FOREIGN TRADE MARKS (FOR ATTORNEYS ONLY) CHARGES AND GENERAL INFORMATION MARKS & CLERK Established 1887 MONADNOCK BLOCK 220BROADWAY 900 F STREET, N. W. CHICAGO, ILL. NEW YORK WASHINGTON, D. C. 57 & 58 LINCOLN'S INN FIELDS. LONDON, W. C. August 1st, 1919. Telephone Numbers: Cable Addresses: New York, Cortlandt 8472 M ARKLERK— New York New York, " 8473 " —Chicago Chicago, Harrison 2219 " —Washington, D. C. Washington, Main 1831 " —London (England) Codes — Western Union, Al and A. B. C. FOREIGN TRADE MARKS (FOR ATTORNEYS ONLY) CHARGES AND GENERAL INFORMATION MARKS & CLERK Established 1887 MONADNOCK BLOCK CHICAGO, ILL. 220 BROADWAY NEW YORK 57 & 58 LINCOLN'S INN FIELDS, LONDON, W. C. 900 F STREET, N. W. WASHINGTON, D. C. August Ist, 1919. Copyright 1919 by MARKS & CLERK TO ATTORNEYS-AT-LAW V\«-- Inclusive charges for trade mark applications in foreign countries are set out herein. The remarkable growth of the foreign trade between the United States and foreign countries and the misunderstanding which exists as to the practice abroad in the matter of the protection of Trade Marks warrants attorneys in calling the attention of their clients to the necessity of registering their trade marks abroad before they are advertised in the Official Gazette or trade publications or are used in foreign territory. PIRACY AND PROTECTION OF TRADE MARKS ABROAD We have previously called serious attention to the necessity of protecting Trade Marks abroad in order to prevent piracy of the property rights therein, and owing to the misunder- standings that have arisen we desire to remind attorneys that in many foreign countries the right to sue for infringement of trade marks is only acquired by registration, and prior use of a mark does not entitle the user to registration in such countries, based on the registration effected in the home country. REGISTRATION GRANTED BEFORE USE ABROAD It is not necessary to make use of a trade mark in foreign countries before applying for registration, as the laws abroad do not require evidence to be furnished of the use of a mark as is the case in registering in the United States. Further, a mark may be registered after use abroad provided it has not already been registered by others for the same or similar goods. VALUABLE MARKS STOLEN. In our extensiv.e experience in connection with the protection of industrial property abroad, cases have frecjuenti^jbeen brought to our knowledge of trade marks being pirated and registered in certain countries, even after fifty years' use of the mark by the original owner thereof, who finds himself in the position that he must give up his mai-k to someone who has fraudulently regis- tered the same, and who then relies on the trade mark law of the particular country in question to entitle him to stop the continued use of such mark by the originator or real owner thereof. We have been consulted in such cases in connection with most of the South American Republics, in South Africa, Australia, Germany, Norway, Spain, Sweden, Denmark, Portugal, Japan, Mexico and elsewhere. It cannot be too strongly urged upon your clients that they should secure trade mark entry on the Ofificial Registers of any marks which they are using or contemplate using in all foreign countries of the world. REGISTRATION BY SELLING AGENTS DANGEROUS. In soiue cases American and other corporations have allowed their agents abroad to reg- ister the mark in the agent's name, such agent by written contract undertaking to transfer the mark to the rightful owners on the term_ination of the agency agreement. This is an objectionable practice in view of the fact that the exclusive use of the mark in some countries by the agent may give such agent the personal property rights in the mark, while in certain countries the laws provide that no legal assignment of such a trade mark can convey the same to the real owners, unless the business and good will of the agent is at the same time assigned to the party really entitled to the Trade Mark. Thus, for instance, if an ag-ent in Austria has registered a mark in his own name, he cannot convey that mark to the firm or corporation whose goods he has been marketing thereunder, unless he sells the whole of his business to that concern in connection with goods of the character dealt with under the trade mark. It will be readily understood that an agent cannot be expected to go out of business altogether, when assigning a trade mark to the firm whose goods he has previously been selling thereunder, and yet unless an assignment of this comprehensive character is effected, no legal transfer of the rights in the trade mark can be recorded. OWNERSHIP BY USER. There are but few countries abroad where actual ownership of a trade mark is recognized or obtained by use of the mark, as is the case in the United States. In the following" countries registration alone gives the ofBcial or recognized ownership of a trade mark : Argentine Re- public, Austria, Bolivia, Chile, Costa Rica, Cuba, Dominican Republic, Germany, Guatemala, Hungary, Japan, Nicaragua, Norway, Paraguay, Peru, Portugal, Serbia, Sweden, Turkey, Uruguay