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Dáil Éireann debate -
Thursday, 7 Dec 1995

Vol. 459 No. 5

Trade Marks Bill, 1995: Second Stage (Resumed).

Question again proposed: "That the Bill be now read a Second Time".

I welcome the opportunity to contribute to the debate on this technical Bill which is very important in an Irish context. I thank the Minister of State for introducing the Bill and also for his detailed explanation of its contents.

This Bill is of importance to Irish business and to organisations carrying out their business here or planning to establish operations here. To date, the inability of service organisations to register their names, brands and logos has been a significant omission and cannot have been helpful in the establishment of the International Financial Services Centre in Dublin.

Trademarks — and their registration — with the protection they afford are a matter of serious concern to industrial and commercial interests. Brands, as they are better known, have become a major business asset. Brands, which cover goods of all shapes and sizes, will now embrace services for the first time. Members will appreciate that the value of some international brands stretches into billions of dollars. Brands, whether international, national or local, are important to proprietors and of interest to their competitors.

While the Bill is of a somewhat technical nature, it is necessary for the protection of brand owners and will provide them with rights of redress when their proprietorial rights or interests are infringed. It is worth reflecting that a trade mark or brand is a tangible representation of entrepreneurial skills, ideals, thoughts, initiatives and inventiveness.

As my party's deputy spokesperson on enterprise and employment, I congratulate those who have created brands suitable for registration. In particular, I recognise the courage and initiative of our young and emerging entrepreneurs who have recently registered brands and those people establishing or developing new businesses here. I ask these people not to consider brand registration as another piece of bureaucracy but as a goal achieved toward fulfilling their aspirations and ambitions in commercial life.

On 20 March 1883 a number of countries signed what has become known as the Paris Convention for the Protection of Industrial Property. That this convention is still a basis for modern regulation and legislation is a credit to its signatories. While the emphasis was then placed on industrial property, today intellectual property has become a significant part of Irish, European and International law. Intellectual property embraces three areas: patents, copyrights and trademarks. These three are interrelated. Our Patents Act was brought up to date in 1992. The Copyright Act, 1963, and the Trade Marks Act, 1963 are in need of modernisation and advancement. I am interested in the proposal of the Minister of State to bring copyright legislation up to date as it is important that the three prongs of intellectual property law are kept abreast of each other in terms of world developments.

This Bill proposes to repeal the Trade Marks Act, 1963. It is proposed to incorporate the European Council directive of December 1988 and regulations of December 1993 relating to trade marks and the Community trademark into the legislation. The Bill will give effect to the Madrid Protocol relating to the international registration of marks, which was signed on 28 June 1989 and to certain provisions of the Paris Convention.

The Madrid Protocol stems from the Madrid Arrangement 1981 covering an international system for the registration of trade marks. Ireland concluded the Madrid Protocol on 27 June 1989 and agreed to incorporate this in Irish legislation by 28 December 1991. To accommodate certain states this deadline was extended to 31 December 1992 in exceptional circumstances. We are only three years behind the extended deadline.

The decision of the Minister of State to incorporate these European directives in Irish law by means of this Bill is correct. While he could have achieved the same result by way of statutory instrument under the European Economic Community Act, 1972, as amended, this would not give the House and industry the same opportunity to debate the proposed changes in Irish law. I note that the Minister retains the right, and properly so, to prescribe rules under which matters such as fees and registration will be dealt with. Perhaps the Minister will advise the House if significant changes in the current fee structures are proposed. While I appreciate the cost factor involved in the registration of trade marks I am concerned about small businesses who will have more forms to fill and paperwork to deal with. This will involve them in further costs.

The Bill is pro-business and much more flexible than the previous Act. It gives better protection in cases where rights are infringed and at the same time makes it easier to establish that such rights have been infringed. The inclusion of "services" which embraces so many sectors including communications, tourism, banking, insurance, finance, etc., is overdue but welcome. The fact that international financial organisations could not register in Ireland heretofore would not have been of assistance to the International Financial Services Centre. Penalties which heretofore were of a civil nature are now of a criminal kind. I welcome that and I do not think the balance has moved too far in the other direction.

