No. 1046. Mr. Frey to Mr. Bayard. [Translation. J LEGATION OF SWITZERLAND, Washington, January 5, 1888. (Received January 6.) Mr. SECRETARY OF STATE: The undersigned had the honor, by his notes, of January 6 and March 11, 1887, to call your attention to the fact that the treaty for the reciprocal protection of trade-marks, which was concluded by Mr. Frelinghuysen and the undersigned on the 14th day of February, 1885, had not yet been ratified by the United States Senate. As the undersigned has received no reply to either of the aforesaid notes, he takes the liberty to remind you of this matter and to beg you to be pleased, if possible, to induce the Senate to take it into consideration, and to approve or reject the said treaty, as it may deem proper. Accept, etc., E. FREY. No. 1047. Mr. Bayard to Mr. Frey. DEPARTMENT OF STATE, SIR: Mr. Kloss' note of the 13th of September last, in which he asks this Department to furnish your legation as precise explanation as possible concerning the extent of the constitutional reservation made by the American representatives at the Paris conferences of 1880 and 1883, concerning the protection of industrial property, was duly received. The subject to which these inquiries relate is one of great importance to the industry of this country as well as of Europe, and I am fully sensible of the desirability of furnishing to all persons interested precise explanations of the extent of the constitutional reservations under which this Government necessarily acts in the matter of trade-marks. The Government of the Swiss Confederation being charged, under article 13 of the treaty of March 20, 1883, with the supervision of the Bureau of the International Union for the Protection of Industrial Property, is especially entitled to be placed in full possession of the precise legal status of this question. I have therefore given the subject the fullest consideration, and have examined with attention the legislation and the reported decisions of the courts of the United States and of the several States, in the hope of being able to address to you an answer which should be a complete and authoritative exposition of the rights of persons who may register trade-marks in accordance with the provisions of the treaty already referred to, and of the statutes of the United States. The result of this investigation has, however, been such as to convince me that the precise extent of the authority of Congress to deal with the registration and protection of trade-marks, and the precise effect of the statutes enacted by that body, are by no means free from doubt, and upon mature delib eration I have decided to refrain from expressing my individual views upon a subject which has not yet been passed upon in all its aspects by the judicial branch of this Government. The Constitution of the United States prescribes a very distinct separation between the functions of the legislative, executive, and judicial branches of the Government, each of which is, in its appropriate sphere, independent of the others. It is for the executive branch to carry out the laws which Congress may in its wisdom see fit to enact. In the performance of this duty the Department of the Interior has been engaged, since the enactment of the statutes already referred to, in the registration and protection of trade-marks in the manner prescribed by the laws, and it has had occasion, as I am informed, to register a very large number of trade-marks from citizens and aliens alike, to the great benefit, probably, of persons engaged in commerce. But, nevertheless, any person, a citizen or a foreigner, may at any time, if he feels himself aggrieved by the operation of these laws, invite a decision of the question whether in their enactment the legislative branch had not exceeded the powers conferred upon it by the Constitution. That question is one which is not within the competence of the Executive to decide. When it arises it must be passed upon by the appropriate tribunals and, in the last resort, by the Supreme Court of the United States. With the decisions of that high tribunal already pronounced you are perfectly familiar, but I may invite your attention to the fact that in passing upon the validity of the act of Congress of 1870, the Supreme Court, in 1879, took pains to state that it left untouched "the whole question of the treaty-making power of the General Government over trade-marks, and the duty of Congress to pass any laws necessary to carry such treaties into effect." Since 1879 the court has not, so far as I am aware, been called on to express any further opinion on the subject. What may be its decision upon the points suggested by the communication of Mr. Kloss it is not proper for me to predict. My own opinion, should I undertake to give it, would not in any respect affect the deliberations of the court. At the same time, such a statement might naturally be regarded as possessing an official sanction which, under the Constitution of the United States, could not properly attach to it. These considerations, which your long and intimate acquaintance with the institutions of this country will enable you to appreciate in