and Venezuela. PROTECTION BY REGISTRATION THE SAFEST AND CHEAPEST WAY. RELIABILITY OF ATTORNEYS. We have associate and personal arrangements with high class patent and trade mark attorneys in all the important countries of the world, whereby we can secure at the lowest pos- sible rates effective trade mark protection, and we are always at the service of attorneys to advise them fully as to the best means of securing registration or of protecting their clients against the piracy of their trade marks. We keep on file translations of all trade mark laws of the various countries and shall be happy to answer specific inquiries at any time relating to matters of this character. PAN AMERICAN CONVENTION. Northern Group The Convention entered into in the year 1910 between the United States and several of the countries comprised in the Northern group of American Republics has now been ratified by the necessary number of countries (two-thirds) required for the establishment of the Bureau at Havana. This Bureau is now being organized, but the date when it will be in a position to do business is a matter of considerable uncertainty as the necessary funds will only become available after appropriation of the respective amounts by the legislatures of the different countries com- prised in the Northern group. 4 It is impossible as yet to determine how far the Convention will operate to protect trade- mark owners who take advantage of the International registration at the Havana Bureau, when it is open for business. The Convention contemplates protection of trade marks throughout the following group of countries, which have so far ratified the same : Costa Rica, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, United States. It has not ])een ratified and will in no way apply to: Mexico and Salvador so that even after the Convention becomes operative, separate protection in these States will have to be secured. Southern Group The Convention has not been ratified by a sufficient number of the Southern group of countries to bring it into operation, and it will probably be many months before this ratification is effected so as to enable registrations to be carried out at the proposed International Bureau at Rio de Janeiro to cover the Southern group. The Convention does not in any way nullify or override the local laws of the various coun- tries and it is uncertain whether the same facilities for taking infringement proceedings will be afforded under the Convention as are available under the domestic laws of the different countries. Until decisions have been rendered enforcing the rights intended to be acquired by registra- tions effected at the Northern Bureau, it is impossible to say how far it will be safe to rely on the International registration when applications are accepted and carried through. As the main pirate countries are not affected by this ratification by the Northern coun- tries, it still becomes essential for traders to register their trade marks independently in any event under the laws of the various countries of South America. BERNE TRADEMARK CONVENTION. The United States is not a member of the Berne Trademark Convention and in recent years many valuable rights have been lost by reason of the piracy of trade marks which have been registered by a citizen or corporation of one of the countries comprised in the Berne Con- vention, which registration has been extended by a single convention registration to cover the whole of the countries of the Berne Convention, which are as follows : Austria, Belgium, Brazil, Cuba, Spain, France, Hungary, Italy, Mexico, Holland, Portugal, Switzerland and Tunis. As applications for the registration of American trade marks have been more extensively liled in the last two or three years, it has been found that foreign pirates have frequently resorted to this objectionable practice of monopolizing the trade marks of others and so long- as these International registrations are of record and extend to the whole of the countries above re- ferred to, it is impossible in many cases to secure a registration for the rigditful American owner of the mark until the International registration has been cancelled. As this International registra- tion is in most instances based on a registration in a country, the law of which recognizes those first to register a mark as the owner thereof, rather than the first to use a mark, the American applicant finds himself faced with the danger of infringing trade mark rights acquired by a pirate in a large group of countries under a single International registration effected at Berne, Switzer- land. Moreover, as the United States is not a party to this Convention, no redress apparently can be secured. The necessity, therefore, of separate registration in each of the countries covered by the Berne Convention will be apparent. COST AND DURATION OF REGISTRATIONS The list hereunder gives every country granting any form of trade mark protection. The figures quoted hereunder include cost of certified copies of the