The owners of brands in Ireland who up to now had to register them abroad on a country by country basis will have two additional options. One of these is to register with the World Intellectual Property Organisation — WIPO. This United Nations agency, based in Geneva, could then make registrations in countries nominated by the brand owner. This will assist Irish business although for the foreseeable future the WIPO registration system will continue to exclude major countries such as the United States and Japan.

The United States, for example, with its Patent Office in Washington DC and its nominated ports of entry for goods entering the United States is concerned to have its own measures to control and restrict counterfeiting, which is a major international problem.

Another option for Irish business on enactment of the Bill would be for brand owners to register with the Office for the Harmony of the Internal Market — OHIM. This will deal with Community trademark registrations. The office has been set up in Alicante, south east Spain, and is expected to be open for business early in the new year. It will take time for the office to be fully operational because of the complexity and variation of trade marks but it will eventually allow Irish brand owners to make a one stop registration for European Union countries. I am disappointed that Ireland did not secure this office. I do not wish to sound political but the bungling of a previous Administration lost us that facility. It would have given major employment in this country. I understand regional offices may be set up and we should make a case for one to be set up here. That would give us a foothold in the registration of trade marks on the international scene.

The Bill provides that trade marks can be registered for ten years with ten year renewal periods. Heretofore, they could be registered for seven years with 14 year renewal periods. The new system is simpler and more logical. A "use it or lose it" clause has been included whereby a trade mark not used after five years will be extinguished.

Counterfeiting is a major problem in the area of brand protection and trade mark registration. When looking at brands we must realise that trade marks are infringed on a wide scale and involve legal and honest owners in the loss of vast earnings which, in turn, are falsely and unfairly reaped by imitators. There are many examples of this but perhaps the watch industry is the one most well known as suffering from false imitations. Many of us have come across imitation watches bearing famous names. With modern technology imitations are extremely difficult to detect. Footwear, particularly sportswear, is another industry adversely affected by counterfeiters. In Cork, Adidas is bedevilled by imitations. It makes distinguished sportswear which others imitate. The greatest trading nation, the United States of America, suffers problems with counterfeiters who are able to reproduce water and other security marks on the paper on which large denomination dollar bills are printed. I understand this paper is now printed outside that country. Section 14 provides that the use by a person of his or her name shall not infringe the registered trade mark, provided that such use is in accordance with honest practices in industrial and commercial matters.

People have been known to be very inventive in the use of their names in amending or changing them by deed poll. Indeed, this possibility has not escaped distinguished politicans in this city who adopted their own distinguishing marks in their titles. The Minister may recall a case, perhaps when he was a schoolboy, of the Italian gentleman, Senor P. Arker, who produced quality fountain pens bearing his abbreviated first name and surname. The management of the Parker pen company in the United States was not amused. Due to the necessity under Italian law to give due, full and lengthy consideration to the rights of defendants in legal proceedings, matters were somewhat protracted before the might of corporate America was able to rein in the Latin initiative of Senor Arker. Unfortunately, such amusing incidents are unworthy of the attention of today's highly organised, skilled and technically advanced international counterfeiters.

Another example of what is happening in the world of counterfeiting is illustrated in an extract from last Thursday's Financial Times which, under the heading “Italian video pirates targeted” states:

Record producers are to open a special office in Milan in January to spearhead their campaign to beat piracy in the Italian recorded music industry. The office will be run by FIMI, the national industry federation, and IFPI, the international umbrella organisation for the recording industry, and staffed by anti-piracy specialists. With a budget of $1m, the campaign will concentrate on enforcing Italian laws against music piracy and raising awareness. Pirated recordings in Italy — on cassette, compact disc and vinyl — have tripled in four years and now account for 44 per cent of pirated recordings in the European Union. IFPI is modelling its operation on the successful anti-piracy unit set up in Spain in the 1980s.

I welcome the proposed increases in penalties. The ultimate protection would be to make it a peanlty to use, or have for use, counterfeit goods or services. However, this would be difficult to implement in practice and perhaps could infringe our Constitution.