their full force, have thus led me to the conclusion that it would be undesirable at this time to attempt to furnish you with precise explanations concerning the extent of the constitutional reservations made by the representatives of this Government at the Paris Conferences of 1880 and 1883, touching the protection of industrial property. In communicating to you this conclusion, I beg that you will express to the Government you so worthily represent my expression of regret that the peculiar relations of the Federal Government to the several States and the limitations imposed by the Constitution of the United States upon the several branches of the Government, forbid my conforming to the legitimate desire of the Government of the Swiss Confederation for an authoritative statement of the present condition of the law. Accept, etc., T. F. BAYARD. No. 1048. Mr. Frey to Mr. Bayard. [Translation.] LEGATION OF SWITZERLAND, Washington, January 31, 1888. (Received February 1.) Mr. SECRETARY OF STATE: The undersigned, minister of the Swiss Confederation, has the honor, by direction of his Government, to transmit you the inclosed note from it, and avails, etc., E. FREY. [Inclosure.-Translation.] The Swiss Federal Council to Mr. Bayard. BERNE, January 13, 1888. Mr. MINISTER: We have the honor to inform your excellency that when the international convention of September 9, 1886, for the protection of literary and artistic works went into operation, we decided to place under one management the international bureau of industrial property, now existing at Berne, and the new international bureau, with the organization of which we are charged by the aforesaid convention. By this measure, which leaves the spheres of action of the two bureaus entirely distinct, we wished to satisfy the desires of several countries belonging to the international unions. It will easily render it possible, in view of the great analogy existing between industrial property and literary and artistic property, to effect a large saving in the management and to reduce to a minimum the share which is payable by each of the contracting states. Having thought that under the present circumstances the appointment of a director on the same footing as those of the international bureaus of posts and telegraphs was not indispensable, we have just designated Mr. Henri Morel, a national councilor and former president of the federal assembly, to fill the office of secretary-general of the two bureaus until they shall be definitely organized by the appointment of a director. Mr. B. Frey-Godet, who has hitherto been secretary of the international bureau of industrial property, has been appointed second secretary of the two bureaus, and it will be his duty to sign in the absence of the secretary-general. Federal Councillor Droz is to have the superintendence-in-chief of the management of these bureaus. Hoping that this action will meet with the approval of your Government as a member of the union for the protection of industrial property, we avail, etc. In the name of the Swiss Federal Council. HERTENSTEIN, The President of the Confederation. The Chancellor of the Confederation. No. 1049. Mr. Frey to Mr. Bayard. LEGATION OF SWITZERLAND, Washington, February 18, 1888. (Received February 20.) SIR: The undersigned, minister of the Swiss Confederation, has the honor, in pursuance of instructions received from his Government, herewith to transmit to you the inclosed note, and he avails, etc. E. FREY. [Inclosure.-Translation.] The Swiss Federal Council to Mr. Bayard. BERNE, January 31, 1888. Mr. MINISTER: We have the honor to inform your excellency that the ratifications of the convention for the establishment of an international union for the protection of literary and artistic works were exchanged at Berne on the 5th day of September, 1887, by the representatives of Germany, Belgium, Spain, France, Great Britain, Hayti, Italy, Switzerland, and Tunis. According to the provisions of article 20 the convention went into operation three months after the exchange of the ratifications; that is to say, on the 5th day of December, 1887. The bureau of the international union for the protection of literary and artistic works, for which provision is made in article 16, has been in operation since January 1, 1888. The union may, consequently, be considered as regularly established. According to article 18 of the convention countries that have not yet become parties to the convention, but whose laws secure protection of the rights which form the subject thereof, are to be allowed to accede thereto at their request, and it will be sufficient for that purpose for notice of their accession to be given in writing to the Swiss federal council. In bringing the foregoing to your excellency's knowledge, we hope your country will soon join the union for the protection of literary and artistic works, the object of which is to protect beyond the national frontiers rights which, in the majority of countries, are regarded as sacred. SIR: I have the honor to acknowledge your note of January 5 last, calling my attention to the fact that the trade-mark treaty concluded between yourself and