On subsection (2) of Section 1, does the Minister propose to bring the entire Act into operation on the one date? I take it he does from the phraseology.
Committee on Finance. - Trade Marks Bill, 1962— Committee Stage.
Question proposed: "That Section 1 stand part of the Bill."
Yes, that is the position.
Question put and agreed to.
Section 2 agreed to.
SECTION 3.
I move amendment No. 1:—
In page 5, to add to subsection (1) of the section the following paragraph:
"(f) for prescribing any matter referred to in this Act as prescribed or to be prescribed."
Section 3 as introduced set out in paragraphs (a) to (e) the purposes for which the Minister might make rules from time to time. As a result of advice received by the parliamentary draftsman, it was decided to insert this new paragraph which is rather an omnibus one. I am advised it is necessary for the purposes of the Bill in the event of rules having to be made.
Amendment agreed to.
Section 3, as amended, agreed to.
SECTION 4.
Question proposed: "That Section 4 stand part of the Bill."
There will be a new schedule of fees? Is that the understanding?
Yes, there will be a new schedule.
Will they follow the same pattern or is the Minister proposing to——
There may be some increases, I understand.
Does the Minister propose to tabulate them in that case?
Is there any provision for it ?
There is provision in Section 3 but not in relation to Section 4, I think. Will the Minister table them anyway as an extra-statutory presentation?
Yes, I shall do that.
It will give us an opportunity of criticising them.
Question put and agreed to.
Section 5 agreed to.
SECTION 6.
Question proposed: "That Section 6 stand part of the Bill."
Where is the definition of an excluded day?
I think the Deputy will find it in the rules.
That is what I thought, but is it not most unusual to provide in a section of the Bill a reference to something that will be defined in the rules and not in the Bill? If an excluded day is to be defined in the rules, should not Section 6 really be a matter for a paragraph in the rules rather than in the Bill? Equally, if there is to be a paragraph in the Bill, should not an excluded day be defined in the Bill itself?
It was not defined in the 1927 Act. This is carrying on the status quo. I should imagine “excluded days” are well-established. I do not know if any difficulty would arise in having a definition included in the Bill, but I shall look into the matter.
With all respect to the Minister, I do not know that "excluded days" are well established because we are now in the situation in which business in Dublin is changing over from a five-and-a-half to a five-day week, and it is precisely because of that situation that I want to know exactly where we stand. I would suggest that it is desirable to advert to that particular point when the Minister is considering the matter.
I shall do that.
Question put and agreed to.
NEW SECTION.
I move amendment No. 2:
Before Section 7, to insert the following new section:
"The expenses incurred by the Minister in the administration of this Act shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas."
It was considered necessary to insert this amendment to clarify the provisions in regard to expenses incurred in the administration of the Act.
We were not expecting the Minister to meet them out of his own pocket.
Amendment agreed to.
Sections 7 to 16, inclusive, agreed to.
Amendment No. 3 not moved.
SECTION 17.
Question proposed: "That Section 17 stand part of the Bill."
There are certain matters that arise in relation to this section which must be considered in correlation with Section 21. If the Minister has no objection, it would be simpler, I think, for us to pass Section 17 and have the discussion on Section 21 and the amendments thereto, because Section 17 as it stands is a copy of the modern British Act and the variation comes at a later stage. In so far as the inclusion of Section 17 is concerned, I certainly have no objection to it, as it stands, if Section 21 is amended in a certain direction. We can, as I say, discuss it more aptly on Section 21. That will avoid a double discussion on this section. Am I right in thinking that Section 17 is a copy of the modern British practice?
Yes, that is so.
Question put and agreed to.
Section 18 agreed to.
SECTION 19.
I move amendment No. 4:
In subsection (3), page 11, line 25, after "may" to insert ", unless he is satisfied that there has been at least two years' continuous user in the State by such second or later applicant,".
This amendment proposes to make a certain difference in the practice and procedure that will operate where there has been a two years' continuous user in this State by the second, or the later, applicant. Section 19, in subsection (3), proposes a method which will be mandatory on the Controller in dealing with identical applications. I know the argument may be made that it is not mandatory on the Controller. Let me say quite clearly that there has been a long line of decisions and discussions in relation to the use of the word "may". In a context like this, it is to all intents and purposes equivalent to "shall". I am not, therefore, prepared to accept the view that "may" in this context is the same as "may, if he so desires".
The position will be, in respect of subsection (3) as it appears now in this Bill, that the Controller will examine the two applications and deal solely with the first, making the principal application, and dealing solely with it, the one that has been put in first in point of time. The effect of that will be that there will be possibilities of a flood of applications not wholly genuine, and there will be a very great advantage in being what I might call "the moving applicant". A person abroad who sees the likelihood, therefore, of someone moving here in respect of a particular trade mark, which may be in use here but not registered, can hop in, put in an application and, by so doing, even though the other firm has been using the mark here for a period in excess of two years, gain an unfair advantage under this section as it is phrased at the moment.
Let me assure the Minister that I am not, and I do not know if he is, but I do not think he is, an expert in trade mark procedure but I am assured by those who understand such procedure that there is a very great advantage in being what might be considered the moving application. If there has not been in any way user in relation to a trade mark and two people make their applications, it is perfectly clear that the one who files his application first should be the one primarily to be considered but where a particular mark has in fact been in use in the State for a period of at least two years, it seems to me that by such user the person concerned has got the right to a greater equity than the person who just comes in and files the application shortly, at an earlier date in point of time for application, but at a later date in point of time for user.
Where, for example, an unregistered trade mark begins to acquire a reputation in use, a rival trader could very easily think it worth his while to slip in an application to register a mark of a similar kind so as to benefit from the reputation of that unregistered mark that has been in use for some time. The established trader only discovers that such application has been filed after it has been filed and the effect of it is, therefore, that even though he has been using some similar type of mark for years and years, he is in fact second in point of time and his rival's action has gained the initiative and gained it, in my submission, completely unfairly.
The person who has been using the mark for years and years, under the well-established rule in relation to the word "may" in both the subsection itself and in the proviso to it, will find that he must stay back and allow his rival to proceed with the application and must then oppose it.
I suggest that the Controller should have a clear discretion under the section of the Bill, clearly, in his own judgment, to decide which of the two applications is the more meritorious. Having so decided—and one of the best ways of deciding is user here— then the more meritorious application on a prima facie basis would proceed and the person whom the Controller deemed to be less meritorious on the first prima facie examination would be in a position of opposing. The effect of that, I think, would be also that you would find that some applications would not be opposed at all. If there has been genuine user in the State for a period of at least two years of a similar mark, I imagine that anybody else, when he was aware of that and when he was proceeding to application, would find that it would not be worth his while trying to jump in and to pull a quick one over anybody concerned.
The position in Britain, I understand, is the same under this section but entirely different under the procedure. There is a specific procedure there that conflicting trade mark applications are jointly cited in the one application and that the parties concerned come to a joint hearing on a primary basis, when the Registrar there decides which of them has the greater merit. That can result in additional cost and it is in an anxiety to preserve the point of primary responsibility and primary merit that I have tried to relate it to something that is quite specific and easily proved and will not mean a double hearing, that is to say, existing user, and I would press the Minister strongly to accept the amendment.
The amendment, I regret to say, is not acceptable. In the first place, to deal with the interpretation of the word, "may"—Deputy Sweetman referred to decisions to the effect that "may" must be regarded as mandatory on the person in connection with whom it is used in the statute. Nevertheless, I am advised that there is a British decision to the contrary, in which it is stated that the use of the word "may" gives a Controller in this context absolutely unfettered discretion in dealing with two rival trade marks in this connection.
Could the Minister give me the reference to that decision? He can send it to me at a later stage so that I can read it.
I will get the decision for the Deputy shortly, I hope.
Before the Report Stage will be adequate.
I can probably get it for the Deputy now.
The Minister gives me greater credit than I deserve for reading a decision quickly.
I will give the Deputy the title of it—Pirie's Application, Reports of Patent Cases, Volume 50, page 147.
Thanks.
If that interpretation of the word "may" is the correct one, then I suggest that the Controller has all the discretion necessary to take into account the difficulties outlined by Deputy Sweetman. Apart from that, the purpose of this proviso is to save applicants who are willing to have their rights determined by the Controller from being subjected to the incurring of heavy costs, in court. For example if one of the rival applicants were a powerful organisation, a business concern, then they could bring the less powerful, ordinary trader perhaps, into court, a prospect that may not be acceptable or that the smaller trader may not be willing to undertake. I submit, therefore, that the section as it stands achieves the purposes to be served to the best effect.