The proposed penalties set out in section 90 apply to those found guilty of contravening the legislation if intention can be shown. The word "intention" crops up a great deal in legislation and always presents problems in the interpretation and the proving thereof. The Minister should re-examine this section which may represent an escape clause in what otherwise may appear to be more severe penalties.

The Bill apears to be based on the UK's Trademarks Act, 1994. While I am not a proponent of copying British legislation, in this case it is acceptable as the British legislation, in turn, appears to be a copy of the EU Councils Trademark Registration Directive we are trying to incorporate into our law. However, section 47 is different from Article 48 of that directive and from section 44 of the UK Act. I will elaborate further on this matter on Committee Stage.

To a large extent, the value of this legislation will be reflected in the way it is enforced. I have already alluded to the section on offences and the difficulty in proving intent. The Bill does not provide for the appointment of trading standard officers who are an integral part of the operation of such legislation in other European jurisdictions. Will the Minister examine this matter on the basis of it being a self-financing operation so as not to place a further burden on the Exchequer? The legislation is designed to assist business, in particular the service sector, which is vital to this country. For these and other reasons, on behalf of my party, I welcome the Bill.

I am glad to note the unanimous support for the introduction and passage of this legislation. It should be noted that under a 1992 European directive the then Department of Industry and Commerce was obliged to implement this legislation by the last day of that year but failed to do so. As far as I am aware, it did not make any significant progress even in its preparation to implement it. I am not singling out that Department for undue criticism but, like many other matters on which we are obliged to act under European directives, in the last analysis our response has been unconscionably tardy.

We knew in advance that we were obliged to implement the directives on which part of this Bill is based. Yet, for some reason it was thought wise to delay the matter. In March or April 1993 I introduced a Bill designed to implement effectively the same provision as the one before us. It was designed to marry our international obligations under EU law with the necessary reforms in our trademark law in a way similar to the laws then proposed for enactment in the United Kingdom. The reason my Bill and this one adopts the UK model in many respects as a precedent is important.

A great deal of lip service is paid to the idea that we are an independent parliament with our own views and do not copy what happens internationally. In areas such as company and intellectual property law it makes sense for a small country such as this to follow closely a system with a common language and legal heritage in an adjoining and larger jurisdiction. Whenever possible it makes sense to conform with UK law on such matters because it enables our courts to benefit from decisions made in advance by courts in England when similar cases arise here. On a purely statistical basis, if our law in such matters is similar to that in the United Kingdom, it is much more likely that a particular case of interpretation would have been decided in the United Kingdom before falling to be decided here. The advantage would be twofold: a lawyer confronted with a particular problem of interpretation could look to the Bill and state that, on a similar wording, an English court had already heard arguments on both sides and arrived at a particular view and advise his client accordingly and, second, the Irish courts would have the advantage of a decided case in a neighbouring jurisdiction which would not be binding, but would be of persuasive authority in many cases.

Whenever we approach a Bill of this kind on which it would be foolish to suggest that the innate genius of the Irish will express itself in some remarkably innovative and independent way, it would be sensible to look across the Atlantic or to England to a cognate jurisdiction with similar legal concepts to see how they have addressed the issue and, whenever possible, to fall into line with the practice of a country whose jurisprudence we understand and can interpret and apply with any necessary modification within the State in accordance with our own requirements.

I am not suggesting that we should slavishly follow what the British authorities do in these matters, but I am suggesting that we should always hesitate to ask ourselves whether there is a good reason for doing something differently for its own sake. The Bill tendered to the House in 1993, therefore, was based largely on the proposed legislation in the United Kingdom. In large measure, this Bill reflects that particular decision.

I was pleased when the then Minister for Enterprise and Employment, Deputy Quinn, now Minister for Finance, wrote to me to say that he had decided to press on with the project of reforming our laws on trade marks and, in that context, to base his legislative proposals largely on the material contained in the Private Members' Bill submitted by me. I wish to pay tribute to two individuals who assisted me in the formulation of that Bill two years ago, Shane Smith and Martin Tierney, two registered trade mark agents who put much effort into kick starting the legislative process which has brought us to this day. I hope that this Bill will proceed with any necessary changes through the remaining stages of the legislative process.