Mr. Frelinghuysen on February 14, 1885, had not yet been ratified by the United States Senate, and requesting that it might be brought to the attention of that body. The treaty to which you refer was signed by my predecessor only a few days before he resigned the direction of this Department. It was not transmitted by him to President Arthur, or by the President to the Senate of the United States for its consideration; and on assuming my present office it became necessary for me to consider whether I should do what had not been done by my predecessor, namely, advise the President to submit the treaty in question to the Senate with a recommendation for its approval. It is unnecessary for me to recall to your attention the Federal legislation in this country in regard to trade-marks. As you are aware, the Congress of the United States passed an act, which was approved on March 3, 1881, "to authorize the registration of trade-marks and to protect the same." It was thereby enacted that owners of trade marks used in commerce with foreign nations, provided such owner should be domiciled in the United States or located in any foreign country which by treaty, convention, or law afforded similar privileges to citizens of the United States, might obtain registration of such trade-marks by complying with certain preliminary requirements. This law was passed to take the place of certain sections of the law of July 8, 1870, which had been declared by the Supreme Court of the United States to be in some respects beyond the constitutional competence of the legislative power of the United States. As I wrote to you on the 11th January of this year, the question of the precise extent of the authority of Congress to deal with the regis tration and protection of trade-marks, and the exact effect of the statutes enacted by that body, is by no means free from doubt. Similar doubts extend to the question of the power of the treaty-making branch of the Government to deal with the subject. The Supreme Court of the United States, when the question was before it in 1879, took pains to state that it left untouched "the whole question of the treaty making power of the General Government over trade-marks and the duty of Congress to pass any laws necessary to carry such treaties into effect." It has been the general expectation that there might be some further expression of opinion by that tribunal upon the subject which was thus left open by it in its former decision; but since 1879 the Supreme Court, so far as I am aware, has not been called upon to lay down any further rule upon this subject. In the mean time, however, the question came before the Senate whether it should advise and consent to the adhesion of the United States to the Paris convention for the protection of industrial property. As you are aware, the Senate, after considerable hesitation, advised adhesion to that convention on the 2d of March, 1887. The accession of the United States to the union for the protection of industrial property was then announced by the minister resident and consul-general of the United States at Berne to the federal council of Switzerland on May 30, 1887, and the President issued his proclamation accordingly upon June 11 of same year. The Patent Office, a branch of the Department of the Interior, which is charged with the registration of trade-marks, receives, as I am informed, applications from inhabitants of Switzerland without discrimination, and upon the same terms as from residents in the United States. For your further information as to the practice of that Department, I inclose herewith two copies of the laws and regulations concerning trade-marks, edition of November 1, 1886. Upon a careful review of the federal legislation of the United States, as expressed in the act of March 3, 1881, and the provisions of the convention just referred to, I have been unable to perceive that there would be any advantage to citizens of the United States or of the Swiss Confederation in the ratification of the treaty of February 14, 1885, or in the conclusion of any similar engagement. The law of March 3, 1881, as already pointed out, provides for the registration and protection of trade marks used in foreign commerce or in commerce with the Indian tribes, whether the owners of such trade-marks are domiciled in the United States or in any foreign country or Indian tribe which by treaty or law affords similar protection to trade-marks of citizens of the United States. Article 2 of the convention of March 20, 1883, provides that the subjects or citizens of each of the contracting states shall enjoy in all the other states of the union, for the protection of industrial property, the advantages the respective laws thereof accord to their own subjects or citizens, and that they shall have the same legal recourse for an infringement of their rights. Whether these statutory and conventional provisions are in all respects within the constitutional competence of the Federal Government, is a question which, as I have already stated, has not been decided by the Supreme Court. But as they stand and are now applied, they are * Inclosures not printed herewith. |