Let me say at once that I disagree entirely with the last remark of the Minister. It is going to have exactly the reverse effect. But, if the word "may" can be interpreted in the way the Minister has indicated it was interpreted in that case, and which I shall look at before the Report Stage, then I will come as far as this with the Minister, that the procedure then should be regulated by the rules and not by the section itself and if it is covered to that extent in the section, then I will press him very hard to go in relation to the rules to the pitch which applies on the other side of the water.
The Minister will agree with me, certainly, in this, that in relation to trade marks perhaps more than any other section of the law with which he is concerned, except perhaps copyright, it is desirable to ensure as far as we possibly can that our law here corresponds with similar law in other countries. It is one of the things in respect of which it is wholly undesirable to have any avoidable differences in the national laws as between one country and another. Trade mark copyrights are things that flow over national boundaries and, therefore, we ought to ensure that whatever practice is going to be operative in one case is likely to be operative in the other in so far as we can without giving anything away ourselves.
As I understand the situation, the position on the other side is dealt with by regulations and if "may" is going to be interpreted here and can be interpreted in the manner suggested, then I think I would come this far and say that it should be in the regulations and what I have in mind should be included.
I will consider that in connection with the Report Stage.
Fair enough.
Amendment, by leave, withdrawn.
Section 19 agreed to.
Section 20 agreed to.
SECTION 21.
Amendment No. 5 not moved.
I move amendment No. 6:
To add to the section a new subsection as follows:
"(2) This section shall not apply to a trade mark which is shown to the satisfaction of the Controller to have been continually used in the State for a period of not less than two years immediately preceding the application."
I do not think it matters in the slightest which amendment I move. Even if the principle were accepted by the Minister, I am certain it would require to be drafted in a slightly different way. Section 21, as I indicated to the Minister a moment ago, to some extent follows the new enactment of Section 17. By virtue of that section the alterations in the qualifications laid down in the 1927 Act concerning regulations in Part B will now come into effect. As introduced in the Bill, Section 17 provides a dispensation with the stipulation that in Part B only trade marks used for two years prior to filing will be included. Now, however, under Section 21 the Controller is given a power to require a disclaimer of any elements in a Part B trade mark which he considers to be of a nonrestrictive character. As I understand the situation, and I speak with very great reserve in this matter because I do not purport in any way to be an expert on it. Part B was produced in 1919 for the purpose of enabling trade marks to be registered if they had been genuinely in use for the past two years. Although, perhaps, they were not in themselves inherently distinctive, there can be a distinctiveness acquired by extensive use which would otherwise have qualified them for registration in Part B, provided, however, they were of such character that they could become capable of becoming distinctive in the course of years. The Minister himself, I am sure, in his professional capacity is fully aware of all the distinctions drawn by the late Mr. Justice Meredith in the Leathermack case of Richardson and Weiner in 1934. The Minister has the advantage over me that it was subsequent to 1934 that he was at school learning his law, whereas it was prior to that that I was there. I am quite sure that when learning his law regarding trade marks—
I do not think I was at school the day Mr. Justice Meredith ruled. I was absent.
Perhaps I gave the Minister a little bit more edge on me than he deserves.
I do not mean it that way.
The law is very fully set down in that case as it was then and now we are going into a slightly different type and as I see it the effect of Section 21, if it is not amended, is going to be that we will run the risk of cluttering up the register with unnecessary disclaimers. It is accepted, of course, that in Part A, where a registration is to be under Part A, the mark has acquired its distinction by use and, accordingly, disclaimer is, in relation to all Part B applications, going to be placed on the level of unused trade marks. That does not seem to me to be just per se the correct approach. The fact that a mark may have had, up to the point of consideration, considerable use and may be well under way towards having acquired a distinctiveness, now under this new proposal cannot prevent the imposition of disclaimer requirements.
It seems to me that that is totally inequitable and totally wrong and if carried to its logical conclusion it will mean that every application for registration in Part B should be accompanied by a disclaimer. If it had anything completely distinctive in it, it would be entitled to be included not in Part B but in Part A. It seems to me, therefore, we have provided something to make the situation clearer and to show that there is a genuine benefit to be gained by a period of use in the State before the application. I am not in any way tied to the period of two years. If the Minister takes exception to my period of two years, that is a matter on which I would be perfectly prepared to meet him but it does seem that it is wrong that there should not be a benefit to be gained, to be acquired, for cases where there has been a suitable period of use as an unregistered trade mark in the country and that by so doing the unregistered mark has travelled a considerable part of the distance towards becoming completely distinctive in use and which would mean it could be taken in Part A.
The purpose of this disclaimer, as Deputy Sweetman knows better than I, is to ensure that so far as a trade mark with a composite picture is concerned — it might be an article with words, and either the article depicted or the words depicted or an article and words in ordinary use—no one person should arrogate to himself a proprietary interest in them. There are many examples and I do not want to give obvious ones that would identify particular traders or commodities but take an example of "Night and Day Sleeping Tablets." If the sleeping tablet is depicted in a particular way, it identifies these sleeping tablets as the goods of a particular manufacturer and if it is distinctive in itself, then it would be possible to register that sleeping tablet with the words "Night and Day" under it as the trade mark as a whole, subject to a disclaimer in respect of the words "Night and Day". I think it is only right that the public should be protected against the possible monopoly of the use of such ordinary words or ordinary objects by a particular individual even in the context of advertising goods, and in a composite way with other articles or goods.
I think it only reasonable in these cases that there should be a disclaimer and I think it reasonable to say that the fact that a person has been using a mark with these words or these articles depicted on it for a period of two years should not give him the right against the rest of the traders, the rest of the world and against the rest of the ordinary people to have a proprietary interest in the use of these words. That is the fundamental point, as I see it, and it is on that basis that I would regard the obligation of the Controller not to require a disclaimer in respect of the use of such articles or such words if the applicant for a trade mark containing them had been using them for a period of two years.
On the other point raised by Deputy Sweetman in connection with another section, that there is merit in having our law consistent with that of other countries, particularly Britain, with which we have very close trading relations, our Section 21 as it now stands and without Deputy Sweetman's amendment is the same as the law obtaining in Britain at present. Deputy Sweetman suggested that I might have some knowledge in the course of my legal practice of trade mark law. I am afraid I must admit candidly that I have not. I never had a trade mark case and as a practising barrister, I never had occasion to read trade mark law. Nevertheless, with my little knowledge of it, I am very much convinced by the force of arguments put to me that a two year user of ordinary objects or ordinary words in a composite mark should not entitle that person to exclusivity in respect of these objects or words.
I wonder does the Minister appreciate that the effect of what he is doing here is to take away the existing privilege for a person who has been using an unregistered mark here for a period of time. I think that is what he is going to do under this section and it seems to me that is the wrong approach. Let me at once say categorically that I personally am in the same position as the Minister in relation to trade mark law. There may be cases that were dealt with in my office but I have never dealt with them myself to that extent. Therefore, I am a complete novice in the matter. As I understand it, registration in Part B is at present obtainable for a trade mark which the Controller considers to be capable of distinguishing the applicant's goods, provided evidence is furnished by statutory declaration to prove to his satisfaction that the mark has been used here for at least two years prior to the filing of the application in connection with the goods therein referred to. Such registrations obtained in Part B are, I think, under Section 92 of the existing Act, excluded from the disclaimer section.
The Minister will agree that experience has shown that in many cases the Controller should be able to judge whether a mark is capable of distinguishing a trader's goods or not, without reference to the question of whether the mark was already used or not. When the British amended their Act in 1938, the necessity for two years' use before registration in Part B was removed and the possibility of inserting a disclaimer in all Part B cases was introduced. That is the situation as it is there and that is the scheme we are proposing to make here. Let me say that the Minister is dealing with this Bill in 1963. All my information means that the present law in relation to this particular point and the position that has been created by it in Britain has given so much dissatisfaction there that it is likely to be amended in the very near future. There does not seem to be much point in our introducing, merely for the sake of conformity, a provision here when it is accepted on the other side that the provision is most unsatisfactory.