I do not say this in any sense dismissively or negatively, but it is a shame that it took two years from the preparation of my text to produce the Bill before the House which most people would say is substantially the same, although I agree there are some significant amendments. In retrospect, it would have been more sensible to refer my Bill to a select committee where it could have been amended. If that had been done it would have been enacted roughly 18 months ago. Whereas I did not want to stamp, shout, roar and make egocentric remarks at the time — I took at face value the sequence of letters I received from successive Ministers stating that the matter would be dealt with within a matter of weeks — it is worth pointing out that in respect of this Bill there was undue delay both before the implementation date of the European directives and thereafter.

The English state had decided to extend protection of registration to service marks many years before the European Union made it obligatory for us to do the same. Ireland, collectively, should have been asking itself whether service marks should be registered from 1986 onwards when the decision was made in the United Kingdom. I agree fully that the legislative way in which the United Kingdom initially introduced service marks was most clumsy and inelegant. I would never have suggested that the Irish State should follow the particular amending legislation which was difficult to follow in the format in which it was passed through its parliament, but the idea that there is a radical distinction between goods and services in relation to intellectual property and goodwill is unsustainable. It is strange that the Irish Legislature took so long to realise that there was no rational distinction between the two.

In my practice as a barrister I have come across cases where what, in effect, were service marks were registerd by reference to items which fell into the category of goods so that those who, for instance, proposed to run a restaurant franchise registered their marks in relation to the boxes in which take-away goods and the like would be sold. That was a highly artificial circumstance which deserved to be addressed long before 1995.

Provision was made in section 37 of the Bill I tendered for searches for prior and conflicting similar trade marks, but this has been omitted from sectin 40 of this Bill. Provision is only made for such a search if required by regulation. The Minister for Enterprise and Employment, Deputy Bruton, assured me in writing that there would be no departure from the requirement that such searches should be carried out. I am not happy with the present situation. Although it will be possible by regulation to make such a search mandatory, it was an important part of our trade mark law that the register was kept reasonably pure by searches for prior and conflicting marks. There is nothing wrong in principle with such an arrangement. It should not be a matter of ministerial discretion as to whether such a search procedure should exist in the future.

There is a sense in which this Bill attempts to deal with the issue of the criminal application of trade marks to goods and services in dishonest circumstances. As Deputy O'Keeffe correctly pointed out, the question of intent is difficult to prove. There are many cases in which the pre-existing law was unfairly applied and interpreted. Let me give a mundane example. There is a Scandinavian company called Brio which manufactures wooden trains for children. These are sold in Dublin in the Early Learning Centre which also manufactures its own wooden trains for children. Under pre-existing trademark legislation it was held to be an infringement of a trade mark in many circumstances if one advertised a particular product as being compatible with another. In other words, one could not say on the front of a box that the product contained therein was compatible with another product.

It occurs to me that in this matter the crucial issue is whether there is honest or dishonest intention. The idea that certain forms of advertising and consumer information in relation to the sale or promotion of products were prohibited by reason of the fact that one could not refer to the registered trade mark of a competitor's product was an instance of anti-consumer application of what in theory should be a pro-consumer legislative code. I am glad that probably will disappear under section 90 but section 90 could be changed to assert positively the right to apply a trademark to one's own goods for the purpose of indicating compatibility. That would not be a retrograde step. If one is selling a spare part which is compatible with Hoover products or Novum washing machines or is suitable for use on a Ford or Volkswagen car, it is important that one should be able to state that on the packaging and in advertising without infringing trademark law, as long as the process is honest and one is not selling the product as a genuine Volkswagen or Hoover spare part.

I am wary of over-rigid application of intellectual property law. The use of copyright legislation to give monopolies on the design of spare parts was, until recently, a matter of common legal practice. It required special legislative intervention against judicial decisions to bring about a situation in which one could manufacture a spare part for a product on an industrial basis in Ireland without being found guilty of breach of copyright of the original drawings of the original manufacturer's spare part for the same product. We should have a generally liberal approach to intellectual property law which should favour fair competition.

