CO129-350 - Public Offices - 1908 — Page 464

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Inclosure 3 in No. 1,

Draft Convention respecting Mutual Protection of Trade-marks in Corea,

THE Government of Japan and the Government of the United Kingdom of Great Britain and Ireland, for the purpose of concluding a Convention for the due protection of trade-marks in Corea, have named as their Plenipotentiaries, that is to say:

His Majesty the Emperor of Japan,

His Majesty the King of the United Kingdom of Great Britain and Ireland,

Who after having communicated to each other their respective full powers, found to be in good and due form, have agreed upon and concluded the following Articles :-

ARTICLE I.

The Government of the United Kingdom of Great Britain and Ireland accept as binding upon their subjects in Corea Regulations respecting trade-marks adopted and put into force in Corea, and they engage that Courts of Japan in Corea shall have full and exclusive jurisdiction, both civil and criminal, over British subjects in the matters relating to the infringement or misuse of any trade-mark entitled to protection in virtue of such Regulations.

ARTICLE II,

British subjects shall enjoy in all parts of Cores the same protection as Japanese and Corean subjects in regard to trade-marks, upon fulfilment of the formalities prescribed by the Regulations roferred to in the preceding Article.

ARTICLE III.

Corean subjects shall enjoy in the United Kingdom of Great Britain and Ireland the same protection as native subjects in regard to trade-marks, upon fulfilment of the formalities prescribed by the laws of the United Kingdom.

ARTICLE IV.

The present Convention shall be ratified, and the ratifications thereof shall be exchanged at Tokió as soon as possible. It shall come into operation at the expiration of ten days from the date of the exchange of the ratifications, and shall remain in force until the expiration of six months from the day on which either party may give notice of its intention to terminate the same.

In witness whereof the above-mentioned Plenipotentiaries have signed the present Convention and affixed thereto their seals.

Done in duplicate at Tôkiô, in the Japanese and the English languages, this

corresponding to the

Inclosure 4 in No. 1.

Memorandum by Mr. Crowe respecting the proposed Convention between Great Britain and Japan as regards Mutual Protection of Trade-marks in China.

IT would appear that under Japanese law no protection is afforded to any save registered marks, except perhaps by Article 2, section 5, of the Trade-marks" Law, which says that a mark which is the same as, or resembles, a trade-mark used by other persons before the operation of this law (ie., 1st July, 1899) may not be registered,

But even this has in some cases been interpreted as meaning marks registered in the Patent Bureau before 1899.*

It is therefore clear that the Japanese law being what it is the Japanese Government could not bind itself to protect in China any marks save those registered in Japan.

On the other hand, as "The China and Corea Amendment Order in Council, 1907," relates not only to the Patents, Designs, and Trade-marks Acts, but also to "The Merchandize Marks Act, 1887," and as Japan being a member of the Industrial Property Union, au Order in Council has been issued applying provisions of section 103 of The Patents, Designs, and Trade-marks Act, 1883," to her, all trade-marks legally protected in Japan have the benefit of the protection afforded by the Merchandize Marks Act. For the purpose of this Act the expression "trade-mark" means a trade- mark registered in the register of trade-marks kept under "The Patents, Designs, and Trade-marks Act, 1883," and includes any trade-mark which, either with or without registration, is protected by law in any foreign State to which the provisions of the 103rd section of "The Patents, Designs, and Trade-marks Act, 1883," are under Order in Council for the time being applicable.

This being so it might be held that " registered in the appropriate office" did not inean more than "registered in the register of trade-marks kept under The Patents, Designs, and Trade-marks Act, 1883,"" and therefore marks registered in Japan would be entitled to protection against infringement by British subjects in China, whether those marks have been previously registered in the United Kingdom or not, but the converse would obviously not hold good, ie., British marks would not be entitled to protection unless registered in Japan.

Premising, therefore, that the above possibility should prove correct, one can see the necessity for the second paragraph of Article 1.

*

It is said that the number of unregistered "chops" in use in China is almost as great as that of registered marks. The proviso contained in paragraph 2 of Article 1 would safeguard the rights of proprietors of such open 'chops" who may either have neglected, or been unable, to obtain registration in the United Kingdom,§ and have not done so in Japan against Japanese who might have registered in Japan, and who, as explained above, might claim protection under the Merchandize Marks Act. But it would have to be understood that the second paragraph of Article 1 is to be interpreted as referring solely to those persons who can conclusively establish the right of user in China for three or more years, prior to the operation of this Convention, for marks which have not been registered in Japan by British owners and vice versa.

the

If it should be held that the Merchandize Marks Act does not apply, and that for purposes of this Convention registration means actual registration in the United Kingdom, then before a Japanese could stop a British owner of an open chop" from using it, he would have to register it both in Japan and the United Kingdom, and as the latter would presumably be impossible, nothing would be gained by this second paragraph of Article 1, seeing that even without it British owners of open marks could not be stopped from using them.

On the other hand, the clause becomes positively objectionable if it is to be inter- preted in such a way that by it Japanese who have during the three years prior to the operation of the Convention been "actually using (or, in other words, fraudulently imitating British) trade-marks in China," should obtain legal sanction for their pernicious practices.

The omission of any provisions which would apply to a case like that of Sir Elkanan Armitage's "Crocodile" mark seems a pity.

Of course by the second paragraph of Article 1, he would still be allowed to con- tinue the use of his mark, but that is hardly the point. The Japanese who has fraudulently registered the mark in Japan acquires an equal right to the use of it in China, as Sir E. Armitage is unable to take steps in Japan, owing to the lapse of the three years stipulated in Article 10 of the Japanese Trade-marks Law, Under these circumstances, the only way to circumvent such pirates would be the inclusion of a paragraph worded in some such way :----

"It is, moreover, understood that in cases where subjects of each of the High Con-

* N.B.-Mr. Hisamoto, in his communication to the Yokohama Foreign Board of Trade, seems to interpret this in a different way.

† Vide Board of Trade despatch to Foreign Office, March 23, 1905 (p. 79 of "China Trade" print, January-June 1905).

File p. 35 of Chinn Trade" print, January-June 1904.

$ P. 52 of China Trade" print, June 1905.

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