Central America.

Value and Importance of Trade-Marks.

The following communication, appearing in the Daily Consular and Trade Reports, Oct. 4, 1913, is well worth the attention of those seeking Spanish-American trade, containing, as it does, facts, unfortunately too often disregarded in dealing with tropical, oriental, or, in fact, any foreign-speaking people:

VALUE OF TRADE-MARKS IN CENTRAL AMERICA.

(Commercial Agent Garrard Harris.)

"It is not generally known, nor is the fact appreciated as it should be by American exporters, that in lower Mexico and in Central America the trademark plays a very important part; in truth, a leading part in the sale of foreign manufactures. The trade-mark has great value in the United States, of course, but its significance is perhaps greater in those countries.

"In the United States the manufacturer may deal with a retailer who has a similar line of goods on his shelves, obtained probably at a considerably lower price, and who, in many instances, takes the trouble to introduce the opposition line or argue the intending customer into buying the substitute, having in view the increased profit made by the sale of the latter.

Customers Ask for Goods by Trade-Names.

"In Central America this is not so generally the case. It is a slow and tedious process to get a line of goods introduced and in general demand. The retailer is not keen to undertake new ventures and would much rather carry the goods in common demand, even if the profit is smaller, for there is not the same danger of getting stuck as there is with an unknown brand. (Most goods are inquired for by their trade-mark names; and if the name is short, sharp, impressive, and one a Spanish-speaking people can easily remember, so much the better. They do remember it, and they call for the article by the name that has become associated with it.)

"It is not difficult to ascertain the value of these trade-marks and trade-names in the stores of Central America and southern Mexico. Any storekeeper can give the information, and an investigator can obtain abundant evidence for himself by spending several hours in a store listening to the inquiries of customers. Invariably they ask for an article by the trade-name or the trade-mark by which it is generally known; and if the trade-mark is something they can see and describe, like a star, a crescent, the sun, or a pine tree, or any such object, so much the better.

"When an article bearing a catchy or easily remembered name or trademark is once introduced, it is fairly certain to have a steady and growing demand if it has sufficient merit to win the approval of users. Trade is helped to some extent by advertising, of course, but a great majority of the customers in these countries are Indians and natives who can not read or write, but who discuss the merits and demerits of an article they know with their friends and neighbors. Such customers are not likely to change from an article which pleases them and which they already know. They remember the name of the one that fills the bill and do not care to learn of any other so long as the former continues satisfactory.

Stores Known by Trade-Names.

"This characteristic of remembering names is also common to the more educated people. Business men, knowing this, make use of the trade-mark idea, and many stores have names such as La Perla, La Estrella, La Fama, or La Reforma. The people know the stores by these names rather than the names of the owners, and the stores are advertised by trade-names, which become valuable in themselves as associated with the business.

"American manufacturers doing business in these countries and wishing to increase their trade would do well to study this matter of trade-marks. They should arrange for marks and names easily remembered by the Spanish-speaking trade, and if desirous of establishing a permanent business, they should have Spanish labels printed for the goods when required. Manufacturers who appreciate this fact already are well established in certain lines, and have a buying clientele that will not desert them on the first advertising campaign conducted by a competitor, for Central Americans are certain as to what they like and are very conservative about making changes."

Japan.

Trade-Marks. Decision Under New Law. Caswell & Co. v. Kobayashi Kiju.

From The Japan Chronicle, July 16, Aug. 7 and 9, and Sept. 3, we learn of an important decision in the case of Caswell & Co. v. Kobayashi Kiju-important in that it departs from the heretofore accepted interpretation in such matters, and, furthermore, in that the rights of numberless marks, registered under the old law in Japan, are in jeopardy, unless the judgment is reversed on the appeal, which, we are advised, has been taken.

The case was brought in the Osaka Chiho Saibansho-a Court of first instance-in Tokyo, on July 11, on the question of the infringement of the wellknown mark of Caswell & Co. by a similar mark-designed manifestly to deceive the public of the defendant. The Caswell mark was registered under the old law through Mr. de Havilland, Patent Agent of Tokyo, who has continued his representation of Caswell & Co. in Japan, and who, for them, brought this action. As to the facts of infringement no denial was attempted, but, the technical question was raised of the efficiency of the power of attorney granted to Mr. de Havilland under the old law. Mr. Nagashima appeared for the plaintiffs and Mr. Itani for the defendant, Mr. Okochi, the Public Prosecutor, being in charge. Judgment—in effect, that the Japanese agent for the foreign owner of a Japanese trademark can act only under a power of attorney under the new law-was delivered Aug. 8, and the defendant was acquitted on both the civil and criminal charges on which he was tried.