The Bill does not purport to change or amend the law on passing off one supplier's goods as those of another. At some stage the House will have to face up to reforming the law in this area. There is such a thing as dishonest or unfair competition which does not involve the deception of the consumer as to the origin of the goods in question. It is high time that the Legislature examined the area of dishonestly appropriating the goodwill of another trader, even if that dishonest appropriation is not based on the proposition that one is deceiving the consumer as to the origin of the goods. There are many cases where the consumer could not care less about the origin of the goods and there is no such thing as a trading reputation in goods. Those circumstances of themselves should not give rise to a licence to act dishonestly.

The goodwill in a certain aspect of goods could be shared between two people in a way which was equally open to the proposition that either of them was the source of the goods or services. However, this does not entitle somebody who has no connection with either of them to muscle in on the scene solely on the basis that those two people have not come to an arrangement whereby one or both of them has a monopoly right in the reputation of those goods. The time has come for us to address unfair competition in terms of passing off and allied remedies which are slightly more radical than those which could have been included in this Bill.

Many aspects of this Bill deserve closer scrutiny on Committee Stage. However, the Bill is effectively three years overdue and that delay on the part of the Irish State is inexcusable. Most elements of this Bill should have been addressed many years ago and it should have been enacted early in 1993 or in late 1992 to comply with our EU obligations.

One of the curious features of the Bill is that, like the Bill I introduced, it will facilitate the registration of service marks on foot of applications made when service marks were not registerable. That is sensible because if the EU directive had been complied with, it would have been possible to register service marks here. Applications were made to the controller's office for the registration of service marks to establish priority and protection notwithstanding the fact that they could not be registered until the law was amended. I am glad the Bill seems to retrospectively validate such applications and register them in accordance with the priority dates of application as though the applications were made after the passing of the Bill.

It is a matter of some considerable pleasure to me that this legislation is before this House. There were times in the last two years when a succession of assurances from Ministers led me to believe this was something which would be done by the next Government. I am glad that it is moving forward now and I hope its passage through the House will be expedited and any necessary changes and improvements to its text will be effected on Committee Stage.

I thank the Minister and Deputy O'Keeffe for their contributions. I fully support this Bill. It should have been enacted a long time ago and the sooner we get it through this House the better because it is in ease of the reasonable rights of business people. I am not in favour of monopoly rights in themselves. We should only concede, by way of property rights in respect of reputations, that which is reasonably necessary to protect people from unfair competition. This Bill is a step in the right direction. It rationalises Irish trademark law, extends trademarks to service providers and to some extent removes some of the rigidity and inflexibility of previous legislation.

This is not the last word on intellectual property. We will have to reform our law on copyright. The Department of Enterprise and Employment should get moving on that issue because our law on copyright is unsatisfactory. It should not be up to an Opposition TD to produce a Bill on the subject. There are many issues, including moral right and others relating to copyright, which the Department is sitting on at the moment. It should get on with the job because the law on registerable designs is unsatisfactory. An EU directive or Opposition Private Members' Bill should not be the only basis on which reforming law is introduced.

I do not intend to seem ungenerous. There is a certain torpor and sleepiness in the Department about getting our law up to date. I get no sense that the Department had its independent agenda with which it was ploughing along at a reasonable rate. There was a lazy assent to the proposition that there would have to be change at some time but there was no forthright and dynamic agenda to change and improve the law. The delays we have seen are by no means unique in the Irish system of law reform. The same applies, with much more emphasis, to the Department of Justice, and I do not wish to seem harsh on the Department of Enterprise and Employment.

There is a sense of complacency in the public service about modernisation and codification of existing laws and this Bill is one example of that. I do not wish to criticise individual public servants. I know that many of the public servants who worked on this legislation have moved on to better things. One cannot point the finger at any individual and say he has not done his part. It is the system that has failed, and the system is the responsibility of its political masters, including fellow party members of mine.