As I said before, I want to see national law on this basis coincide as far as possible with the law elsewhere but that does not mean that we must absolutely follow a provision that is accepted elsewhere as being unsatisfactory and I am advised that the Minister will find, by inquiring, that over a wide field in Britain this provision has been universally condemned and that it is almost certain to be amended in the near future. The trend there has been to use Part B merely as a repository for marks which are not quite up to the standard of Part A and the effect has been that the Controller must refuse to consider the trade mark to be capable of distinguishing a trader's goods, unless he is furnished with substantial evidence to show that it has proved itself to have that capability by actual use over a period of years.
Therefore, as I see it, the position is that a trader who could previously have obtained registration in Part B without disclaimer for a trade mark which he has genuinely used can no longer do it and that the effect of this provision is that he must now disclaim something that he has used over the years and used particularly successfully.
Let me take an example of something that is a trade mark. We can take it by analogy. We all know in relation to one type of goods a dog is depicted with certain words under it. The analogy that the Minister has made about day and night could equally apply to the fact that a dog was a thing of such general application that it would be entirely wrong, if a gramophone company were starting now, to put "His Master's Voice" and a dog as a trade mark. But everybody will accept that is a proper trade mark. The words "His Master's Voice" are ordinary words; the portrait of a dog is an ordinary, everyday matter; and there would be just as much rhyme and reason to refuse that if it were a new case now as there would be in the case the Minister mentioned.
As I see it, the position is this: in relation to a trade mark, there must be something in the mark that has a very specific identity with the goods concerned. In the Minister's case, it was that the name of the tablet was to be in some way or other embossed or printed on that tablet so that you could see it and the surrounding words were then to be added. That is all right. But it seems to me one is pushing the matter very far indeed if you say it is proper for a person to take exactly the same design and to change that design merely by a small trifle and that by so doing it under this section you will prevent passing off actions. That appears to be all wrong.
We all know that in an infringement action, what the defendant has to show is that the action complained of is not likely to deceive or lead to confusion. "User" because it happens to bring in something in everyday life, means in fact you can register no new mark at all. In relation to any article, there is bound to be some word in the display of the mark or in the mark itself that is in everyday use, whether it is the dog or whether it is the word "voice".
Frankly, I thought I understood the meaning of the section; but since the Minister has given us the explanation he has given, I do not understand where he wants to travel at all. I want to see the position of securing registration in Part B for a trade mark which the Controller thinks to be capable of distinguishing the applicant's goods, irrespective of whether that trade mark has been previously used or not. But I want to preserve, at the same time, that the Controller is entitled to require a disclaimer only in those cases where the trader does not prove bona fide use of the mark in the country for at least a period of two years. If there has been bona fide use for at least a period of two years, I think it is reasonable that the person who has used that should get the benefit of such user. I cannot understand how in any case against that argument you are going to avoid having under Part B a flood of disclaimers which will ultimately completely clutter up the whole working of the Act.
A person making such an application for the registration of a mark two years in use must not only prove bona fide use but must prove bona fide distinctiveness. Use and distinctiveness of a mark are not necessarily the same. Where a mark is proved distinctive through use, a disclaimer is very seldom asked for in connection with a particular part of the mark. In fact, the Controller has no power under this section to require a disclaimer for part of a mark which is distinctive of the applicant's goods.
On the point raised by the Deputy as to whether the British intend to change the law, we have consulted them on this matter and our information does not coincide with Deputy Sweetman's information. In the event of an application being made for the registration of a mark, which, on the face of it, might require a disclaimer but by reason of its being in use for two years, the Controller did not have power to seek a disclaimer, he would have power to refuse to register the mark. I suggest that is in case of people seeking to register marks that have had two years' use without that degree of distinctiveness established that would otherwise be required. The fact that the power of disclaimer in all these cases, including cases in which there is proof of user for two years, should reside in the Controller, is, I suggest, in easement of the traders themselves. It would be wrong to tie the Controller's hands. If a person could establish user for two years without ever having established or ever being likely to establish the distinctiveness of such a mark, it would be wrong that such a mark should be registered willy-nilly without a disclaimer. I regret I cannot accept the amendment.
I should like further to consider the Minister's remarks when I see them in the record, because I am not au fait with some of the points.
Amendment, by leave, withdrawn.
Section 21 agreed to.
Sections 22 and 23 agreed to.
SECTION 24.
I move amendment No. 7:
In page 13, between lines 53 and 54, to insert a new subsection as follows:
"(5) Where the ownership has been assigned, the application for registration may be amended by substituting the name of the new owner upon such evidence of assignment being made available as the Controller may require."
This arises partly here and partly in relation to another section. I put it down on this section because this was a specific section dealing with applications for registration. We will find later on in the Bill the provisions dealing with the assignment, whether of the goodwill or of the business appertaining thereto. As I understand those later provisions, the effect of them is that if there is, shall we say, a take-over of a company during or after an application has been lodged, the effect of that take-over means that the application itself cannot be proceeded with. What has to be done is that the former company must proceed to complete its application and then, having proceeded to completion with its application, at that stage, after acceptance, deal with the assignment to the new concern.
That seems entirely undesirable. It seems to me we must recognise that in these modern days, there is a great deal of merger of companies, particularly companies dealing with trade marks and the like. It is far more logical and efficient to provide that the application itself already on the stocks can be amended into the name of the new owner making application in this country without the necessity of proceeding with the application to the end in the old name. The Minister may ask why the existing application would not be withdrawn and a new one filed. That could be done, but would it not be losing the priority that had been attained? I think it would be cheaper, in relation to the business as a whole, if the suggestion I make is incorporated either here or in Section 29. I thought it more proper to put the amendment down for discussion on this section which deals solely with applications.
The amendment as it stands provides that applications for registration of trade marks could be amended by substituting the name of the new owner on evidence of assignment being made available to the Controller. The Bill provides that the trade mark is deemed to be registered as from the date of the application itself and it follows that the registration must be in the name of the person or persons who made the original application who was, at the time of the application, the rightful owner of the mark.
Why? What we want to provide is that the trade mark is registered as at the date of the application. Does it matter if it is registered in the name of the original applicant or in that of the amended applicant?
Present practice enables persons to acquire trade marks while they are in the course of being examined for registration. To do what Deputy Sweetman suggests would create difficulties which would be much more serious than whatever difficulties are at present encountered, if any. The amendment proposes that it would be confined to applications for registration of used marks.
In all cases, but particularly in cases of used marks.
It would seem to me that in relation to new marks, there would be no right of assignment of an intention to use a mark, but again, from the point of view of uniformity between different systems, I understand there is no similar provision in Britain's law. I cannot envisage at this stage, nor have I had time to check, what complexities would arise in the event of this system of assignment being permissible during the course of the examination of an application for registration, but I am told it would be necessary to provide for partial assignment similar to the provision written into a later section, Section 29.
My information differs in relation to Section 29 which, I am told, does not correspond with the British section. If we differ on that, the Minister will agree that we must also differ on the amendment.
In any event, I am advised that to assign during the course of the examination would give rise to complexities and it would not seem necessary to permit these complexities to arise when there is a sensible way of dealing with the case where it is particularly desired a mark would be registered in the name of someone other than the person who originally applied for it. The sensible way would be that the person who has first applied might withdraw his application in favour of the new applicant who would, at that time, file a new application.
Then he loses the priority. Supposing there had been another application in the interval?
It is unlikely any other application of a similar nature would come in in the meantime because you have the Controller there to watch these activities. I suggest that even though I cannot put forward any convincing arguments through, perhaps, lack of personal knowledge, Deputy Sweetman might accept the advice I have that it would be better to leave the section as it stands without amendment.
Might I suggest the Minister might send me a note between now and Report Stage outlining the difficulties to which I have referred, and which I fully appreciate it would be unreasonable to attempt to resolve here now because of their complexity, and then I will have time to consider whether I shall put down an amendment or not on Report Stage?
I shall certainly do that.
Amendment, by leave, withdrawn.
I move amendment No. 8:
In subsection (5), page 14, line 1, to delete "one month" and substitute "two months".
I think we could agree to discuss amendments Nos. 8, 9, 13 and 14 together.
I agree. They are similar.
The purpose of my amendment is to meet, if I can, as a compromise the amendments of Deputy Costello. One obvious reason for not deleting the word "court" and substituting for it the word "Controller"——
We are not discussing that amendment. We are discussing only Nos. 8, 9, 13 and 14.
I am sorry; I misunderstood. On the amendments we are discussing, I suggest that this two months' proposal is a reasonable compromise between my original one month and Deputy Costello's three.
Amendment agreed to.
Amendment No. 9 not moved.