The text of the decision, as it appears in The Japan Chronicle, follows: "The Court does not accept the case for the prosecution. The articles put into Court shall be returned to those from whom they have been received.

REASONS.

"The general lines of the case for the prosecution are that the accused sold 25,625 bottles of shoe-cream between May, 1912, and April 15th, 1913, bearing a trade-mark which he knew to be an imitation of the registered trade-mark of a similar preparation made by Messrs. Caswell & Co. In other words, the accused was alleged to have violated Clause 1 of Art. 23 of the Trade-Mark Law. In

that event, according to Clause 2 of the same (?) Art. [? Art. 18], the Court cannot take notice of his conduct unless he is prosecuted by the sufferers (higaisha), the British manufacturers.

"Considering the point whether or not the accused has been prosecuted by the real sufferers, the Court has, first of all, found that the mark of the British manufacturers was registered in Japan under number 38,306 on October 26th, 1909, before the present Trade-Mark Law came into force. Now, according to (a) the letter requesting steps for the prosecution of defendant, (b) the certificate given by the Patent Bureau under date of February 24th, 1913, and (c) the copy of the registration in the Bureau produced by the Public Procurator, it is certain that Mr. W. A. de Havilland, who instituted this prosecution on behalf of the British manufacturers, represented them at the time of the registration. Furthermore, according to the Clause 3 of the Supplementary Provisions to the present TradeMark Law, and Art. 99 of the Patent Law, such a trade-mark as that in question which was registered under the old Law, shall be regarded in precisely the same way as those which have been registered under the new Law, though its privileges should be decided only by the present Law. It is, therefore, clear that any prosecution for infringement of the trade-mark should be instituted in the way provided by that Law.

"Now, according to Art. 21 of the new Trade-Mark Law, and Arts. 12 and 13 of the Patent Law, if the owner of a trade-mark registered in Japan be not resident in Japan, he cannot proceed against the third party for an infringement of the said mark, unless he has a registered representative in this country. In the present case, there is not sufficient evidence to show that the British manufacturers have registered Mr. de Havilland as their representative for the mark in Japan under the new Trade-Mark Law. Besides, counsel for the accused has refused to recognize Mr. de Havilland as the properly registered representative of the owners of the trade-mark. It is, therefore, impossible for the Court to regard him as the person legally entitled to institute proceedings, even if he was the properly accredited representative of the British manufacturers at the time of registration, and was asked by them to institute the case.

"Such being the case, the prosecution which was instituted in the Public Procurators' Office of the Tokyo Chiho Saibansho, on February 28th, 1913, by Mr. Nagashima Washitaro, legal representative of Mr. de Havilland, cannot be recognized as a case instituted by the actual sufferers from the alleged infringement, so the Court has no alternative but to recognize that the British manufacturersthat is, the real sufferers have not instituted the prosecution. In other words, the letter requesting a prosecution for infringement lacks the important essential, in connection with such offences, that prosecutions shall be officially taken up only upon information being given by the injured party. Consequently, the contention of counsel for the accused, that the request for prosecution should not be accepted, is reasonable, hence the judgment above mentioned, in accordance with Art. 202 of the Criminal Procedure Code."

The judgment is signed by Presiding Judge Maezawa Kojiro, Judge Kubota Miei, and Judge Kadonami Miki.

Germany.

Patents. Proposed New Law.

A bill relating to a new patent law has been introduced in Parliament

(Reichstag) by the Imperial Department of the Interior, and it is expected that the same will be passed shortly by this legislative body.

We desire to call the attention of our subscribers to the more important provisions thereof. This bill, if passed, will replace the present law of April 7, 1891. The present law gave rise to many complaints and for this reason the Department of the Interior was authorized, as early as the year 1906, to draft a new law. After an exhaustive examination of the matter and many hearings at which interested parties, both juridicial and industrial, were heard, it was determined that a mere amendment of the present law would be insufficient and it was resolved to draft a bill in substitution for the present law. The essential features of this proposed new law are:

1. The recognition of the right of the actual inventor to patent protection, as well as that of the connection of his name with the finished patented product of his creation (sections 3, 4, 5, 6 and 9).

2. Security against the appropriation by the employer of the entire profits derived from an invention made by an employee of the said establishment (section 10).

3. The opportunity given to an applicant to appeal to a second higher instance of the Division of Appeals in case his first appeal against the rejection of his application is unsuccessful (sections 18 to 21).