We should learn from the delay in enacting this legislation that there is no substitute for adopting a proactive approach to legislation. Like Deputy Bruton, I do not believe legislation is, of itself, a good thing and this House should be cluttered with one Bill after another simply because people feel it is better to keep us busy. In a country whose legislative arrears in terms of reform and codification are so massive, it depresses me on occasion that the public service, particularly several leading Departments, do not consider it necessary to keep the heat on.

In this House we have been very remiss in our approach to EU directives. We have no system — maybe the position has changed in recent months — in which European directives are considered by a committee of this House in advance of agreement, and that is a shame. For example, in Denmark draft directives and regulations are laid before committees to see how they affect the Danish economy and Danish interests. Under our system the Department of Enterprise and Employment engages in consultation with interested bodies such as the Association of Patent and Trade Mark Agents or IBEC about Bills of this kind. The Legislature does not engage in issues involving forthcoming EU directives and regulations until they are in large measure a fait accompli. That is a defect in our system of Government.

In this case we are addressing the issue two years after we were obliged to do so by EU law. It has not prejudiced us hugely that we were slow in that regard, and perhaps it can be said in mitigation of the effects of the delay, that we were in some ways able to benefit from the fact that the UK addressed the same issues and therefore we can decide on the merits of demerits of its approach. However, we as a Legislature are wholly remiss in complying with EU requirements. We never anticipate them. We frequently act in arrears in terms of them in a way that is not to our credit.

I commend the Minister of State, Deputy Rabbitte, for introducing this Bill. I assure the Government we will do our best to expedite its progress through the House with necessary modifications that may become apparent on Committee Stage.

I support the remarks of Deputy McDowell on European directives. We have one of the worst records of any member state in making the necessary regulations and bringing the necessary legislation before the House to transpose European directives into Irish law. That seems to be a problem throughout Government Departments. As I said on a number of occasions in this House and outside it, it is ludicrous to introduce legislation following agreement reached some time earlier on a European directive without an opportunity, through our committee system, to have an input in the final decisions of the EU. There is a tremendous democratic deficit in that regard and I hope in the context of Dáil reform, the matter will be addressed satisfactorily.

The public also has a problem in coming to terms with EU initiatives since the first time they hear about them is when they are discussed in this House, probably three or four years after they have been agreed in Brussels. If these issues were discussed before agreement is reached it would go a long way towards educating the public on the importance of the work of the EU and its effect on member states.

Discussion of a Bill such as this is probably innocuous to a number of people but it is very important legislation which is largely understated. The adjudication of a service mark or trade mark in respect of an invention always has the makings of a good row, whether inside or outside the court. In the absence of clear guidelines laid down by the House, litigation is often inevitable in these cases.

Thank God for small mercies.

I do not think Deputy McDowell depends on trade marks for a living.

From my experience of dealing with constituents, it is often the cause of great frustration that clear guidelines are not available on trade marks. Very often applications to the Department of Enterprise and Employment or an agency under its control for grant aid are turned down for one reason or other, particularly in terms of register of design when a minor modification would render the application successful. Immense problems arise in that regard for public representatives and people applying for State aid to manufacture a particular prototype. The whole issue not only of trade marks but also register of design must be considered with a view to allaying the fears of many people who believe there is an inside track of people who are better informed of matters than unsuspecting people who do their best in terms of innovation and invention.

The whole issue of trade marks, which now includes for the first time the registering of services, is linked with consumer protection. Consumer law, which is very progressive in terms of product liability, has been largely foisted upon us by the European Union. In this case the consumer is a person who registers goods and services marks for his own protection. The Minister in his speech referred to additional protection for the proprietors of trade marks in the context of a franchise or licence. I agree that due to market demands a licence is very important to a proprietor and that he or she will go out of their way to protect themselves without the need for State policing of those matters. I hope the position will be subject to review.

The dishonest competition factor mentioned by Deputy McDowell is very much at the heart of this legislation although it relates more to the design than the trade marks area. Will the Minister of State say when it will be possible to introduce legislation which will review registering design concepts and prototypes and when it will be introduced here given that it is probably more important than the legislation under discussion today?

The first cases that will be brought under this legislation will provide an opportunity to ascertain how the definition of a trade mark and service mark will pan out. That will set in train precedents for the future registration of such trade or service marks.

