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to cases where a trade-mark which falls under sub-heading 5 of Article 2 has been registered and three years have elapsed since its registration.
I would venture to point out that neither your Excellency nor the Department concerned seem to have taken into consideration the applicability of Article 2, sub-heading 3, of the Trade-mark Law to this case. In that sub-heading it is clearly stipulated that those marks cannot be registered in regard to which the apprehension exists that they will deceive people, while in Article 10 it is provided that if a registered trade-mark infringes Article 2 its registration shall be treated as invalid, the proviso with regard to the three-year period referring only to sub-headings 4 and 5 of Article 2 and Article 8, and not to sub-heading 3 of Article 2.
From this it would appear that according to Japanese Law, should any mark in regard to which the apprehension exists that it will deceive people be registered by an oversight, its registration shall be treated as invalid.
Now I venture to submit that Konishi Hambei's "Crocodile" trade-mark is clearly one that will deceive people. There can be no question, and it is admitted in your Excellency's despatch of the 23rd July that another person had previously obtained registration abroad of a similar trade-mark. This trade-mark was a very striking and uncommon one, namely a fishing crocodile, and it is quite beyond the bounds of possibility that Konishi Hambei should have thought of an identical mark for a similar class of goods without having seen the original mark, nor does it even seem to have been seriously suggested that he did not deliberately imitate Sir E. Armitage's "Crocodile." His secondary purpose in seeking to obtain registration of this mark may have been to blackmail the real owner of it, but his primary purpose was to sell his own goods to people who, seeing the "Crocodile" mark, would believe that they were purchasing the product with which in their minds the original Fishing Crocodile was associated.
Obviously therefore the mark was one which was calculated to deceive people and should not have been registered, but having once been registered, the registration of it should undoubtedly be treated as invalid in accordance with Article 10.
I have consequently the honour to request that your Excellency will be so good as to once more cause investigations to be made with a view to the removal from the Trade-mark Register of this offending mark.
3
Article 2 and Article 10 of the Law of Trade-marks. I am now in receipt of a reply from that Minister, according to which the provisions of the last clause of sub-heading 3 of Article 2 of the Japanese Law of Trade-marks are intended to prevent the registration of a mark which, having embodied in it a constituting portion which deceives people, causes consumers generally to fall into a grave mistake, while the provisions of sub-heading 5 of that Article are intended to prevent the registration of a trade-mark resembling a trade-mark used by another person from a time previous to the enforcement of the Law of Trade-marks, and solely and entirely to protect the individual interests of trade-mark proprietors. While, therefore, in the former case there is absolutely no reason why, with the lapse of a definite period, the reasons for the invalidity of a fraudulent trade-mark should be annulled, in the latter case, on the contrary, if the original user of the trade-mark neglects for so long a period as three years to take steps to protect his own rights and interests, it is unavoidable that he should finally be unable to contend that the fraudulent trade-mark is invalid. Accordingly, although it is clearly impossible to at once declare a trade-mark to come under the provisions of the last clause of sub-heading 3 merely on the ground that it resembles a trade-mark used prior to the enforcement of the Japanese Law of Trade-marks, yet it may frequently happen that, in the case of a single trade-mark, there may exist two reasons as set forth above for its invalidity, and with this class of trade-marks it may be possible, at the lapse of however many years after their registration, to contend their invalidity on the ground that they deceive people. In the case of the "Crocodile" trade-mark now in question, it is clear at a glance that it comes under sub-heading 5, and it is quite possible that, according to the actual manner of its use, it may also come under sub-heading 3 of Article 2 of the Law of Trade-marks in that apprehension exists that it may deceive people. This fact, however, cannot be definitely ascertained until a trial has been held.
I accordingly beg that your Excellency will, after noting the above, take the necessary steps in the matter.
I take, &c. (Signed) Viscount TERAUCHI MASATAKE, Minister for Foreign Affairs ad interim.
I take, &c. (Signed) CLAUDE M. MACDONALD.
Inclosure 2 in No. 1.
General Viscount Terauchi to Sir C. MacDonald.
(Translation.) Sir,
July 17, 1908. I HAVE the honour to acknowledge the receipt of your Excellency's note of the 24th March last, with reference to the imitation and registration by Konishi Hambei, of Osaka, of the "Crocodile" trade-mark of Sir Elkanah Armitage and Sons, a British firm. In this note your Excellency points out that the interpretation of the Japanese Government, which holds that it is now impossible to take any steps whatever under the existing Law in view of the fact that the period of three years stipulated by the proviso to Article 10 of the Japanese Law of Trade-marks has already elapsed, confines the scope of the investigation to the provisions of sub-heading 5 of Article 2 and Article 10 of the Law of Trade-marks, and that, therefore, the investigations cannot but be said to be incompletely made. Your Excellency adds that marks under sub-heading 3 of Article 2 of the Law, in regard to which apprehension exists that they will deceive people, do not come within the stipulations of the proviso to Article 10, and become final on a period of three years elapsing since registration. Your Excellency further states that it is clear and beyond question that the "Crocodile" trade-mark is one which will deceive people; that, therefore, it does not come within the circumstances contemplated by the above-mentioned proviso, and that its registration should accordingly be treated as invalid, however many years have since elapsed. And your Excellency expresses the hope, in view of the foregoing facts, that the Japanese Government will reconsider the case.
Count Hayashi, my predecessor, at once communicated the substance of your Excellency's note to the Minister of Agriculture and Commerce, and at the same time inquired as to the interpretation of the provisions of the various sub-headings of
539
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to cases where a trade-mark which falls under sub-heading 5 of Article 2 has been registered and three years have elapsed since its registration.