I move amendment No. 10:
In subsection (5), page 14, line 3, to delete "Court" and substitute "Controller".
This section permits extensions of time for appeal to the court from decisions of the Controller, because it might be considered inadvisable for the Controller to have any control over the time in which an appeal is taken against his decision. It is accepted it would be more convenient if the Controller had jurisdiction in such matters, and if the House thinks there is no objection, the purpose would be achieved best by enabling the Controller to grant a limited extension of the time for an appeal in respect of an application which he had refused.
That is a perfectly fair way of meeting us.
Amendment, by leave, withdrawn.
Section 24, as amended, agreed to.
SECTION 25.
I move amendment No. 11, on behalf of Deputy D. Costello:
In subsection (5), to add to the subsection the following: "and shall make a written statement of the grounds of his decision".
May we take Amendments Nos. 11 and 12 together ?
They are consequential, according to my brief. I might mention my point of view in connection with amendment No. 11. Written statements on grounds of the Controller's decisions are not necessary in all cases. The practice for some years has been to issue an opposition decision in the form of a short written statement and to furnish a full statement of grounds if application is made by either party and a fee paid. Written grounds are also prepared if the proceedings result in some change or clarification of practice which it seems desirable should be published in the Journal for general information. To make a full statement obligatory in all cases would unnecessarily increase the work and costs of the Office. That is the principal reason why I must resist the amendment.
Is the Minister aware that subsections (5), (6) and (7) are not included in the British Act, which is Section 18? If the Minister argues uniformity in one case, is there not a greater obligation on him to keep uniformity where it is only a question of filthy lucre?
Subsection (5) is not in the English Act. It was in our 1927 Act.
I gather that the Minister's idea was to make this Act streamline with the British Act. None of these three subsections is in the British Act.
The Deputy raises that point. I brought him home to it when he suggested a departure from it in connection with another section.
What is the amount of the fee that would be involved?
About two guineas, I understand.
Amendment, by leave, withdrawn.
Amendment No. 12 not moved.
I move amendment No. 13:
In subsection (7), page 14, line 58, to delete "one month" and substitute "two months".
Amendment agreed to.
Amendment No. 14, by leave, withdrawn.
Section 25, as amended, agreed to.
Section 26 agreed to.
SECTION 27.
Question proposed: "That Section 27 stand part of the Bill."
Can the Minister explain the reason for having two periods? Would it not be more satisfactory to have one uniform period of, say, ten years than the different periods of seven and 14 years provided by the section?
This subsection, which corresponds to Section 105 of the 1927 Act, reduces the period of initial registration from 14 to 7 years. This proviso allows marks already on the register to retain their initial period of 14 years. It has been found in practice that very many trade marks have fallen into disuse long before the expiry of the present 14 year duration. Some of these trade marks were intended, even at the time of registration, for use for a short period only to push a new line of goods or an old line in a new get-up. After these marks have fallen into disuse, other persons who wish to use the same or closely resembling marks on their goods may not do so without going to the trouble and expense of an application for removal. On the other hand, trade marks which remain in use for 7 to 10 years are likely to continue on the register indefinitely and renewal periods of substantial length are generally justified. The Committee of Inquiry recommended a period of five years with renewals for the same period. The Association of Registered Patent Agents favour a uniform system of an initial period of 10 years with renewals of the same length. It is considered that practical difficulties might arise from such changes and on balance the present proposal seems to offer a reasonable solution from all points of view concerned. I understand it has worked satisfactorily elsewhere, in Britain and Australia.
We shall consider it.
Question put and agreed to.
Section 28 agreed to.
SECTION 29.
I move amendment No. 15:
In subsection (6), page 18, line 27, to delete "marks" and substitute "mark".
It is only a printer's error, I think.
That is right. It is just to achieve consistency.
Amendment agreed to.
I move amendment No. 16:—
In subsection (7), page 18, to delete all words after "Journal" in line 47 down to the end of the subsection.
The last three lines of Section 29 provide ".... and, if the Controller so thinks fit, the assignment is advertised in such manner and within such period as the Controller may direct." I think it is unnecessary to have any advertisement at all other than in the official Journal. Experience has shown not merely here but everywhere else that advertisement in the official Journal is ample for all requirements. Additional advertising would only add expense. I might again come to something on that about which the Minister and I would each know more than we do know about the trade mark procedure—and certain other Deputies in the House as well. In relation to Chancery suits, for example, there is provision that there must be advertisement. The effect of that provision is that the Examiner—if you like, not wishing to show partiality in any way —always directs that there must be an advertisement in each of the three daily papers. It is quite unnecessary.
Four.
Not in Dublin. I am referring purely to Dublin. This is not one of the occasions when Cork is deemed to have travelled to Dublin. But it could happen. If, at some stage, the person concerned in such Chancery matters were one of the many who have travelled from the south to the north, we would have the four daily papers. Inevitably, it has meant that either you have choice between the daily papers or you have advertisement in all three. If you have this provision here, you will have the same thing and it will very substantially and unnecessarily increase the cost.
There is an official Journal. Anybody who has any reason to want to have information about these types of matters will look at the official Journal and will get what he wants there. The Minister also will agree that it is better to have certainty in relation to the provisions, so far as we can. This makes the procedure vague and uncertain. I would suggest it is entirely unnecessary and that the advertisement in the official Journal meets this very specialised type of case.
The purpose was to avoid any deception in the case of free assignments. However, I accept the Deputy's argument and accept the amendment.
Thank you.
Amendment agreed to.
Section 29, as amended, agreed to.
Sections 30 to 33, inclusive, agreed
SECTION 34.
I move amendment No. 17:
In subsection (1), page 20, lines 43 and 44, to delete "consisting of an invented word or invented words".
This raises an issue about which I should like to have some explanation from the Minister. It comes back to my friend I mentioned a minute ago. I would suggest that the principle that a well-known trade mark applied by a trader other than the owner of the trade mark who goes outside the normal range of articles manufactured under the mark would be misleading is not confined to invented words but applies to any type of trade mark. It is precisely the example I quoted earlier for the Minister. "His Master's Voice" dog symbol of the gramophone company applied to any article of furniture or domestic article would suggest a connection with the gramophone company which would be entirely improper. The whole principle that is here of defining, or shall I say restricting, the defensive trade mark to the invented words or words alone seems to be one that is not maintainable, certainly on my reading of the section.
While I am not suggesting that the example given by the Deputy is not in point, the provision in the Bill refers to invented words rather than words such as "His Master's Voice". This provision is new and follows a provision introduced into the British law in 1938. It is expected to be of benefit more to large foreign corporations than to Irish traders. An examination of applications to ensure compliance with the provisions will not be simple. This work would be greatly increased in complexity if the provisions were to extend beyond marks which are invented word marks. Marks which are invented word marks are the brain-children of their inventors and have a degree of distinctiveness all their own and there is a strong case for providing means whereby they can be given a wider statutory protection. No such case exists in respect of other kinds of marks which can consist of surnames, geographical names and even ordinary dictionary words or commonplace devices which are registered on the basis of use and distinctiveness in respect of a very limited range of goods and which would not be registrable except for such goods.
I take it, therefore, the Minister really founds his case on the fact that this only refers to invented words and not existent words?
That is right.
I should like to think about that again.
Amendment, by leave, withdrawn.
Section 34 agreed to.
SECTION 35.
I move amendment No. 18:
In subsection (1), to delete all words after "provided that" in line 36, down to the end of paragraph (a) and substitute "such registration would not be contrary to the public interest."
Has the Minister any objection to it?
The effect of this amendment would be to delete the provision enabling the relationship between parties to a registered user arrangement to be prescribed and to introduce into subsection (1) the public interest requirement which is already provided for in subsection (5) of this section. The deletion of the provision which enables the relationship to be prescribed would leave the Controller with a discretion to decide in each individual case whether the relationship between the proprietor and proposed registered user or whether the conditions or restrictions under which the latter is to use the trade mark were such as to ensure that the use of the mark by the proposed registered user would not be contrary to the public interest as required by subsection (5).
While the Controller would then have a complete discretion, on the face of it, to accept any relationship or arrangement consistent with the public interest, the fact is that experience has shown, in connection with the working of the corresponding provisions of the British Act, that satisfactory relationships or arrangements between the parties have crystallised into the categories which are proposed to be prescribed in the rules, that is, financial control, control by agreement and patentee-licensee control.