I compliment the Government on its decision regarding the decentralisation of the Patents Office and, hopefully, it will not be too long before its decentralisation to my constituency of Kilkenny comes to fruition. It would be remiss of me if I, as the public representative for that area, did not take this opportunity to ask the Minister of State to use his good offices to expedite that decision as soon as possible. I understand we will be in a position to deal with that in early 1996. I ask the Minister of State to communicate with me at the earliest opportunity about the present position regarding the relocation of that office to Kilkenny.

I am pleased this legislation has been introduced and I compliment Deputy McDowell for initiating it in 1993. Many people would not regard it as important legislation, but I do. I also have a fondness for the Association of Patent and Trade Mark Agents as it appointed me to the Seanad in 1987 and if it had not been for the generosity of that august body I might not be a participant in this debate. Having heard Deputies' contributions, the Minister has an opportunity to deal with matters related to this legislation and I hope he will remove many of the anomalies in trade marks of goods and services that have developed over the years and address the guarded protection, or lack of protection, interpretation, or misinterpretation, constructed in that regard. The issue of design is another debate, an area in respect of which legislation should be introduced as quickly as possible.

I thank Deputies O'Keeffe, McDowell and Hogan for their contributions. I apologise for not being present to hear all that was said, but I heard enough to pick up the positive tenor of their contributions and I assure them that before we proceed to Committee Stage I will read them carefully. I heard what Deputy McDowell said about the delay in introducing the Bill——

It is water under the bridge.

——but it is water under the bridge now. I did not delve into why his Bill, as initiated in 1993, was not dealt with in committee by the Government of the day or why it was not possible to respond to it earlier. Regarding his general remarks about the torpor of the system and the need to respond more speedily to the modernisation required in legislative terms, the points have been made and I do not wish to go over them. The important point is that the Bill is before the House. I assure him on my behalf and that of the civil servants who are working and have worked on the Bill that, perhaps for reasons unique to this Bill, it took considerable application and dedication on their part to have it introduced in 1995. Perhaps that is not as it should be, but that has been the position and I thank the officials concerned for ensuring that we made the 1995 deadline in introducing the Bill.

Deputies O'Keeffe and McDowell referred to the need for updating copyright legislation. I assure both Deputies that the torpor referred to has not descended on this area of the commerce division, that a copyright Bill is being prepared and that the putative contents of the new copyright Bill were the subject of consultations with a number of interested parties and organisations. What Deputy McDowell said about civil servants moving on to greater things has affected this area, but the work is continuing. This is a complex area. I hope that as a result of the consultations to which I referred the draft legislation will take account of the need to strengthen the existing legislation in line with developments at European Union level and elsewhere.

Deputy O'Keeffe referred to the question of fees. Changes in the present fees charged by the Patents Office will be required by a number of provisions of the Bill. Registration of a trade mark and its renewal will be for a standardised period of ten years, replacing the current periods of seven and 14 years. Registration and renewal fees will have to be adjusted to take account of that change. An application for registration of a trade mark will now cover goods or services which fall into more than one class under the international classification system. Currently a separate application is necessary for each class of goods and a change of the current fees structure will be necessary to take account of that change.

On the issue of counterfeiting raised by Deputy O'Keeffe, penalties under section 90 (4) are quite severe. Section 13 defines acts which constitute infringement of a registered trade mark. It implements Artice 5 of the directive. Subsection 3 goes beyond what was provided for in the 1963 Act by extending infringement to use in connection with non-similar goods where the trade mark has a reputation in the State. Previously a trade mark was infringed only by use in relation to the goods for which it was registered. Section 13 (3) will provide for the unauthorised use of a sign which is either identical or similar to a registered trade mark in relation to non-similar goods or services to constitute infringement. This provision establishes the right to prevent use detrimental to the mark's reputation. The provisions on infringement proceedings in sections 17 to 23 which protect the interests of proprietors and licensees, should also be noted. Section 22 provides for penalites to be considered by the court including the destruction or forfeiture of infringing goods, materials or articles.

