The purpose of this measure is to amend and consolidate the existing law relating to trade marks, as embodied in the Industrial and Commercial Property (Protection) Act, 1927, so as to liberalise it in certain respects in line with present-day commercial needs in this field. The use of trade marks to identify particular products to the purchasing public has increased very noticeably in recent times. This trend is clearly one to be encouraged in the interests of the public at large, for trade marks afford them a ready means of identifying and selecting goods which past experience has shown them to be worth buying again. It is, therefore, as much in the general interest, as in the interests of trading concerns, which own and use trade marks on their products, that it has been considered necessary to review the law and to introduce the changes provided for in the Bill, so that it will become better adapted to modern requirements.
The main changes introduced by the Bill are as follows: the expression "trade mark" is re-defined; the condition that a trade mark must have been in use for at least two years, before qualifying for registration in Part B of the register, is abolished; it is made permissible to effect a valid assignment of a trade mark without having to assign the related business goodwill at the same time; provision is made for the defensive registration of well-known trade marks consisting of invented words; a system for recording registered users of trade marks is introduced; certification trade marks are provided for separately under what is regarded as a more appropriate system of examination and registration; and, lastly, provision is made for the first time for creating a register of trade marks agents and for limiting the practice of the profession of trade mark agent to persons who are entered in that register.
Taking these matters in turn, the expression "trade mark" is defined in the current Act of 1927 as "a mark used or proposed to be used upon or in connection with goods". As this definition must be taken as meaning that a mark is a trade mark only when used in physical connection with goods, it is regarded as too restrictive. Trade marks are often used in advertisements, pamphlets, invoices and the like, and it is thought essential that the definition of a trade mark should cover this kind of use in relation to goods which are on sale. Furthermore, on this aspect of the matter, it has been held that, under the existing definition, a trader may make use of his rivals' trade marks in pamphlets and the like for the purpose of comparing his goods with theirs, thus making use, for his own benefit, of the reputation of his competitors' marks but without committing an infringement. This needs to be remedied, and so, with all these considerations in mind, it is proposed by Section 2 (1) of the Bill to define a "trade mark" as meaning "...a mark used or proposed to be used in relation to goods ...". A further change in the definition is necessary on account of the new registered user provisions. As the law stands, a trade mark can validly be used only by its proprietor, so that in order to be consistent with Section 36 of the Bill, it is necessary to extend the definition to provide for use by a registered user. The definition in Section 2 (1) expressly excludes certification trade marks because these are dealt with separately in Section 45.
Next, there are the new provisions in Section 18 of the Bill as to what may be registered in Part B of the register, which exists for the protection of trade marks of a less distinctive character than those which qualify for registration in Part A. The main change here, as already mentioned, is the abolition of the existing condition in the 1927 Act that a trade mark cannot be registered in Part B until it has been in use for at least two years. No reason is now seen for denying the benefits of early registration to new trade marks which inherently qualify for registration in Part B, although at the same time, of course, there is nothing in the Bill which will prevent traders from applying to register trade marks which they have used over a period of two years or more, as they can already do under the 1927 Act.
With regard to the assignment of trade marks, it is proposed to change the present law whereby a trade mark can be validly assigned only together with the whole goodwill of the business in the goods for which it is registered. This has been a severe handicap to firms, especially to related commercial or industrial concerns, wishing to re-organise their arrangements to meet developing trade, but hampered in so doing because of the risk to the validity of the registration of valuable trade marks if they were assigned with less than the goodwill of the business. The concept formerly held was that the purpose of a trade mark was to identify the goods with the proprietor of the mark, but present-day experience goes to show that the public tend to identify a trade mark with a particular product, rather than with the maker of the product, and that, therefore, the goodwill is inherent in the mark itself. It is proposed by Section 30 to permit trade marks to be validly assigned without the goodwill of the business, and it is also proposed to enable trade marks to be assigned in respect of some, only, of the goods for which they are registered. At the same time, Section 30 provides safeguards designed to protect the interests of the public in respect of assignments of trade marks which are likely to lead to deception, and which will accordingly be deemed not to have been valid.