4. A considerable reduction in annual taxes is proposed. The taxes for the first five years are at the rate of Mks. 50 per year and amount to Mks. 250, instead of Mks. 530. Those from the 6th to the 15th year are upon a scale increasing annually by Mks. 50. Thus under the proposed law the taxes for the entire term amount to Mks. 3,500, instead of Mks. 5,280 as under the present law (section 12). The fee for the filing of an application has been increased from Mks. 20 to Mks. 50; for an appeal from Mks. 20 to Mks. 50 and for an action for the nullification of a patent from Mks. 50 to Mks. 100, while a fee of Mks. 300 is prescribed (sections 28, 33, 35, 38, 42), for an appeal from the decision in the last named action. The reduction in the amount of taxes to be paid is expected to induce patent owners to maintain their patents for a longer period, although if roughly compared with other countries, such as Japan, Mks. 500; Sweden, Mks. 800; Norway, Mks. 1,000; Austria, Mks. 3,300; Holland, Mks. 2,300 and Russia, Mks. 4,900, the total expense of Mks. 3,500 for the maintenance of a German patent for the fifteen-year term of protection is still high and will continue to be burdensome to the average inventor and to act as a bar to the maintenance of his patent for the entire term.

5. Examination in respect to novelty will be conducted as strictly as heretofore with the single exception that patents published in the Gazettes of the Patent Offices of the world will only be considered to be anticipations after three months from the date of their publication.

6. The provision for an actual working and the grant of compulsory license have been maintained in the new proposed law. By virtue of the convention which became effective on August, 1909, between the United States and Germany, the American inventor will continue to be relieved from the obligation of working his German patent.

7. The provision, that the assignment of the rights in a German patent to an individual, firm, etc., not domiciled in Germany results in the forfeiture of the patent if made for the purpose of avoiding the nullification of a patent on the ground of non-working, has been retained in the proposed law.

In this connection we refer to the suit for the nullification of two patents assigned to the National Cash Register Company of Dayton, Ohio, brought by a German firm on the ground that the assignment was made in order to prevent the revocation of these patents on the ground of non-working. The Patent Office revoked these patents on May 11, 1908, but in the appeal taken by the defendant from this decision, the Supreme Court held that an American citizen or firm owning a German patent was safe against all prejudicial actions based on the ground of non-working or assignment (see P. & T. M. Rev., VIII, p. 3027).

The proposed patent law, as a whole, is undoubtedly a marked improvement over the present, and should prove an incentive to American inventors to file German patent applications in the future. It is our intention to discuss the proposed laws for trade-marks and Gebrauchsmuster in the next issue of the "Review."

Belgium.

Trade-Marks. Decision. The Word "Kodak" Not Generic.

717. Ostende District, January 30, 1913.

Presiding Mr. Roger; Referee: Mr. Jean; Litigants: Messrs. Thomas Braun and Dejardin.

(Joint-stock company with limited liability-Kodak limited at London vs. Guillaume Duckefett.)

Whereas, By Judgment rendered in cause the 31st of July, 1912, the tribunal, before deciding has allowed the plaintiff company to establish by all legal means, including witnesses, the facts set forth by it on trial;

1. That the defendant, in the course of the season, 1911, had painted underneath the shop window on the wall of his façade in black letters, the word "KODAK," and similarly had made the same word appear on the two faces of a sign;

2. That the defendant was not a depositary of “KODAK" apparatus and did not have any in stock;

3. That, the 1st of August, 1911, Mr. Eugène Lamanière, employed at Ostende, having entered the store of the defendant and having asked for a "KODAK" for 17 Frs. 50, there was delivered to him an apparatus of the "KODAK" Sort called "ENSIGN," as being a genuine "KODAK";

4. That August 19th following, the said Mr. Lamanière, having again presented himself in the store of the defendant with a genuine "KODAK" apparatus and having asked to have a six-picture "KODAK" film placed in it, there was furnished to him for the price of 1 Fr. 95 an "ENSIGN" film as being a "KODAK" film; 5. That, August 31, 1911, Mr. Toussaint Lambert, employed at Ostende, having presented himself at the store of the defendant, and having asked there for a "KODAK" apparatus for 65 Francs, reply was made that they had none in stock, but that it could be furnished the following Wednesday; and besides they had some others equally good;

6. That, the 26th of August, the sheriff's officer, Opsomer, accompanied by Messrs. Isidore Vanhée and Louis Moyaert, having presented themselves at the store of the defendant, and having asked the lady, who was in charge, for a "KODAK" apparatus for 140 Francs, she replied that she had none at that price, but that she could furnish some at lower prices, and, thereupon, brought out an apparatus for the price of 65 Francs; that this apparatus bore the mark