In practice, even with the proposed amendment, the Controller would find himself able to accept only those arrangements which fall into one or other of the categories it is proposed to prescribe. The advantages of prescribing relationships are that the trading public and their advisers would be able readily to ascertain from the rules what kinds of relationships are likely to be accepted and that the task of the Office in dealing with registered user applications would be greatly simplified. In effect, it would help the trader.
That is the Minister's view. There is a very different proviso here from what arises in Section 28 of the British Act. Section 28 (5) of the British Act says:
if the registrar, after considering the evidence furnished, is satisfied that in all the circumstances the use of the trade mark would not be contrary to the public interest.
It is presumed that because of that Deputy Costello submitted this amendment to follow the same lines. I am a little bit worried by the use of the phrase "prescribed relationship". There is going to be a relationship prescribed by the rules between the proprietor and the proposed registered user. I should like to see that relationship prescribed in the Bill or not at all. I do not like a suggestion of having a relationship prescribed in rules which will completely govern the whole of Section 35 and to have a situation arising in which the first time anyone knows what that prescribed relationship will be is when rules are made. We all know, human beings being what they are, that once the rules are made, it will virtually take an earthquake to have these rules changed. There is, of course, the tabling provision by which they could be annulled and that provision, while it is useful in terrorem to ensure that no outrageous rules will be laid down, does not at the same time provide an arrangement by which there can be detailed consideration by anyone other than the Minister and his personal advisers.
In relation to a typical restriction like this, that is entirely undesirable. If the relationship were to be prescribed by rules, it should be prescribed only after the rules have been promulgated in draft, laid before the House in draft, and generally publicised in draft, so that everyone will have an adequate opportunity of considering them before they actually come to be made. In that way, it would be realistically possible to provide amendments. Once the rules have been made, power to annul does not provide an efficacious means of coping with small matters such as this.
I do not know at the moment, nor does the Minister, what he proposes to be a prescribed relationship, and I object to passing a section not knowing what it will mean. This is vital to the section. It would be highly dangerous to pass it as it is. It is far from clear. I suggest it would be much better to leave the phraseology in the manner which Deputy Costello has provided, or alternatively to provide something entirely different as a means of publicising consideration of the draft before the ordinary tabling and annulling powers of the section——
It might help the Deputy if at this stage I read for him what the proposed requisite relationship would be.
That would go a long way.
Having gone so far, I suggest the Deputy might consider, when he sees the record, what action he might take. I suggest that to accept Deputy Costello's amendment would give the Controller completely wide discretion and take any control of this registration of users out of the Minister's hands.
I am obliged to the Minister, but before he reads it, would he say did he give any consideration as to whether he would incorporate such prescribed relationship in the Bill itself?
Yes, it was considered but it was thought better to incorporate it in the rules rather than in the Bill itself. I will read it. It is not very long. The requisite relationships are:
(a) That the registered proprietor of the trade mark has control over the proposed registered user;
(b) that the proposed registered user has control over the registered proprietor of the trade mark;
(c) that some other person has control over both the registered proprietor of the trade mark and the proposed registered user;
(d) that there subsists between the proposed registered user and the registered proprietor of the trade mark an agreement in writing specifying conditions whereby the registered proprietor shall be entitled to ensure that the goods in relation to which the trade mark is to be used by the proposed registered user conform to characteristics specified by the registered proprietor;
(e) that the proposed registered user is to use the mark in relation only to goods manufactured by him and protected by patent under which he is a licensee and which is registered in the name of the registered proprietor of the trade mark.
Those are they, and I suggest that having consulted them in due course, Deputy Sweetman might reconsider his position.
So long as the Minister does not ask me to give an impression off the cuff, I am happy.
I need time myself.
Obviously; it is a tongue-twister.
Amendment, by leave, withdrawn.
Question proposed: "That Section 35 stand part of the Bill."
Did the Minister give any consideration to an addition in some shape or form to subsection (7). Certainly the section should include something equivalent to subsection (7) of the British Act of 1928. I cannot understand why there is no provision here similar to that protecting confidential information. It seems to me that without a qualification similar to the British one, there is a real danger that confidential information supplied in connection with the registration of user would be disclosed to a trade rival. For that reason, if for no other reason, I think a subsection like the British subsection should have been included. I do not know whether the Minister gave any specific attention to that but I should like, in any event, to mention it now so that, if necessary, we can submit an amendment on those lines on Report Stage.
I should also like to ask the Minister why, in relation to subsection (4), he did not specify the requirements. As I understand it, again, the form in the British section is far more specific than the form the Minister prescribes here. I suggest it might be desirable for the Minister to adopt the procedure in relation to that section which he adopted a few moments ago of letting us know what he has in mind to prescribe in the rules.
I shall look at the latter point. I understand that close consideration was given to the other matter raised by the Deputy and that it was decided that rather than specifying one matter that should be regarded as confidential, no one matter should be included. The simple answer is that consideration was given.
Where is the protecting provision? It seems to me that information must be given out in the absence of expressed prohibition.
That is not my understanding of the import of the Bill. I shall consider the suggestion in connection with subsection (4).
Where is the general protecting provision for confidential information?
There is no specific provision. It is implied. In so far as a specific provision is required it would be in the Official Secrets Act. It is not written into this Bill.
I do not think that is the same thing at all. That is dealing with what one might term unauthorised disclosure. I am thinking in terms of disclosure, in accordance with the proper processes here, to the other side, which is a different thing. The Minister, by referring to the Official Secrets Acts, is referring to the possibility of an official passing out information that should not be disclosed. That is not what is in my mind. What is in my mind is that, unless there is a specific provision, the confidential information must be given to the trade rival.
I am afraid I have not prepared myself for this particular matter. I shall do so.
We will think about it before the Report Stage.
Question put and agreed to.
Sections 36 to 38, inclusive, agreed to.
SECTION 39.
I move amendment No. 19:
In subsection (3), page 24, lines 26 and 27, to delete ", or in any other case in which he considers it to be necessary in the public interest,".
As I understand this section, under subsection (3) the Controller has the right himself to apply to the court in the case of fraud. I agree that that is entirely right and proper. But the position here seems to be that there is power given in subsection (2) to amend the register for any case other than fraud and other than the public interest. If that is so, then it seems to me that subsection (3) is just verbiage and quite unnecessary. I cannot see at all why there should be anything more than the power to rectify in the case of fraud or in the case of the public interest, or, possibly, even pure clerical errors. If the register is kept properly, and it should be, and I suggest it must be kept properly, there should be no necessity whatever to provide for amendment. This will mean that the Controller is given a very vague and far-reaching power under subsection (2) to amend in any way that he thinks proper. That is entirely wrong. It is allowing the interpretation and the correctness of the register to depend solely on his personal view. I am not now making any comment on any particular Controller in stating that. Where there has been fraud, we all agree that the register must be amended. If it is necessary to have amendment in the public interest, I think we would all equally agree, but I simply cannot see why there should be the very, very wide power of amendment given by subsection (2) of Section 39 to both the court and the Controller. If the power in subsection (2) were restricted to the court alone, then I would not have the same objection to it, but I do not think it is proper that the Controller should have such a wide discretion vested in him.
Inevitably the discretion will be a matter for the court because, if the Controller applies to the court to rectify the register as a matter of public interest, then it will be for the court to decide whether, in fact, it is a matter affecting the public interest. I think the House will agree that the public interest must have priority over the interests in general of trade mark proprietors or of a particular trade mark proprietor. The fact that the rectification can only be effected by the court ensures that the individual interests will be protected. There are many cases in which the public interest might be affected; for example, one such case would be a trade mark being registered which could cause confusion in the public mind. In such a case it would obviously be in the interests of the public that the Controller should go to the court. I repeat that the court will be the authority to decide whether or not the submission to it is in the public interest.
If that were the effect, I would be with the Minister, but I think under subsection (2) it is not. I think the Controller has the right to decide the question.
Subsection (3).
I know, but under subsection (2) the Controller has, I think, the right to decide the question of the rectification, and then go to the court, and the court must give effect to such decision.
I think he clearly has that right under subsection (3), if he considers it to be in the public interest, he being the Controller.
But, having gone to the court, I think the court is then bound by the amendment he has made under subsection (2). If discretion were left to the court, I should not mind in the slightest. Does the Minister understand what I am getting at?
I do. The Controller would have to apply to the court, the question of public interest would have to be established and the court would have no right to question that. Is that it?
Yes. In other words, the Controller has made the change. It is in the public interest he makes the change, and, he having made the change, the court must accept it. Perhaps the Minister has got my point now and will consider it between now and the Report Stage.