Deputy McDowell referred to searches and, as stated in a letter to him previously, there is no intention to change the existing search and examination procedures. It is proposed to continue the existing system which we share with the United Kingdom's patent office. Deputy McDowell will be aware that the present search provisions were in the trade mark rules of 1963 rather than in the 1963 Act. The same approach is being taken now of including the search provisions in the rules.

The cornerstone of the Bill is the Directive and it will be of benefit to Irish business, as Deputies have remarked, that differences between the laws of member states have been reduced. The Directive, in assisting with the Single Market, will create opportunities for exporters to compete in Europe on a more level playing field.

While introduction of this legislation has taken longer than anticipated. I hope Deputies will find the Bill deals comprehensively with the changes which have taken place internationally to date. Council Regulation 40/94 had not been published when the Private Members' Bill was initiated and it is more satisfactory for this House to consider section 55 of this Bill now that Council Regulation 40/94 has been published rather than to have to anticipate its contents. This council regulation was finally agreed in late 1993 and it dealt with the creation of the Office for Harmonisation in the Internal Market which is based in Alicante, Spain. This office will process applications for a Community trade mark from April 1996.

It had been long recognised that a unitary trade mark system would be a logical development for the European Union. Formal proposals for such a system were published in 1980 after discussions with business and legal experts in the member states. A Community trade mark will give its owner the exclusive right to use that mark throughout the Community. It would not be reasonable for that right to be granted if it would conflict with a similar right already enjoyed by somebody else. The existence of an earlier conflicting mark anywhere in the Community will therefore present a bar to the valid registration of a Community trade mark. The existence of the Community trade mark system in parallel with our national system offers an opportunity to proprietors of trade marks to obtain Community-wide protection by means of a single application.

Equally, ratification of the Madrid Protocol will facilitate proprietors in obtaining more extensive protection of their marks. Significant savings should accrue from making a single application to the World Intellectual Property Organisation in Geneva rather than applying to each national trade mark office where registration is desired. The extension of the legal protection afforded by registration to trade marks in respect of services will also be generally welcome. We understand there will be a considerable demand for service marks to be registered. All of these changes are advantageous to business.

In the Single Market of the European Union and, indeed, in markets beyond its borders, firms must be increasingly competitive to win and retain market share and this Bill will reduce the costs of competing in those markets. The Directive, as I have said, will reduce barriers to entry on the European market and the Community trade mark and the Madrid Protocol will reduce the cost of obtaining international registrations. The opportunities for owners of trade marks in Ireland to expand into the rapidly developing markets of China and Eastern Europe, for example, are enormous and the Protocol will facilitate such wider registration of marks.

It is not claimed that this Bill has got everything right. Now that it has been published, my Department will continue to listen to the views of interested parties with a view to further improving the Bill on Committee Stage and I am pleased it has received a general welcome in the House.

On the question of a review of design law, which was raised by Deputy Phil Hogan, it must be generally acknowledged that our law on design registration, which is based on the 1927 Act, needs to be updated. Discussions are currently under way at EU level on both the harmonisation of national design laws and the creation of Community-wide protection of designs. It would be prudent to await the outcome of these discussions before reforming our national law in this area.

As regards a different matter which Deputy Hogan raised concerning the prospective move of the Patents Office to Kilkenny——

Is that a good idea?

I will take that question on Committee Stage. If the Progressive Democrats put down an amendment that the office should not move to Kilkenny, it may meet a certain applause among some sections of the community.

It is located in my constituency and I do not see why it should move to Deputy Hogan's constituency.

In any event, it is true that the Patents Office is scheduled to relocate to new premises in Kilkenny in about 12 months' time. The management services unit of the Department of Finance is finalising a report on the most appropriate management and staffing structures for the office.

I thank Deputies for their contributions. I am prepared to see the Bill through Committee Stage as quickly as possible. If Deputies consider there are significant amendments to be made both the Department's and I will be receptive because we are anxious to enact the Bill as speedily as possible.

Question put and agreed to.

I understand it is intended to refer the Bill to the Select Committee on Enterprise and Economic Strategy.