graphed to the Japanese ministers to each of the treaty powers, except to the minister to the United States, and a few other countries, to inform the respective Governments to which they are accredited that on that date Japan had put in force the revised Civil Code and the Commercial Code, and that on July 17, 1899, one year from that date, all the revised treaties would be in force, which notice, by stipulations in the treaties with those countries, was required to be given by Japan one year in advance of their going into operation. Notice of the operation of the codes, as well as the notice of the new treaties going into effect one year from the 16th instant, became necessary, because in the treaty with Great Britain it is stipulated that the codes shall be in operation twelve months prior to her treaty with Japan's going into effect. The United States and some other powers having no stipulations in their treaties with Japan that one year's notice shall be given in advance of their going into effect, for that reason, I am informed, no notice was given by the Japanese Government to them. Though the new treaty of Japan with Austria has not yet been ratified, because of the disturbed condition of the Austrian Government, yet as that treaty requires only one month's time after ratification to become operative, and the Austrian Government has assented to the fixing of the time for the operation of the new treaties to begin, with the assurance to the Japanese Government that not later than January 1, 1899, ratification of the treaty by that Government will be made, Japan felt justified in making the announcement so as to insure the operation of all the revised treaties from July 17, 1899. I am further informed that the present treaty with Austria is regarded as of little value to Japan; that it is probable that in event, perchance, Austria should fail to ratify the new treaty in time, Japan would denounce her old treaty with her rather than fail to secure the benefits she would derive from the operation of her revised treaties with the other powers at the time fixed upon for their operation. I have, etc., A. E. BUCK. Mr. Day to Mr. Buck. DEPARTMENT OF STATE, SIR: I have to acknowledge the receipt of your dispatch, No. 166, of the 15th ultimo, transmitting a memorial of American citizens at Kobe, addressed to the President; a copy of a joint letter to the President from the chairman of the American Memorial Committee and the secretary of the International Memorial Committee of Kobe; a copy of a report made to the chairman of the International Committee by the medical director of the International Hospital of Kobe relative to a visit of inspection made by him to the Hiogo Prefectural Prison; together with a copy of a joint letter to you from the president and secretary of the committee above named, accompanied by a copy of a letter of transmittal from Samuel S. Lyon, our consul at Kobe. These papers relate to matters of complaint touching land tenure in Japan; the existence of foreign newspapers under the revised treaty, soon to go into effect; the conduct of the legal authorities under the code of criminal procedure as to the bail of prisoners; and the condidition of Japanese prisons and the hardship and distress that will be incident to foreigners confined therein; and ask that influence be brought to bear by this Government to obtain such changes in the revised treaty as will correct the evils existing and those to be apprehended after the treaty goes into operation. The papers transmitted have been carefully read, as also your observations thereon, which the Department approves, and which form a complete reply to the memorialists. The last paragraph of your dispatch covers the matter pretty thoroughly, which may be summed up in the words "Give the treaty a trial." Respectfully, yours, WILLIAM R. DAY. COUNTERFEITING OF TRADE-MARK LABELS. Mr. Day to Mr. Buck. No. 146.j DEPARTMENT OF STATE, SIR: I inclose copy of a letter addressed to me by Mr. Francis Forbes, of New York, representing the New York Condensed Milk Company, which, it is alleged, has suffered for a number of years past through the persistent counterfeiting of its labels in Japan, and which has been unable to obtain a remedy through the registration of its legitimate trade-mark on the ground that it was already in use by others than the applicant. Mr. Dun's No. 478 of April 23, 1897, transmitted hither copies of the regulations respecting patents, trade-marks, and designs of Japan, as translated by the British legation in Tokyo. The provision on which the Japanese refusal to register the trade-mark of the New York Condensed Milk Company appears to rest would seem to be found in the second article of the trade-marks regulations, reading thus: ART. II. The following can not be registered as trade-marks: * 3. Such as are identical with or similar to trade-marks already registered or trademarks used by others before the application for registration was made, and which are intended to be applied to identical goods. To construe this provision literally with respect to the application of the legitimate proprietors of a well-known trade-mark, designating an article in world-wide use for many years, in such manner as to favor those who have notoriously counterfeited that mark before the real owners made application to secure their rights, would hardly seem to accord with the purpose of the provision quoted. Its object would seem to be to assure to the bona fide possessors and users of a trade-mark already in use, although not registered in Japan, freedom to use the same against the attempt of any subsequent party to appropriate that mark, and so deprive the original owners of their equitable right thereto. Recognition of the moral right of the original inventor and user of the trademark is the essential thing aimed at, not deprivation of his moral rights through the virtual recognition of