Very well, though I am advised that subsection (2) is not affected by this.
If that is so, then I should like to know what it means.
I will check on it between now and the Report Stage.
Amendment, by leave, withdrawn.
Section 39 agreed to.
Section 40 agreed to.
SECTION 41.
I move amendment No. 20:
In subsection (1), page 24, line 53, to delete "the trade" and substitute "a trade".
It is a massive amendment.
Amendment agreed to.
I move amendment No. 21:
In subsection (3), page 25, line 9, before "error" to insert "clerical".
I do not understand why the Controller should have the power to correct anything that he considers to have been an error. It seems to me that Section 41, subsection (3) is new and perhaps the Minister would confirm that it is new?
Yes, it is new.
It gives the Controller an extraordinary power to interfere with an entry in the register which he thinks may be wrong. He is not bound in any way, as far as I can understand, to make any reference to the party who is vitally concerned, that is to say, the registered proprietor of the trade mark in question. I put it further to the Minister that if a genuine error has been made the person most anxious to have it corrected should be the registered proprietor because it is on the entry that his rights depend and he, naturally, if there has been an error is the person who should come along and say so. But, in this subsection it is "of his own motion". Of his own motion the Controller has got power to do this. The prescribed notice is a very milk and watery way of giving the other person the opportunity to object to the matter.
I suggest that there should be some restriction, perhaps by providing that he can correct any error on the consent of the registered proprietor—to do that, I would be completely agreeable—or, alternatively, that he can correct something that is so obviously a clerical error that it is beyond question; but, if it is a question of going beyond that, that before doing so he must have consent.
Take the subsection as it is. Supposing the Controller considers there is an error in the entry and he gives the prescribed notice to the registered proprietor and the registered proprietor comes along and says, "No, there is no error. I think that is the entry that there should be", the Controller still has the power under this subsection to correct the error. Now, that is obviously wrong. If the registered proprietor objects and says it is not an error, that the Controller may think it is an error but that he does not, obviously, there must be some provision to cover a case like that. While I am prepared to agree that something that is obviously a typist's, clerical or printer's error or something obvious like that, could be dealt with in this fashion, the power to decide whether it is an error in substance or not could not be left open in the way it is.
There is that further case in which a man who is the proprietor of a registered mark might suffer by a clerical error and naturally it would be only in his interests and it would be right that the Controller should have power to correct that and not at the expense of the man himself. In this way the Controller could proceed to have an entry corrected without such expense and if the man felt himself aggrieved there is always the power to appeal. As well as that, the registered proprietor would have to get notice of the intention of the Controller to have this correction effected but there is the contrary case where, due to genuine error in the Controller's office, a registered proprietor would get in his registered mark something more than he would be entitled to by reason of the error and it would be only just then and in the interests of the public or in the interests of other proprietors of registered marks that might be affected that the Controller should have this power in those circumstances also. On both scores it is, I submit, not inequitable that the Controller should have power to correct an error after due notice given to the proprietor of the mark and subject to appeal to the court.
Where is the appeal?
Section 56, I understand, onwards.
I do not think it covers this section. I do not think this is a decision.
Section 56 says:—
An appeal shall lie to the Court from any order or decision of the Controller under any provision of this Act (not being a decision of the Controller under Section 10...)
—that is excluded.
I do not think this is a decision. If the Controller decided under subsection (1) of Section 41, it would be a decision that he was not going to do it but I do not think where he is going of his own motion that it is a decision.
If the Deputy looks at Section 57, he will see that the court in dealing with any question of the rectification of the register shall have power to review any decision of the Controller to make a new entry.
I still do not think they have got the right to appeal to the court.
I understand that anybody aggrieved can go to the court to rectify the register. However, if the Deputy would agree that as long as there is obligation to serve notice and as long as there is right of appeal the registered owner is safeguarded against damage to himself or other registered owners of trade marks are safeguarded against the particular individual getting more than he should have got, I submit that sufficient is done to serve both interests without limiting the error to a clerical error.
There is, of course, the difficulty in relation to these cases that you are not considering appeals in the sense of appeal in the ordinary civil case because in the ordinary civil case if you appeal because you know you are right and if you win the appeal, somebody else has the pleasure of paying you the costs involved. In this case you never get costs; you always have to bear the costs of going on the appeal against the decision of the Controller. I will go so far with the Minister as to say that if there is under subsection (3) the right of appeal to the court by the proprietor, if he disagrees with the judgment of the Controller in the matter and says, "No; I will not accept that that is a correction that should be made but let the court decide" and if the court decides that the Controller was right, then the registered proprietor pays the costs and if the court decides the registered proprietor was right and the Controller was wrong, let the Vote for the Department of Industry and Commerce pay the costs. Otherwise, I suggest that the subsection should be restricted to clerical errors alone.
Costs in any particular application to the court are matters for the court itself. Costs follow the event, but not in all cases.
But not under this code. In how many cases in the past ten years, can the Minister say, has the Controller been directed to pay costs?
I do not know if there are any.
Exactly. I think the answer is that there are none, and the position is that any time anybody has to go to the court to correct the Controller he has to do it at his own expense. That is unfair.
Subject to checking whether there is a right of appeal against the action of the Controller under this section, I am afraid I cannot accept the Deputy's amendment.
I did not quite understand.
I said that subject to my checking that there is specifically a right of appeal from an action of the Controller taken under this section, I do not propose to accept the amendment.
I agree that it is entirely desirable to check on the question of the appeal. To that extent, we may leave the battle to another day. I do say that it is unrealistic and unreasonable to provide that a person must at his own expense go and get the court to say to the Controller, "You must not correct that because it is not an error at all". As I say, we shall leave it to another day.
Amendment, by leave, withdrawn.
Section 41, as amended, agreed to.
Sections 42 to 47, inclusive, agreed to.
SECTION 48.
Question proposed: "That Section 48 stand part of the Bill."
Is this a new or an old section?
There was a similar provision in the 1927 Act.
Are the directions of the Attorney General published in such a case?
No, they are not published.
In other words, it is merely a cheap means of the Controller obtaining the advice of counsel? Would that be a fair description?
I do not know, but if the decision, or the opinion, which the Attorney General has conveyed would have general interest, then publication would be likely. I believe there have been occasions when opinions have been published.
Question put and agreed to.
Section 49 agreed to.
SECTION 50.
Question proposed: "That Section 50 stand part of the Bill".
The word "party" clearly, I am afraid, does not include the Controller himself. Would the Minister not amend it to include the Controller?
No, it is a matter of the powers invested in the Controller and I think it is clear the Controller is not a party in this context. He is the arbiter.
But he should be in the context we were discussing a few minutes ago. If we brought in a provision that meant that the Controller, where he was moving on his own motion, would be considered a party.
However, he is clearly not a party in Section 50.
It would be an improvement of the section if that were done.
Question put and agreed to.
Sections 51 and 52 agreed to.
SECTION 53.
I move amendment No. 22:
In page 29, line 2, to delete "neither be" and substitute "be neither".
That is a drafting amendment, a verbal amendment.
Amendment agreed to.
Section 53, as amended, agreed to.
Section 54 agreed to.
SECTION 55.
Perhaps amendments Nos. 23 and 24 could be taken together.
Yes.
I move amendment No. 23:
To delete subsection (2).
The deletion of this subsection will render unnecessary the moving of Deputy Costello's amendment.
That is right. Is there to be any prescribed manner for dealing with these under the rules?
Yes. If the Deputy will look at Section 55 (1), he will see that all that is required is notice in writing.
I see.
Amendment agreed to.
Amendment No. 24 not moved.
Section 55, as amended, agreed to.
SECTION 56.
Amendment No. 25 and, perhaps, amendments Nos. 26 and 27 could be taken with it. Is amendment 25 not moved?
I am prepared to accept the suggestion made by the Minister in amendment No. 27 as covering amendment No. 25.
Amendment No. 25 not moved.
I move amendment No. 26:
In subsection (3), page 29, line 44, to delete "A" and substitute "Subject to subsection (4) of this section, a".
Amendment agreed to.
I move amendment No. 27:
In page 29, after subsection (3), to add to the section the following subsection:
"(4) By leave of the Court, an appeal from a decision of the Court under this section shall lie to the Supreme Court on a specified question of law."
Amendment agreed to.
Section 56, as amended, agreed to.
Sections 57 and 58 agreed to.