U. S. registration (where re- quired), electros and prints of the trade mark, legalization of the powers of attorney and -of the 6 certified copies where called for, translation expenses (translation and pul)lication up to 500 words of text only in Brazil), and all expenses in carrying through the applications and obtaining registration of the marks unless prior registrations have to be overcome or oppositions are met with after the applications are allowed. Where attorneys furnish the certified copies, electros and prints, proper allowances for same will be made. In those countries against which an asterisk appears, a basic registration in the United States is necessary before registration will be granted to U. S. citizens or corporations. Business is conducted with attorneys only, and the figures quoted herein are confidential. Attorneys are respectfully requested not to place this booklet or the information contained therein before any manufacturer or corporation. NOTES. In some countries where proof of prior registration in the applicant's home country is called for, this can be dispensed with. This usually involves the preparation of special papers, the filing of a special application to the Government of the country, and additional expense, so that it should be resorted to only in cases of absolute necessity. (a) Brazil. When the certified copy of the home registration and the certificates attached thereto exceed 500 words, a charge of $3.00 per hundred words is made for additional transla- tion and publication. A special application not based on the U. S. registration can be obtained for a fee of $110,00, when the mark in question has not been registered in the U. S., subject to the same increase for additional translation and publication of the necessary documents as above. (b) Salvador — Taxes. Taxes are now payable on Trade Marks in December of each year of the duration. Our charge for efifecting payment of each year's tax is $5.00, including the government fee. The prices quoted cover five years' taxes. 7 MARKING OF GOODS. Full particulars of the marking requirements are given on the envelopes in which the registration certificates are sent out. Chile: The law provides that goods manufactured or sold under a registered trade mark shall bear" beneath the trade mark, if the proprietor is a manufacturer, the following marking: Marca de Fabrica, or the abbreviation M. de F. If the proprietor is a merchant or commercial concern, the marking should read : Marca Comercial, or the abbreviation M. C. Compliance with the above requirement is necessary to enable a registered proprietor to collect damages, etc., in case of infringement. Mexico: There are similar provisions in Mexico, viz: that goods shall bear the name and address of the owner and, if the proprietor is a manufacturer, the marking: Marca Industrial Registrada, or the abbreviation M. Ind. Rgtrda., with the number and date of registration. If the proprietor is a merchant or commercial concern, the marking should read : Marca de Comercio Registrada, or the abbreviation M. de C. Rgtrda., with the number and date of registration. Failure on the part of a registered owner of a mark to observe the above requirements will prevent collection of damages, etc., in case of infringement. Country Duration Algeria (covered by France) Argentine 10 years Australia 14 years * Austria . 10 years Bahamas 14 years Barbados Unlimited Belgian Congo Unlimited Belgium Unlimited Bermudas 14 years Bolivia 10 years *Brazil, See Notes (a) 15 years Brazil 15 years British Central Africa (Nyasaland) 14 years British Guiana 14 years British Honduras (Advertising) ... 10 years British New Guinea (Papua) (covered by Australia) British North Borneo Unlimited *Bulgaria 10 years Burmah Unlimited Canada (Specific) 25 years (General) Unlimited Inclusive Charge 62.00 45.00 32.00 42.00 36.00 37.00 32.00 50.00 57.00 69.00 110.00 41.00 48.00 45.00 60.00 68.00 33.00 38.00 45.00 Notes No proper trade mark statute Based on U. S. Registration. Includes 500 words transla- tion. Extra translation $3.00 per 100 words. Independent of U. S. Reg'n. No proper trade mark statute Country Duration Ceylon 14 years Channel Islands (Guernsey or Jersey) each 14 years Chile 10 years ^ China (Shanghai) Unlimited (Tien Tsin) Unlimited (Manchuria) Unlimited Colombia 20 years Cook's Islands (covered by New Zealand) Costa Rica ^ 15 years Crete (covered by Greece) *Cuba 15 years Curacao 20 years Cyprus 14 years Czechoslovakia 10 years Deccan (Advertising) 10 years '•'Denmark 10 years Dominican Republic (See Santo Domingo) Dutch East Indies (Java, etc.) .... 