I would venture to point out that neither your Excellency nor the Department concerned seem to have taken into consideration the applicability of Article 2, sub- heading 3, of the Trade-mark Law to this case. In that sub-heading it is clearly stipulated that those marks cannot be registered in regard to which the apprehension exists that they will deceive people, while in Article 10 it is provided that if a registered trade-mark infringe Article 2 its registration shall be treated as invalid, the proviso with regard to the three-year period referring cnly to sub-headings 4 and 5 of Article 2 and Article 8, and not to sub-heading 3 of Article 2.
trade-mark
From this it would appear that according to Japanese Law, should any in regard to which the apprehension exists that it will deceive people be registered by an oversight, its registration shall be treated as invalid.
Now I venture to submit that Konishi Hambei's "Crocodile" trade-mark is clearly one that will deceive people. There can be no question, and it is admitted in your Excellency's despatch of the 23rd July that another person had previously obtained registration abroad of a similar trade-mark. This trade-mark was a very striking and uncommon one, namely a fishing crocodile, and it is quite beyond the bounds of possibility that Konishi Hambei should have thought of an identical mark for a similar class of goods without having seen the original mark, nor does it even seem to have been seriously suggested that he did not deliberately imitate Sir E. Armitage's "Crocodile." His secondary purpose in seeking to obtain registration of this mark may have been to blackmail the real owner of it, but his primary purpose was to sell his own goods to people who, seeing the "Crocodile" mark, would believe that they were purchasing the product with which in their minds the original Fishing Crocodile was associated,
"
Obviously therefore the mark was one which was calculated to deceive people and should not have been registered, but having once been registered, the registration of it should undoubtedly be treated as invalid in accordance with Article 10.
I have consequently the honour to request that your Excellency will be so good as to once more cause investigations to be made with a view to the removal from the Trade-mark Register of this offending mark.
3
Article 2 and Article 10 of the Law of Trade-marks. I am now in receipt of a reply from that Minister, according to which the provisions of the last clause of sub-heading 3 of Article 2 of the Japanese Law of Trade-marks are intended to prevent the registration of a mark which, having embodied in it a constituting portion which deceives people, causes consumers generally to fall into a grave mistake, while the provisions of sub-heading 5 of that Article are intended to prevent the registration of a trade-mark resembling a trade-mark used by another person from a time previous to the enforcement of the Law of Trade-marks, and solely and entirely to protect the individual interests of trade-mark proprietors. While, therefore, in the former case there is absolutely no reason why, with the lapse of a definite period, the reasons for the invalidity of a fraudulent trade-mark should be annulled, in the latter case, on the contrary, if the original user of the trade-mark neglects for so long a period as three years to take steps to protect his own rights and interests, it is unavoidable that he should finally be unable to contend that the fraudulent trade-mark is invalid. Accordingly, although it is clearly impossible to at once declare a trade-mark to come under the provisions of the last clause of sub-heading 3 merely on the ground that it resembles à trade-mark used prior to the enforcement of the Japanese Law of Trade- marks, yet it may frequently happen that, in the case of a single trade-mark, there may exist two reasons as set forth above for its invalidity, and with this class of trade- marks it may be possible, at the lapse of however many years after their registration, to contend their invalidity on the ground that they deceive people. In the case of the "Crocodile " trade-mark now in question, it is clear at a glance that it comes under sub-heading 5, and it is quite possible that, according to the actual manner of its use, it may also come under sub-heading 3 of Article 2 of the Law of Trade-marks in that apprehension exists that it may deceive people. This fact, however, cannot be definitely ascertained until a trial has been held.
I accordingly beg that your Excellency will, after noting the above, take the necessary steps in the matter.
I take, &c. (Signed) Viscount TERAUCHII MASATAKE,
Minister for Foreign Affairs ad interim.
I take, &c.
(Signed)
CLAUDE M. MACDONALD.
Inclosure 2 in No. 1.
General Viscount Terauchi to Sir C. MacDonald.
(Translation.) Sir,
July 17, 1908. I HAVE the honour to acknowledge the receipt of your Excellency's note of the 24th March last, with reference to the imitation and registration by Konishi Hambei, of Osaka, of the "Crocodile" trade-mark of Sir Elkanah Armitage and Sons, a British firm. In this note your Excellency points out that the interpretation of the Japanese Government, which holds that it is now impossible to take any steps whatever under the existing Law in view of the fact that the period of three years stipulated by the proviso to Article 10 of the Japanese Law of Trade-marks has already elapsed, confines the scope of the investigation to the provisions of sub-heading ă of Article 2 and Article 10 of the Law of Trade-marks, and that, therefore, the investigations cannot but be said to be incompletely made. Your Excellency adds that marks under sub-heading 3 of Article 2 of the Law, in regard to which apprehension exists that they will deceive people, do not come within the stipulations of the proviso to Article 10, and become final on a period of three years elapsing since registration. Your Excellency further states that it is clear and beyond question that the "Crocodile" trade-mark is one which will deceive people; that, therefore, it does not come within the circumstances contemplated by the above-mentioned proviso, and that its registration should accordingly be treated as invalid, however many years have since elapsed. And your Excellency expresses the hope, in view of the foregoing facts, that the Japanese Government will reconsider the case.
Count Hayashi, my predecessor, at once communicated the substance of your Excellency's note to the Minister of Agriculture and Commerce, and at the same time inquired as to the interpretation of the provisions of the various sub-headings of
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