a subsequent counterfeit. Even were the particular product now in question an article of Japanese manufacture, yielding a direct profit to the natives of the country, it is hardly to be conjectured that the Japanese Government would regard it as a moral obligation to protect the native spurious production at the expense of the genuine imported article. But when, as in the present instance, the counterfeit is of foreign origin, the cans being, it is alleged, of German make, and the contents the unsalable and inferior production of German and Swiss factories, not only does any consideration of pecuniary profit to Japanese industries become illusory and indefensible, but, on the other hand, considerations of public health may suggest the unwisdom of permitting a virtually privileged trade in an unwholesome food product under the color and reputation of an old and honorably established name. The matter is commended to you for careful consideration and for conference with the proper Japanese authorities, with a view to ascertaining whether it may not be practicable to construe and apply this article in accordance with its obvious intent, and not, as would appear to be the case in the present instance, to the prejudice of the original and bona fide owners of a long-established trade-mark. The Department will await your report on the subject with interest. Respectfully, yours, WILLIAM R. DAY. [Inclosure in No. 146.] Mr. Forbes to Mr. Day. MUTUAL LIFE BUILDING, 34 NASSAU STREET, New York, August 20, 1898. DEAR SIR: The following facts seem to be sufficient to authorize me in bringing them to your attention: The New York Condensed Milk Company, one of the oldest and largest of the manufacturers of condensed milk in the United States, shipped condensed milk to Japan for many years prior to any other manufac turer of condensed milk. Such exportations to Japan were made in almost the same form as at present. For the past eight or nine years their labels have been persistently counterfeited, but until the treaty with the United States it was impossible to either register their marks or prosecute infringers. After the treaty an attempt was made by the company to register their mark in Japan. The application was refused on the ground that the trade-mark was already in use by others than the applicants. The use by others was simply the use of lithographs of the Eagle Brand, and therefore an illegal use, and the use which it was desired to stop. The ruling is substantially that, if the marks of a citizen of the United States are counterfeited before registration, such fraudulent use is such a use under the Japanese law as to prevent registration. Such a ruling places all foreign marks in the power of Japanese infringers. The New York Condensed Milk Company do not understand that they have any further right of appeal from this decision; and they further feel themselves justified, because of the grave character of the posi tion taken by the Japanese patent office, viz, in calling an infringing use of a trade-mark such as will prevent registration under the law, in making the request that you present this matter to the Japanese Government for a ruling thereon, which ruling will affect not only this particular case of the New York Condensed Milk Company, but also all other cases of applications by citizens of the United States. The letter of an attorney employed in Japan to make the registration is inclosed. This letter was forwarded to me while at Brussels in December, 1897. I personally called the attention of the Japanese delegates who were attending the Convention for the Protection of Industrial Property to the matter. They gave me no hope that the registration would be allowed by the Japanese patent office. FR 98- -30 Prior to the conclusion of the trade-mark treaty with Japan your Department called the attention of the company to the Japanese infringement complained of. For your convenience I inclose a copy of the letter of Mr. W. W. Rockhill, Third Assistant Secretary, dated August 8, 1894, and a copy of the letter of Mr. N. W. McIvor, consulgeneral, Kanagawa, Japan, dated July 9, 1894, inclosed in the letter of Mr. Rockhill, and a copy of the reply of the New York Condensed Milk Company, dated August 13, 1894. A later letter has been received by the company from Edward Bedloe, United States consul at Canton, China, a copy of which is also inclosed. Is it not proper for me to ask you to send such instructions to the representatives of the United States as shall cause the Japanese patent office to make the desired registration, and also shall bring about the protection of the mark in China, where there is as yet no trade-mark law? A copy of the genuine label is inclosed. Yours, respectfully, FRANCIS FORBES. [Subinclosure No. 1.] DEPARTMENT OF STATE, Washington, August 8, 1894. NEW YORK CONDENSED MILK COMPANY, 71 Hudson Street, New York. GENTLEMEN: I inclose herewith for your information a copy of a dispatch from the consul-general of the United States at Kanagawa reporting the manufacture and sale in Japan of an imitation of the "Gail Borden Brand" of condensed milk prepared by your company. He incloses a sample of the label used and two cans with their labels. These inclosures are transmitted to you herewith, the cans being sent under separate cover. I am, etc., W. W. ROCKHILL, Third Assistant Secretary. [Subinclosure No. 2.] Mr. McIvor to Mr. Uhl. No. 41.] CONSULATE-GENERAL OF THE UNITED STATES, SIR: I have honor to report to the Department the manufacture and sale in Japan of what seems to be an imitation of the "Gail Borden Eagle Brand" condensed milk, prepared by the New York Condensed Milk Company, 71 Hudson street, New York. In conversation with two or three gentlemen the matter was referred to and I secured a can, supposed to be spurious, which I inclose herewith, marked "Inclosure 1." I then secured a can, which I am assured was purchased direct