20 years Dutch Guiana (See Surinam) East Africa Protectorate 14 years Ecuador 20 years 10 Inclusive Charge 45.00 30.00 45.00 25.00 25.00 40.00 90.00 48.00 48.00 40.00 45.00 45.00 45.00 50.00 40.00 45.00 79.00 Registration at Consulates and Customs Bureaus; U. S. registration not essential Estimated. No proper trade mark statute. British regfistration advisable Inclusive Country Duration Charge Egypt (Cairo, Mansurah or Alex- andria) • 10 years 30.00 (Cairo and Mansurah) 10 years 45.00 (Cairo, Mansurah and Alex- andria) 10 years 60.00 Eritrea (covered by Italy) Falkland Islands 14 years 54.00 Federated Malay States 10 years 38.00 Fiji Islands 7 years 53.00 *Finland 10 years 31.00 France 15 years 27.00 Gambia 14 years 45.00 *Germany 10 years 40.00 Gibraltar (Advertising) 10 years 53.00 Gold Coast 14 years 46.00 Great Britain 14 years 21.00 *Greece (including Crete) 10 years 70.00 Grenada (Advertising) 10 years 38.00 ^Guatemala 10 years 72.00 Haiti Expires with U. S. 40.00 Hawaii (local registration) 20 years 32.00 Holland 20 years 37.00 *Honduras Unlimited 100.00 11 No proper trade mark statute. Registration at Courts. British registration necessary Advertising ; no proper trade mark statute. No proper trade mark statute. No proper trade mark statute. $10.00 extra when U. S. Reg'n. has been assigned. Inclusive Country Duration Charge Hong Kong 14 years 95.00 ^Hungary 14 years 32.00 Hyderabad (Advertising) 10 years 45.00 ^Iceland 10 years 56.00 India, (Calcutta) Unlimited 30.00 India, (Cawnpore) Unlimited 30.00 Italy Unlimited 41.00 Jamaica 14 years 48.00 Japan (Covers Korea) . . . ■ 20 years 48.00 Johore (Advertising) 10 years 45.00 Jugoslavia 10 years 45.00 Leeward Islands 14 years 42.00 Liberia 14 years 100.00 Luxemburg 10 years 30.00 Madag^ascar (covered by France) Malta and Gozo 14 years 37.00 *Manchuria (Harbin, See China)-.. Mauritius Unlimited 40.00 Mexico 20 years 31.00 Morocco 20 years 47.00 Mysore (Advertising) 10 years 45.00 Negri-Sembilan (See Federated Malay States) 12 Notes No proper trade mark statute. No proper trade mark statute. No proper trade mark statute. No proper trade mark statute. Estimated. U. S. registration not es- sential. No proper trade mark statute. Inclusive Country Duration Charge Newfoundland Unlimited 38.00 New Zealand 14 years 30.00 Nicaragua 10 years 55.00 Nigeria 14 years 52.00 *Norway 10 years 39.00 Nyasaland (British Central Africa) 14 years 41.00 Oman (Advertising) 10 years 48.00 Pahang (See Federated Malay States) *Panam,a 10 years 95.00 Papua (covered by Australia) Paraguay 10 years 84.00 Penang (covered by Straits Settle- ments) Perak (See Federated Malay States) Persia No law Peru 10 years 55.00 Philippine Islands Independent Registration ■ 30 years 43.00 *Deposit Registration • 20.00 Poland 10 years 35.00 Porto Rico Independent Registration 20 years 35.00 *Deposit Registration 20.00 *Portugal 10 years 36.00 .13 Notes No proper trade mark statute. Expires with U. S. Reg'n. Estimated. Expires with U. S. Reg'n. Country Duration Portuguese Colonies in Africa : — Angola 10 years Cape Verde. 10 years Guinea 10 years Thomas and Prince's Island... 10 years East Coast (Government Ter- ritory) 10 years East Coast (Nyasa Co.'s Terri- tory) 10 years East Coast (Mozambique Co.'s Territory) 10 years Portuguese Colonies in Asia : — : Macao 10 years Portuguese India 10 years Timor 10 years Rhodesia 14 years Rumania 15 years *Russia 10 years [nclusive Charge Notes 29.00 Portuguese Registration re- 29.00 quired. Portuguese Registration re- 29.00 quired. Portuguese Registration re- 29.00 quired. Portuguese Registration re- 29.00 quired. Portuguese Registration re- 29.00 quired. Portuguese Registration re- 29.00 quired. Portuguese quired. Registration re- 29.00 Portuguese Registration re- 29.00 quired. Portuguese Registration re- 29.00 quired. Portuguese quired. Registration re- 57.00 40.00 58.00 No commercial treatv in op- eration. 14 Country Duration St. Helena (Advertising) 10 years St. Lucia 14 years St. Vincent (Advertising) 10 years Salvador, See Notes (b) 20 years Santo Domingo 10 years 15 years 20 years Sandwich Islands (See Hawaii) Sarawak (Advertising) 10 years Selangor (See Federated Malay States) Serbia 10 years Seychelles Islands 14 years Siam 12 years Siberia 10 years Sierra Leone 14 years South Africa 14 years *Spain 20 years 20 years Straits Settlements (Advertising) . . 10 years Sudan (Advertising) 10 years Surinam (Dutch Guiana) 20 years *Sweden 10 years *Switzerland ■ 20 years Trinidad and Tobago 14 years Tunis 15 years Inclusive Charge 50.00 57.00 38.00 75.00 58.00 63.00 68.00 40.00 100.00 48.00 59.00 58.00 46.00 48.00 40.00 55.00 48.00 38.00 35.00 50.00 35.00 50.00 28.00 Notes No proper trade mark statute. No proper trade mark statute. Taxes paid for 5 years No proper trade mark statute. Statute not yet in operation Estimated. 5 years taxes paid 20 years taxes paid No proper trade mark statute. No proper trade mark statute. 15 Country Duration Turkey 15 years Turks and Caicos Islands (covered by Jamaica) Uganda Ukraine 10 years *Uruguay 10 years Venezuela 30 years *Virgin Islands Windward Islands (See under sep- arate Islands) Zanzibar 14 years Cliarge 100.00 47.00 50.00 74.00 48.00 38.00 66.00 Expires with British Reg'n. Estimated. Expires with U. S. Reg'n. British or British Colonial registration required. *In those countries against which an asterisk appears a basic registration in the United States is necessary before registration will be granted to U. S. citizens or corporations. 16 LIBRARY OF CONGRESS 019 970 262 2