitage and Sons had been copied in every detail, and registered in Japan by Hambei Konishi, of Fushimicho Shichome, in Osaka.
An attempt to persuade Mr. Konishi to withdraw the mark improperly appropriated by him ended in that gentleman declaring he would not only continue to use the same in Japan, hut, if possible, endeavour to forestall the proper owners of the mark under the new China Trade-marks Act, and stop their using it in China, be having likewise applied for registration of the mark to the Chinese Government, in virtue of which, though not yet registered, he has preferential right.
It has been suggested that Mr. Konishi has no real intention of using the trade- mark thus obtained, himself, either in Japan or China, his sole object being to sell it at a high price, forcing the original and proper owners of the mark to buy back the right
to use it from him on such terms as he can extort.
In these circumstances the matter has been reported to His Majesty's Government, and I am instructed, while acquainting your Excellency with the circumstances of the case, to suggest to the Japanese Government that, if the present law in Japan does not provide a remedy, it would be desirable for it to be amended so as to make it a criminal offence for any one to register a mark belonging to another for the purpose of black- mailing the true owner; and enabling any uark to be struck off the register by a competent Tribunal on its being proved to belong to another.
His Majesty's Government desire also to point out that it is in the interests of the public, no less than in that of honest traders, that the Trade-mark Law in every country of the International Union for the Protection of Industrial Property should contain some provision which will enable the registration of trade-marks in the names of other than their true owners to be cancelled on due cause being shown.
(Translation.) Sir,
I avail, &c.
(Signed)
persons
HENRY CROFTON LOWTHER.
Inclosure 2 in No. 1.
Viscount Hayashi to Eir C. MacDonald.
[Undated.]
I HAVE the honour to acknowledge the receipt of Mr. Lowther's note No. 54 of the 27th May last, stating that one Hambei Konishi, of Osaka, was using the "Crocodile" trade-mark of Sir Elkanah Armitage and Sons, and setting forth the wishes of His Majesty's Government in regard to a remedy.
On referring the matter to the Department concerned and causing inquiries to be made, it appears that the registration of the "Crocodile" trade-mark for the exclusive use of Hambei Konishi was completed on the 20th February, 1903, under the Japanese Law of Trade-marks, and it has since been in uninterrupted use. Three years having thus elapsed since registration, the trade-mark has become final. Consequently, and in spite of the fact that another person had previously obtained registration abroad of a trade-mark of the same design, it is impossible under the law of Japan to render the trade-mark invalid, the procedure prescribed by the Japanese Law of Trade-marks for the registration of Armitage's trade-mark at the office having control not having been carried out, and no demand for a decision declaring the registered trade-mark invalid having been made by any one within three years of its registration.
I take, &c.
(Signed) HAYASHI TADASU, Fiscount,
Minister for Foreign Affairs.
3
Inclosure 3 in No. 1.
Memorandum respecting Trade-marks.
(Reference to Foreign Office Circular, Commercial, of June 27, 1907.)
IN accordance with Article 14 of the Trade-mark Law (No. 58 of March 1899), a journal of trade-marks ("Shohyo Koho") is published weekly by the Patent Bureau A copy of this journal is inclosed herewith. From this it will be seen that information as to trade-marks is published only after registration has been affected; this information includes a specimen of the mark, name and address of the owner of the mark, the date of application and of registration, and classification and description of goods. In a few instances registration has been effected in a little over a month after application, but in the greater number of cases the period is three to six months. So far as the above publication is concerned no public indication of applications for trade-marks is given, but Article 20 of the Trade-mark Law applies Article 45 of the Patent Law (No. 56 of March 1899) mutatis mutandis to trade-marks; this Article reads: "Demand may be made to the Patent Bureau for copies of documents relating to patents, for the preparation of drawings, or for the perusal of the register of patents. But this rule does not apply to matters which require secrecy." Under this Article it might be possible for information as to applications for registration of trade-marks to be obtained by inquiry at the Patent Bureau.
It may be here pointed out that even if a list of applications were published it is by no means clear that a protest against the registration of a trade-mark on the ground that the latter had been in general use by another person or persons would be sustained. It is true that sections 4 and 5 of Article 2 of the Trade-mark Law are worded as follows:-
"Article 2. Words, devices or marks which come under any of the following cases cannot be registered as trade-marks:----
"4. One which is the same as, or resembles the registered trade-mark of another person, or a trade-mark in the case of which a year has not yet elapsed since its registra- tion ceased to have validity, and which is intended to be used for identical goods.
"5. One which is the same as, or resembles a trade-mark used by another person (or other persons) before the operation of this law."
It will be seen that the above clauses do not seem to afford protection for trade-marks which have been in general use unless such use extends to before the Even in the latter cases, however, decisions of the operation of the law, ie., to 1899. Patent Tribunal make it doubtful whether any adequate protection can be given to unregistered trade-marks whether previously in general use or not: notwithstanding the fact that registered trade-marks are dealt with by section 4 above such decisions would seem to regard the trade-marks mentioned in section 5 as having also to be registered, perhaps under previous trade-mark laws.
In any case it does not appear that mere provision for publication of applications would necessarily prove satisfactory without a definite understanding as to the rejection of applications dealing with trade-marks already in use.
Even if applications were published it cannot be said that this would be of great benefit to trade-mark owners. It would be published in Japanese, and although this would be no bar to consultation by firms in Japan it would probably prevent the journal from much use outside of the country. Not only so but in many cases the person or firm whose mark was about to be registered by another would have no representatives in Japan to advise him, or them, of the fact, so that in all probability the period for registration, even if it were six months, would elapse before the matter would be known or steps could be taken. Should the business be sufficiently important to justify the appointment of an agent in Japan then the trade-mark should be at once registered without waiting until the last moment when an imitator is about to secure the mark for himself.
Doubtless cases would arise in which such publication of applications would be useful, but in the majority of instances lack of knowledge or opportunity together with the factor of distance would prevent any action before registration would be granted.
From the above it would appear that even more important than the publication of applications would be the improvement of the sections of the Trade-mark Law quoted
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