SECTION 59.
Perhaps amendments Nos. 28 and 29 could be taken together.
Amendment No. 28 not moved.
I move amendment No. 29:
In subsection (6), page 30, to delete all words after "taken" in line 30 down to and including "answer" in line 34.
The amendments put down by Deputy Costello are somewhat wider than the one I put down but in any event it does appear that the cumulative effects of the subsections, as they are at present, give the Controller very wide powers, indeed. One must recollect that in relation to the matters with which he is dealing in this Bill, he is to a large extent an administrative official. I do not think it desirable that an administrative official should have the extraordinarily wide powers here and I would throw out the caveat to the Minister that there is a possibility that it might be unconstitutional to give such powers to an administrative official and not to a court, as such.
What I am particularly worried about is the effect they are likely to have on the practice. I think it would be quite impossible to get any people who are not directly concerned with an application to give evidence by statutory declaration. Disinterested traders will not come forward in connection with trade mark proceedings if they are bound to appear before the Controller on pain of punishment if they refuse to appear or if they refuse to produce any document he may call for. The effect of that will merely be that the Controller will not get statutory declarations at all.
I think I can see without question the case for subsections here to provide that, if the Controller calls upon a person who is giving a statutory declaration to appear before him in evidence and that person does not appear, the evidence included in the statutory declaration shall be completely disregarded. That seems to be absolute sense but before one goes to a disinterested person and asks him to give a declaration that he has, in fact, seen this mark regularly used, you will have to warn him: "If you do give such a declaration you may have to go before the Controller and you may be held up and you may have to produce your own books in evidence as to whether you sold articles of that sort or not." I think the ultimate result will be that nobody will produce declarations. That is not what the Minister or anybody else wants.
The method I suggest of coping with that situation is that if a declaration is not substantiated by a personal appearance in evidence when required it shall be completely ignored for the purposes of the trade mark application. I suggest the past experience in relation to trade marks does not bear out that the Controller requires the powers that are here, powers, I may say, which are almost analogous to criminal proceedings and certainly, in my view, ones that must be considered more meticulously before they are given to an administrative official.
In relation to the specific amendment in my name, apart from the wider one in the name of Deputy Costello, I must confess I do not see the necessity at all for paragraph (c) of subsection (6). To suggest that you would put the Controller in exactly the same position as a court of law is to me quite absurd.
Let me give this example that would undoubtedly arise and give the Controller power to act if he wanted to do so. If a barrister appeared at a court of law without his wig and insisted on making an application without it he could be committed for contempt. If a barrister appears before the Controller, under this proviso he can be committed for contempt. I do not suggest the Controller would be such a fool as to do that but I think that it is all wrong that a Bill should go through the House giving an administrative official a power of that sort. I think there is no case whatever for the retention of paragraph (c).
The powers that Deputy Sweetman objects to have, in fact, always resided in the Controller. If the Deputy consults Section 142 of the 1927 Act, he will see that the Controller has power to require in respect of viva voce evidence attendance of witnesses, that he may take evidence on oath and has power in regard to discovery of documents and is in the same position in all respects as a judge of the High Court.
Obviously, there is a distinction in regard to Deputy Sweetman's amendment. I concede that readily. I believe there is precedent for non-judicial tribunals to have power of committal in the event of contempt. However, I am not so sure that Deputy Sweetman has not something in his amendment and so far as that amendment is concerned, I undertake to consider it very carefully on the next occasion. So far as the others are concerned, I suggest these are not extensions of the existing powers of the Controller. Rather are they a continuation of them in the form of being spelled out more clearly.
I think they go a little further, not much.
If anything. I do not see that they go anything further. The Controller has the power of summoning, the power of subpoena, I take it, and the power of discovery of documents and the only other power involved here is that which Deputy Sweetman objects to in his amendment. That is one I should like to have another look at. If Deputy Sweetman withdraws amendment No. 29, I shall undertake to consider it further.
I shall withdraw it.
Amendment, by leave, withdrawn.
Question proposed: "That Section 59 stand part of the Bill."
So far as I understand it, Section 142, according to my reading, is in very much more general terms and I think that the Minister will find that there are some slight further extensions of the powers now in this Bill. I should be glad if he would examine that specifically.
Has the Deputy looked at subsection (2) also?
Yes, that is the one about the affidavit. I entirely agree with that subsection.
Question put and agreed to.
Sections 60 to 62, inclusive, agreed to.
SECTION 63.
Amendments Nos. 30 and 31 may be discussed together.
I move amendment No. 30:
In subsection (2), line 32, to delete "or of a symbol".
I do not know exactly what the Minister has in mind here. We have a departure from the British Trade Mark Act of 1938 about which we have had some discussion already. I understand the word "symbol" in subsection (2) is a departure from the provisions of that Act and in the circumstances I am intrigued to know what the Minister has in mind in this section. There is a practice in America of placing a very small letter "r" in a circle adjacent to the trade mark with the idea of indicating that the mark is registered in the home country. If that is the intention of this provision here, it seems to me to be a bit drastic, seeing it is only to the initiated that the symbol conveys that the mark is registered in America, while to the ordinary public, the uninitiated, it means nothing.
What I want to know is whether, if a trader exposes for sale an article from America or elsewhere that has this symbol, he will be infringing the law by so doing? I wonder therefore whether the inclusion of the word "symbol" means we are implying the registration in Ireland of a trade mark, or whether the word should be deleted as being indefinite and likely to produce nuisance? I do not know exactly what is the position with regard to trade marks registered in America for registration in this country. I do not think they can do it by what might be called transfer of registration. If they could, manufacturers selling their manufactures here would like to do so.
I think the position is—and I should like confirmation of this from the Minister—that many American firms who wanted to register trade marks here have found that trade marks registered in the States are not always acceptable for registration under the Acts here. If that is so, it means that there must be a separate package for American goods coming in here so as to delete the symbol referred to above. That does not seem to be necessary in order to protect the ordinary case. I should like to have some clarification from the Minister. All the difficulty arising under this section arises from the inclusion of the word "symbol" now newly and for the first time.
The purpose of the use of the words "or of the symbol" in this section is to make it an offence to describe any mark as registered, which is not in fact registered, by the use of this symbol. The use of symbols to denote registration is increasing, and it is important that this growing practice should not be used to deceive the public. If the use of the symbol "r" in a circle in relation to goods in this country indicates, or is sought to indicate, that the mark is registered in this country, it is clearly wrong. If it creates in the minds of our traders that the mark is so registered, I submit our traders and the public should be protected against the possibility of this deception, innocent though it may be in some cases. Certainly, any practice which is deliberately solely intended to indicate that a trade mark registered in some other country is also registered here should be prohibited. That is why in order to catch such marks, or such insertions on marks as "r" in the circle, the words "or of a symbol" are included in the subsection.
Amendment, by leave, withdrawn.
Amendment 31 not moved.
Section 63 agreed to.
Sections 64 to 67, inclusive, agreed to.
SECTION 68.
Amendment No. 32 not moved.
I move amendment No. 33:
To delete subsection (7), and insert a new subsection as follows:
"( ) Where the Controller is of the opinion that a person registered in the Register of Trade Mark Agents is guilty of conduct disgraceful to that person in a professional respect he may apply to the Court for an order erasing the name of such person from the register of trade mark agents and the Court on hearing such application may make such order on the said application as the justice of the case requires. The Court may direct how the costs of the application are to be borne."
I do not think it is proper to give to the Controller the right of removal from the register of trade mark agents somebody who has been on that register. I am quite prepared to accept that the Controller should have the right to apply to the court for an order for such removal; but to give the Controller himself the power of removal is to put in the hands of an administrative official a power over the people with whom he is dealing which no administrative official should have in any circumstances whatever. I am quite satisfied that subsection (7) (a), as such, would undoubtedly be declared unconstitutional. I accept that under (c) a person has the right of appeal, but the mere right of appeal will not be sufficient to validate constitutionally the actions of an administrative official.
The proper course in relation to the circumstances envisaged by the Minister in subsection (7) is to give the Controller the right of applying to the courts to have the particular person struck off the list. I imagine the Minister will agree with me so easily in respect of that contention that I do not think I need say any more at this stage.
Except perhaps Deputy Sweetman might consider the import of paragraph (d) of subsection (7) which affects the decision of the Controller in this respect—— that the person affected may apply within a period of 14 days. Then the contract, if the person has not applied, and if the decision has not been announced, must go to the court ex parte for cancellation.
