Dáil Éireann debate -
Thursday, 15 Nov 2001

Vol. 544 No. 2

Written Answers. - EU Directives.

Brian Hayes

Question:

68 Mr. B. Hayes asked the Tánaiste and Minister for Enterprise, Trade and Employment if, further to Parliamentary Question No. 157 of 6 November 2001, her views on whether the information she gave Dáil Éireann was correct concerning the Irish origin of produce which is being imported into Greece by a company (details supplied); the person who gave her this information; whether this information was checked; if she received an application for consent to use the shamrock from this company; her views on whether the list of companies both north and south which use either brand name or company name which either state or imply Irish origin is extensive; the reason she is involving herself in a case which is seeking to prevent a Northern Ireland cheese co-operative from exporting its produce; if she will withdraw from the legal case before the Greek courts; and if she will make a statement on the matter. [28416/01]

Minister of State at the Department of Enterprise, Trade and Employment (Mr. T. Kitt)

In the cases the Deputy has raised in a previous parliamentary question, and again in this question, the background is that under trade mark law and practice, trade marks consisting exclusively of indications of geographical origin should not be registered. This is reflected in the Community Trade Mark Directive (89/104/EEC). Article 3.1(c) of this directive sets out that the following shall not be registered or if registered shall be liable to be declared invalid: trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

The Community Trade Mark Directive has been implemented in all member states of the EU and, therefore, represents a valid basis upon which to object to trade marks in Greece that can be considered to consist exclusively of indications of Irish origin. The reason for becoming involved in such a case is, as stated in my previous reply, to ensure that a single company does not obtain a monopolistic right to trade marks that are exclusively designations of Irish origin. Such a position would pertain irrespective of where in the island of Ireland the goods were produced. A trade mark owner is entitled to prevent competitors from using that trade mark or, indeed, signs similar to that trade mark and, if the trade mark consists exclusively of a geographical indication, other exporters from the territory in question would be disadvantaged.

The large number of companies that quite legitimately and effectively portray their Irish origins or Irish connections in their names or brands illustrate that it is possible to display and make use of the value of such connections without registering a trade mark exclusively indicative of Irish origin.

In the case of trade marks that contain elements that are indicative of origin, but not exclusively so, under article 3.1(g) of the Com munity Trade Mark Directive they should not be deceptive as to origin. For example, a trade mark consisting of a number of elements including the word "Irish" or "Ireland" or a similar word, thereby giving the impression that the goods are Irish, should only be used in connection with goods that have a genuine link to the island of Ireland.

I would have some concerns, where a foreign company is involved, if a trade mark incorporating an element that suggested that produce was of Irish origin was registered, without restriction. I would be concerned that if such a trademark were registered without restriction, it might be used for produce from other countries.

If the company in question in this case is prepared to give an undertaking to be noted on the Greek trade mark register to restrict the use of those trade marks found to contain, but not exclusively so, elements indicative of Irish origin to goods originating on the island of Ireland, then I would be able to confirm that my concerns based on article 3.1(g) of the Community Trade Mark Directive had been met. However, trade marks should conform to the requirements of article 3.1(c), which provides, inter alia, that they should not be exclusively indicative of origin. As outlined above, I am concerned that no company should obtain a monopolistic right to a trade mark which is exclusively indicative of Irish origin.

In relation to this case, I was informed that the Greek company in question was using trade marks indicative of Irish origin on produce from outside the island of Ireland. The information was supplied to me by the Irish Dairy Board. However, as I outlined, the possibility that it could occur is the issue that needs to be addressed. If the company in question submits an application for my consent to use the shamrock as part of a trade mark to be used only in connection with goods originating on the island of Ireland, I would be happy to consider such an application.