Coming next to the so-called defensive registration of trade marks which consist of invented words, and which have become well-known to the public, it is recognised that these marks are in a special category. Having been coined by its proprietor, a trade mark of this kind is of necessity unique in character and tends to denote to the public that the goods on which it is used all come from the same trade source, whether such is the case or not. As the law stands, there is nothing to prevent others from registering or using such marks in respect of goods which are not of the same description as the goods in respect of which the real proprietors use and have registered their marks. It is true that the originators and genuine owners of such trade marks may have recourse to the common law to defend their legitimate interests, but it is felt that provision should be made in the law so that, on proving that their marks are well-known to the public, they can obtain registration even in respect of goods in which they do not intend to trade and thereby be afforded a wider protection against infringement, without incurring the risk of removal of such registration from the register which the continued non-use of a registered trade mark normally entails. The necessary provisions are contained in Section 35 of the Bill, and have the further result of giving effect to our obligation under the International Convention for the Protection of Industrial Property, which was effected in 1958, of giving wider protection to well-known trade marks.
The proposed registered user provisions contained in Section 36 of the Bill are designed to meet modern conditions of trade, under which trading concerns often find it commercially convenient to have goods made for them, and marked with their trade marks, and distributed direct to the public, by other firms. Under present law, this use of trade marks by persons other than their registered proprietors is not valid and, for that reason, endangers the registration of the marks concerned. This state of affairs is hampering to trade in the State, for the owners of valuable trade marks are naturally reluctant to embark on trading arrangements which might imperil the validity of their marks. In other cases, large corporations sometimes wish to establish subsidiaries, and similar risks to the validity of trade marks are entailed if they are used by the subsidiaries but registered by the parent bodies. It is felt that, in cases where it is clear that the registered proprietor will have control, either of a financial or of a contractual nature, over the use of his trade mark by a permitted user—for example, as to the quality of the goods made and marked by the user—the public interest will be adequately safeguarded, and that such use should be validated as proposed by Section 36.
Under the existing Act, there is provision for the registration of trade marks having the purpose of denoting that the goods in relation to which they are used have been certified as to their origin, mode of manufacture, quality, accuracy or other characteristic. Such marks are, however, registered under the same conditions as ordinary trade marks. Section 45 of the Bill provides that these marks be separately defined and clearly distinguished from other trade marks. In future these marks, to be known as certification trade marks, will not be registrable in the name of any person who carries on a trade in the goods in question. The conditions of registration as well as certain safeguards against misuse by the proprietors are set out in the First Schedule to the Bill, the Minister being charged with the responsibility of ensuring that the registration of such marks, individually, is to the public advantage.
With regard to the setting up of a register of trade mark agents, as proposed by Section 69 of the Bill, there is at present nothing to prevent any person, however unqualified he may be, representing himself and practising as a trade mark agent. In order to ensure that matters relating to trade mark law, which is often very complex and under which traders can procure valuable rights, are dealt with by properly qualified persons, it is proposed to provide for the compulsory registration of trade mark agents and to provide that only persons or firms whose names are on the register shall be entitled to practise or represent themselves as trade mark agents. Section 69 sets out the conditions of eligibility for entry on the register of trade mark agents and thus ensures for the public a minimum quality of service from agents.
There are a number of other changes proposed in the law. The provisions in Section 37 enable a trade mark to be registered where the applicant himself does not intend to use the mark but proposes to assign it to a body corporate yet to be constituted or proposes that it be used by a registered user. The provision in Section 48 enables a trader, before actually lodging an application for registration, to obtain an official opinion as to the suitability for registration of a trade mark which he proposes to adopt, thus saving him the trouble and expense of filing an unsuccessful application. There are also a number of minor improvements introduced.
I recommend the principle of the Bill for approval by the House.