I appreciate that, but it is still vesting a power in the Controller which should not vest in him. The power should be in the court. Let the Controller be the motivating party to the court, if he likes.
It could be got over by the contractor serving notice to the effect that he proposes to apply to the court.
Why not let the procedure under paragraph (b) be the procedure for eliminating a person from the roll?
Unless it is the court that takes the decision, the person concerned will appeal to the court from a de facto decision and that is putting that person in an unfair position. The burden of proof would be on the agent and I think in relation to a removal from the register the burden of proof should be on the Controller and let him be the motivating party in bringing the matter to court. Otherwise, the situation will be quite unfair for the agents concerned. I think the Minister agrees with me in this case and he ought to come the whole way with us. It is not the exact wording of the amendment but the general principle that I am interested in.
I shall take the principle and have a look at it again and perhaps come back on Report Stage.
Amendment, by leave, withdrawn.
Amendments Nos. 34 and 35 not moved.
I move amendment No. 36:
Before subsection (8) to insert the following subsection:
"(8) A person (in this subsection referred to as an agent) duly authorised by any person under subsection (1) of this section to act as his agent may, (subject to any provision to the contrary in any agreement between the agent and that person) on giving notice to the Controller and that person, cease to act as agent for that person."
We have agreed to accept this.
Amendment agreed to.
I move amendment No. 37:
In subsection (8), line 50 to 53, to delete "and the maximum fees which may be charged by any person registered in the register of trade mark agents for such services in connection with the registration of trade marks as may be specified in such rules".
As I understand this situation, there seems to be considerable confusion about the power in relation to the fees involved here. As I understand it, what we would all wish to aim at would be that if a person goes to a trade mark agent and says: "I want you to handle this case for me", and the agent says: "I shall accept it only at a fee of £X ", and if the person concerned goes on, with £X as the appropriate fee, that fee would be paid. However, if the trade mark agent does not make the stipulation, other fees should be prescribed. I want it to be made clear that there is power for the party to contract like that with his agent.
The Minister can visualise persons going to solicitors or counsel asking them to take a case and the solicitor or counsel saying they do not want to unless a special fee is paid. I think the agent here should have that right too. In fact he has that right but it is not generally accepted in the profession that the right exists under legislation. Hence the provisions sought in amendments Nos. 37 and 38. I do not understand why there would be a fee fixing authority like this without the counterpart of an association to deal with the matter such as the Incorporated Law Society. It seems to me there will be unilateral action here which is not entirely defensible and I should like some clarification of the general position.
People who are entitled to engage in this business are put on a register as qualified persons and are therefore given a statutory right. Being recipients of a statutory right they should be subject to statutory limitations of the fees they may charge. There is no obligation on them under statute to apply for inclusion in the register. I suggest that reasonable maximum fees should be chargeable and that those concerned should be confined to them. To change the law in this respect would require a change also in respect of registered patent agents. In that connection too, the patent agents are registered and therefore have an obligation under statute to operate within certain maximum fee limits.
Surely they are entitled to say they do not want to deal with the case at all, that they would rather not handle it because they did not think the fee would be adequate because of the complexity of the case and then, if the applicant says that notwithstanding such a position he still wants the agent to do it at a fee outside the rules, are they not entitled to do it so long as there is a clear contract?
The position at present is that maximum fees are not fixed, and even though the power is there in respect of fees, the Deputy can well envisage—I am not suggesting this will happen — that a racket could be created among a small group of people pushing up fees for the registration of trade marks and patents. At that stage, any Minister responsible under statute would require some power to stop such a racket if such developed.
It is not only a person on the register who can apply. I can apply.
That is so. There is no closed shop. In practice, the list of agents is very small.
If I apply, the Taxing Master stands over me, if I charge an excessive fee.
I do not know how the Taxing Master would come into the picture in applications for registration of trade marks.
A solicitor is entitled to apply for registration of a trade mark. If he does, the fees he charges are subject to ultimate appeal to the Taxing Master by the client concerned. As long as a solicitor is entitled to apply for sanction of the Taxing Master there cannot be a closed shop by agents pushing up the fees. The statutory official, if the Taxing Master is there, would provide the levelling. If they push them up too high, all the people have to do is to move over to the solicitors' profession.
I appreciate that solicitors are subject to certain sanctions in respect of fees. So long as the business is conducted in a reasonable manner, there is no likelihood that the Minister would prescribe maximum fees. I think it is only right that he would have the power to prescribe them in the event of somebody extracting exorbitant fees.
The case is not as serious now, since amendment No. 36, as it was before. To that extent, I shall agree with the Minister to withdraw these amendments and consider the matter further. Amendment No. 36 has varied the position.
I shall give the matter further thought.
Amendment No. 37, by leave, withdrawn.
Amendment No. 38 not moved.
Question proposed: "That Section 68, as amended, stand part of the Bill."
Subsection (7) (d) reads as follows:
Where a person to whom a decision of the Controller under this subsection relates does not, within the period of fourteen days beginning on the date of the decision, apply to the Court for cancellation of the decision, the Controller may apply ex parte to the Court for confirmation of the decision and, if the Controller so applies, the Court, on the hearing of the application, shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register of trade mark agents.
All that we suggest is that the discretion to apply or not to apply should not rest with the Controller but that the correct procedure would be that the Controller should go to the court in the first instance and move that the man's name be struck off the list. Then they stand before the court on equal footing, the Controller alleging misfeasance on the part of the patent agent and the patent agent defending himself. We are not to imagine that patent agents will be brought before the court in clutches. There are very few of them. I doubt if there has ever been a case of one being struck off the roll and it is unlikely that such a case will ever arise: certainly many will not. This is all the more reason for sticking firmly to the principle that, where a man is transacting business under the supervision of an administrative official of the State, that administrative official should not be the judge of whether or not his conduct is right or wrong.
I can imagine in other cases, the classic case being made that perpetual reference to the court holds up proceedings. That defence surely cannot be made in this case inasmuch as we suggest in paragraph (d) that even where the Controller removes, himself, the patent agent should set a good example to the Minister and all his colleagues in this matter; that the initial sanction should be vested in the court and that, if the Controller wishes to act against his agent, he should do so in the court and not on his own.
I have suggested that that is a point I shall look into. There could very well be cases wherein the agent would be glad to be removed quietly, without exposing himself to open court.
I am hoping that the proposed added sanction we suggest will keep agents even more closely on the rails than they at present are, if that were possible.
Question put and agreed to.
SECTION 69.
I move amendment No. 39:
In subsection (3), page 35, line 43, after "of" to insert "or, in the case of a certification trade mark, in the manner specified in the First Schedule to”.
I understand that the wording of the section as it stands would prevent the success of a claim to priority in respect of applications for the registration of certification trade marks. The new wording is really to achieve the purpose intended, which was not achieved in the subsection as it stood.
Amendment agreed to.
Section 69, as amended, agreed to.
First Schedule agreed to.
SECOND SCHEDULE.
Amendments Nos. 40, 41, 42 and 43——
They are all time amendments. I move amendment No. 40:
In paragraph 1, lines 43 and 44, to delete "one year" and substitute "three years".
I do not think the times provided in the Bill will give anything like sufficient opportunity to traders to sort out matters and to take the necessary action. I believe that, by restricting the time, as the Minister has done initially in the Bill a flood of applications of a protective nature will be thrown in and that it will mean considerable administrative difficulty. We must remember that these are matters that have arisen consequent upon the development over the past 35 years of the practice that has been there. In those circumstances, it is entirely proper that we should have at least three years to deal with the matter.
I think the effect of having three years will mean a lesser burden on the Patents Office than the shorter period. I know the Minister suggested, in another context, that we should go to two years. I think he should go to three years for the whole lot. Otherwise, a considerable number of protective applications will be filled while people see what is happening. That is unnecessary. It will add on the cost to the traders concerned of administering the office. I do not think the Minister will lose anything by extending the period to three years instead of one year.
Yes, I accept the amendment.
Admirable.
Amendment agreed to.
I move amendment No. 41:
In paragraph 2, page 39, line 4, to delete "two years" and substitute "three years".
Amendment agreed to.
Amendment No. 42 not moved.
I move amendment No. 43:
In paragraph 5, line 41, to delete "one year" and substitute "three years".
Amendment agreed to.
Second Schedule, as amended, and Title agreed to.
Bill reported with amendments.
Report Stage ordered for Tuesday, 5th February, 1963.