This is the first of two articles to examine the earliest trademark registrations in several selected countries and the legal bases on which they were obtained.
Prior to their federation, four of the states in Australia had set up trademark registers: South Australia in 1863, Queensland in 1864, New South Wales in 1865, and Victoria in 1876. In each of those states local statutes contained provisions for punishing the fraudulent use of trademarks and provided for a register of trademarks.
In 1905 a Federal Trademarks Act was introduced to cover all of Australia. Prior registrations in the separate states remained in force but were not renewable. The 1905 Act was based largely on contemporary trademark legislation in the United Kingdom.
Australia then, as now, was a country that respected rights acquired by use rather than by being the “first to file.” The first trademark registered under the 1905 Act was for the image of a pine tree; that registration is now owned by Fisons Plc, which uses the mark on chemical substances prepared for use in medicine and pharmacy.
Provisions to register trademarks in Hong Kong were first introduced in 1873 by way of an ordinance, which recognized use-based rights in marks. The law provided that entries in the register of trademarks, which was to be administered by the Office of the Colonial Secretary, would be admitted in legal proceedings as prima facie evidence of their owners’ exclusive rights to use the marks. Subsequently Hong Kong adopted a trademark act that was based on the then-prevailing U.K. Trade Marks Law.
The first trademark recorded under the 1873 ordinance was the 1874 registration of a combined mark consisting of an eagle design and the words NESTLE’S EAGLE BRAND. That mark is still registered for use with milk and condensed milk.
The Trademark Ordinance of June 7, 1884, was the first trademark registration system in Japan. The Ordinance provided that the rights in a mark came into force upon registration. Japan then, as now, recognized rights in trademarks as a result of filing rather than through use.
Under the 1884 Ordinance, a trademark registration had a term of 15 years and was renewable; however, the registration was cancelled if the proprietor abandoned or closed its business for three years. In addition, Japan adopted a classification system with 65 categories of goods.
The first trademark registration in Japan was owned by an individual named Yuki Hirai and consisted of the design of a seated figure behind a low table. The now-defunct mark, registered for pills and plaster-type wound dressings and pills, indicated a traditional cook injured by a kitchen knife – hence, the need for the plasters!
Registration of trademarks in the United Kingdom was first provided for by the 1875 Trade Marks Act. Protection was, and still is, afforded after first use of the mark. The first trademark to be registered under the 1875 Trade Marks Act was the famous Bass “red triangle” design, which is still registered for “beer.”
Thomas Jefferson first recommended in 1791 that the United States enact federal trademark legislation; however, no such legislation was adopted until 1870. In the intervening 80 years some states passed trademark laws of their own. For example, Michigan enacted a law in 1842 that required loggers to register their log marks in those counties where their lumber was to be manufactured.
The first trademark to be federally registered in 1870 was a design mark for liquid paints. The mark consisted of an eagle shown against an industrial background. That mark, owned by Averill Paints, is no longer registered.
The authors would like to acknowledge the valuable assistance of Lyn Stevens of Griffith Hack in Australia, Kenny Leung of Wenping & Co in Hong Kong, Tadao Takashiba of Shiga International in Japan, and Larry Robins of Finnegan, Henderson, Farabow, Garrett & Dunner in the United States.
Although every effort has been made to verify the accuracy of items carried in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.