I move that the Bill be now read a Second Time.
The purpose of the Bill is to amend the existing law relating to trade marks in certain respects, so that it will amongst other things, become better adapted to fulfil the needs of traders, in respect of trade mark protection, under modern commercial conditions. In so far as the Bill modifies or introduces new features into the law, regard has been paid to the revision of the International Convention for the Protection of Industrial Property which was effected in 1958, to the recommendations of the Committee of Inquiry set up by my predecessor in 1935, to current responsible opinion in industrial and professional circles in this country, and to modifications to similar effect which have been introduced into the legislation of other countries in recent times. For the sake of greater convenience in its interpretation and working, it has been thought better to incorporate the law as amended in a single act, separate from the law relating to patents, industrial designs and copyright at present contained in the Act of 1927 and certain later amending Acts.
It is proposed to remove certain restrictions which are contained, or are inherent, in the existing law, and which have been found in practice to hamper commercial arrangements which are commonplace under modern trading conditions or, in other words, to hamper trade development. The first concerns the existing requirement of the law whereby the proprietor of a trade mark cannot validly assign it unless he also transfers, with the mark, the goodwill of the business concerned in the goods for which it is registered, which means, in effect, the whole of the goodwill of that business. This requirement was based on the conception that the purpose of a trade mark was to identify the goods with the proprietor of the mark, whereas present-day experience goes to show that the public tend to identify a trade mark with a particular product, rather than with the maker of the product, of whose identity they are often unaware. Under the existing law it is often difficult to make the industrial and commercial arrangements which related commercial or industrial concerns may wish to make to meet developing trade without endangering the validity of valuable trade marks. It is proposed by Section 29 of the Bill to permit trade marks to be validly assigned without the goodwill of the business, and also in respect of some, only, of the goods for which they are registered. At the same time, Section 29 provides safeguards designed to protect the interests of the public in respect of assignments of trade marks which are likely to lead to deception, and which would accordingly not be deemed to have been valid.
A further restriction, inherent in the present law, lies in the fact that the proprietor of a registered trade mark cannot allow the mark to be used by other persons on his behalf without endangering the validity of its registration. This, again, has been found to hamper the development of trade in the State, because the proprietors of valuable trade marks are naturally reluctant to take the risk of entering upon trading arrangements which, for reasons of commercial convenience, involve the use of their trade marks by other firms manufacturing and distributing the goods on their behalf. It is proposed by Section 35 of the Bill, in conjunction with the projected Statutory Rules, to provide for a system of registration of persons who are permitted by the proprietors of registered trade marks to use the marks. Such users will be known as "registered users" and it is proposed that such cases shall be subjected to scrutiny to ensure that a registered user shall not be recorded unless it is clear that the public interest remains unaffected.
Another important change is a proposal to abolish the existing requirement that a trade mark must have been in use for at least two years before it can be considered for entry in Part B of the Register. This Part of the Register—Part B—provides for the protection of trade marks of a less distinctive character than those which qualify for registration in Part A. Section 17 of the Bill, which defines what may be registered in Part B, omits this condition of two years' prior use, and thus enables suitable new trade marks to be registered forthwith, a facility which should be of benefit to traders.
The definition of a trade mark in Section 2 is different from that contained in the present law. The substance of this change is contained in the alteration of the words "a mark used or proposed to be used upon or in connection with goods," as in the present law, to "a mark used or proposed to be used in relation to goods," as in Section 2 of the Bill. The former of these definitions is regarded as too restrictive, as it means that only use in physical connection with the goods constitutes use of a mark as a trade mark. A new and broader concept of trade mark use is required. It is necessary to bring in the use of trade marks in advertisements, in invoices, or in pamphlets and the like, where these relate to goods which are actually being offered for sale. The new definition now proposed will include use of this kind. It will also include use by a registered user, which is necessary because of the provision in Section 35.
At present the law provides for the registration of marks which are used by their proprietors, in relation to goods for the purpose of denoting that they have certified the goods in question as to their origin, material, mode of manufacture, quality, accuracy or other characteristic. In Section 44 of the Bill before the House such marks, in future to be known as "certification trade marks," are separately defined and clearly distinguished from ordinary marks. A certification trade mark, in future, will not be registrable in the name of any person who carries on a trade in the goods in question. Applicants will be required to deposit the proposed regulations to govern the use of their mark. A number of safeguards against misuse of these marks are introduced.
Under existing law it is open to anyone, however unqualified he may be, to represent himself and to practise as a trade mark agent. It is considered undesirable that this position should be allowed to continue. Trade mark law can be very complex, and trade mark rights often represent valuable industrial property. In order to ensure, in the interests of traders, that such matters are dealt with by properly qualified persons, it is proposed by Section 68 of the Bill to provide for the registration of trade mark agents, and that only persons or firms who are registered as agents shall be entitled to practise or represent themselves as such. The section sets out conditions of eligibility and defines the things that may be done by an agent. Penalties are also provided for acts constituting offences under the section.
The other changes proposed include a provision in Section 34 for wider protection of well-known trade marks consisting of invented words, the provisions in Section 36 to permit registration of a trade mark in circumstances where the mark is proposed to be used by a registered user or by a body corporate yet to be constituted, as well as the provision in Section 47 which will enable a trader, before filing an actual application for registration, to obtain an official opinion as to the suitability for registration of any trade mark which he proposes to adopt.
I recommend the principle of the Bill for approval by the House.
