This Document is the Property of His Britannic Majesty's Government.
JAPAN.
CONFIDENTIAL.
[40431]
No. 1.
733
[November 26.]
$6
Rec SECTION 1
REG 2 JAN 09,
Sir,
Foreign Office to Birmingham Chamber of Commerce.
Foreign Office, November 26, 1908. IN reply to your letter of the 28th ultimo respecting the piracy of British trade-marks in Japan, I am directed by Secretary Sir E. Grey to inform you that the matter stands as follows:--
The Patent Bureau at Tôkiô are anxious to protect the rights of trade-mark owners, but the difficulties of doing so are greatly increased by the failure of foreigners to comply with the necessary conditions.
In many cases no registration has been made by foreigners, especially in the case of the old-established trade-marks, where the owners appear to think that any action to secure their rights is superfluous. Neglect to take this precaution allows other parties the opportunity of registering such trade-marks, and where the registration has remained unchallenged for three years the real owner is unable to assert his title. The officers of the Patent Bureau cannot prevent such cases as long as they have no record placed in their hands by the original proprietor of the mark.
Even where registration has been effected, very few foreigners add the words "registered trade-mark," or the Japanese characters representing Toroku Shohyo (registered trade-mark) in preparing their labels; hence, in case of an infringement, the infringer can escape criminal action by pleading lack of knowledge.
It does not appear to be generally known that while cases of infringement may be brought before the ordinary Courts if the plaintiff so desires, the best procedure is to bring them in the first place before the Patent Bureau Court, and after establishing the right and the fact of infringement, to bring a suit for damages either in the criminal or civil Courts according to the nature of the evidence elicited in the Patent Bureau inquiry. The advantage is that the ordinary Courts will be guided by the Patent Bureau decision as to the similarity or otherwise of the marks in dispute.
In order to prevent as far as may be possible the difficulties arising from the infringement of old-established trade-marks, it is understood that the Patent Bureau will be glad to receive, not necessarily for registration, particulars for their records of all trade-marks which are still in use and were in existence and use prior to the 1st July, 1899. The Bureau hope in this manner to minimise the possibility of infringement, but success in this respect requires that all who value their trade-marks should assist by supplying the necessary particulars.
The Patent Bureau publish a weekly list of registrations. As this publication is in Japanese, foreign owners of trade-marks are recommended to place their interests in the hands of some reliable agent who would search all new lists for possible infringements.
There are English patent agents at Tokio who would be able to furnish the information which the Birmingham Chamber of Commerce desire to obtain as to trade-marks registered by Japanese in various classes, and it is suggested that the Chamber should consider the desirability of combining with other bodies to appoint a common Agent at Tôkio to watch over the trade-marks' interests of their members in Japan.
I am, &c. (Signed) F. A. CAMPBELL.
[2031 cc-1]
Sheffield.
:
This Document is the Property of His Britannic Majesty's Government.j
JAPAN.
CONFIDENTIAL.
[40431]
No. 1.
733
[November 26.]
$6
Rec SECTION 1
REG 2 JAN 09,
Sir,
Foreign Office to Birmingham Chamber of Commerce.
Foreign Office, November 26, 1908. IN reply to your letter of the 28th ultimo respecting the piracy of British trade- marks in Japan, I am directed by Secretary Sir E. Grey to inform you that the matter stands as follows:--
The Patent Bureau at Tôkiô are anxious to protect the rights of trade-mark owners, but the difficulties of doing so are greatly increased by the failure of foreigners to comply with the necessary conditions.
In many cases no registration has been made by foreigners, especially in the case of the old-established trade-marks, where the owners appear to think that any action to secure their rights is superfluous. Neglect to take this precaution allows other parties the opportunity of registering such trade-marks, and where the registration has remained unchallenged for three years the real owner is unable to assert his title. The officers of the Patent Bureau cannot prevent such cases as long as they have no record placed in their hands by the original proprietor of the mark.
Even where registration has been effected, very few foreigners add the words "registered trade-mark," or the Japanese characters representing Toroku Shohyo (registered trade-mark) in preparing their labels; hence, in case of an infringement, the infringer can escape criminal action by pleading lack of knowledge.
It does not appear to be generally known that while cases of infringement may be brought before the ordinary Courts if the plaintiff so desires, the best procedure is to bring them in the first place before the Patent Burean Court, and after establishing the right and the fact of infringement, to bring a suit for damages either in the criminal or civil Courts according to the nature of the evidence elicited in the Patent Bureau inquiry. The advantage is that the ordinary Courts will be guided by the Patent Bureau decision as to the similarity or otherwise of the marks in dispute.
In order to prevent as far as may be possible the difficulties arising from the in- fringement of old-established trade-marks, it is understood that the Patent Bureau will be glad to receive, not necessarily for registration, particulars for their records of all trade-marks which are still in use and were in existence and use prior to the 1st July, 1899. The Bureau hope in this manner to minimise the possibility of infringement, but success in this respect requires that all who value their trade-marks should assist by supplying the necessary particulars.
The Patent Bureau publish a weekly list of registrations. As this publication is in Japanese, foreign owners of trade-marks are recommended to place their interests in the hands of some reliable agent who would search all new lists for possible infringements.
There are English patent agents at Tokio who would be able to furnish the in- formation which the Birmingham Chamber of Commerce desire to obtain as to trade- marks registered by Japanese in various classes, and it is suggested that the Chamber should consider the desirability of combining with other bodies to appoint a common Agent at Tôkio to watch over the trade-marks' interests of their members in Japan.
I am, &c. (Signed) F. A. CAMPBELL.
[2031 cc-1]
Sheffield.
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