and is genuine, marked "Inclosure 2." I submitted the labels to a practical printer, who reports to me that the label on inclosure 2 is printed, while that on inclosure 1 is lithographed or engraved. I have also secured from Tokyo a third label, marked "Inclosure 3," which seems to be an engraved imitation. I have not had an analysis made of the contents of the spurious can. Owing to the scarcity of natural milk in Japan the trade in canned or condensed milk is quite heavy, and the Eagle Brand has probably the best reputation, which fact has caused this brand to be imitated more than any other. I am informed by a former agent of Messrs S. A. Barnes & Co., publishers, of New York, that while foreign copyrights and patents are not protected under the laws of Japan, a general order has been made that in the case of an imitation the brand may be used, but the name can not be reproduced, in support of which statement an original communication from the Japanese home office is presented, a copy of which I inclose, marked "Inclosure 4." Basing my judgment on the communication of the State Department to Messrs. S. A. Barnes & Co., in October, 1888, and on various letters submitted, I concluded that the order prohibiting the use of the name was not an order of general application, but was made in the particular case on the ground that the reprint of Messrs. Barnes & Co's. books were issued from a Government printing office, and had no application beyond the correction of the infringement complained of; but Mr. F. Schroeder, the agent above referred to, informs me that the order has been given general application. I make this report because I understand that the New York Condensed Milk Company has no agent here to represent it, and thinking that the Department, if it has been decided that it has the right to call the attention of the Japanese Government to the use of the name of one of our manufacturers, might wish to inform the New York Condensed Milk Company of the fraudulent use of its name, that the company may cause such an investigation to be made by its agents as will point out the offenders. I have, etc., N. W. MCIVOR, Consul-General. [Subinclosure No. 3.] HOD. W. W. ROCKHILL, NEW YORK, August 13, 1894. Third Assistant Secretary of State, Washington, D. C. DEAR SIR: We are in receipt of your favor of the 8th instant, with documents inclosed as stated, and the package referred to is also at hand. Permit us to thank you and the Department for so kindly supplying us with the information above acknowledged. Regarding the inclosures, would state that the inferences drawn by the honorable consul-general at Kanagawa are correct. Inclosure No. 1 is a very clever lithographic reprint of our regular label registered in the United States Patent Office, and that not only that, but the can itself is a very careful reproduction of our can, and we believe emanates from Germany or England. The contents of the can, however, consist of a very poor and dangerous quality of condensed milk, being rancid and unfit for use and apparently made from skimmed milk. Inclosure No. 2 represents original and genuine can and label, containing the usual quality of condensed milk put up by us, same being in a perfect state of preservation. Inclosure No. 3 represents an entirely different counterfeit label than the one indicated as No. 1, and we think is the work of natives, and is evidently printed from type. Bearing on this subject, we would state that we have experienced a great deal of trouble from the counterfeiting of our labels both in China and Japan, but since the proclamation issued by the magistrates of Canton in 1888, through the efforts of the Hon. Charles A. Seymour, we have been less troubled in the former country. On the other hand, greater activity seems to be now displayed in Japan, and while we think it might prove somewhat advantageous to take steps there toward inducing the Government to prohibit the reproduction of the names on our labels it would not eradicate the practice of putting up dangerous and inferior goods. This question of quality is one that vitally affects the people of Japan. Thousands of infants in that country are annually raised on our product, and even the imperial household, we are reliably informed by a native merchant of Yokohama, is dependent upon this substitute for mother's milk. If the proper authorities of Japan could be convinced that the lives of their people were menaced by a toleration of spurious imitations of our goods, they might see fit to take up the matter upon a different standpoint than one of mere commercial justice. We hand you herewith a translation of proclamation referred to in the early part of this letter as issued in Canton. We might add, however, with reference to this latter city, that since the new magistrates have been in power we have not been successful in obtaining a further publication of this proclamation. Considering the foregoing, we think that the matter of our protection with the people of Japan rests upon a somewhat different footing than it would if the subject involved an article that did not vitally concern the health and happiness of the people themselves. We take pleasure in inclosing you a duplicate copy of this letter and also of the proclamation, thinking that possibly you might prefer to take this matter up direct with the consul-general at Kanagawa. If, however, such is not the case, we shall be glad to do so ourselves if you will kindly advise us of your preference. In closing this letter allow us again to thank you, and the consul-general also, for so kindly advising us on this matter. Very truly, yours, NEW YORK CONDENSED MILK COMPANY. In all cases presented for an examination we have found that the goods labeled with the counterfeits are always the unsalable product of unknown European manufacturers and the contents of cans of doubtful constituents, rancid, and dangerous to use. |