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Seanad Éireann debate -
Wednesday, 6 Mar 1963

Vol. 56 No. 5

Bille Chuan Luimnigh (Droichead), 1963. - Trade Marks Bill, 1962—Second Stage.

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

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.

This Bill, as the Minister has said, was introduced for the purpose of bringing the law on trade marks up to date and making the necessary provisions for modern trade and commerce. In so far as the Bill attains its object, and I think by and large it does, subject to what I will say later on, I welcome the Bill, reserving my rights to appeal to the Minister to make one or two essential amendments in it.

The Industrial and Commercial Property Protection Act of 1927, which followed closely on the British Acts of 1909 and 1919, is the Act which at present regulates the law regarding trade marks. That law is, therefore, nearly 60 years old and it follows that it needs to be brought up to date; it needs to be amended. I think the British Government amended their trade mark law in 1938 which means that the British Act is a quarter of a century old. Now, as I understand it, this present Bill follows very closely on the terms of the British Act of 1938, notwithstanding the fact that certain flaws have become apparent in the British Act. I know, too, that it goes somewhat further in some respects than the British Act. I am sure that the desire of the Minister is to produce an Act that will be as nearly perfect as possible, an Act that will give satisfaction to everybody who comes into contact with it, whether it is the Controller of Industrial and Commercial Property appointed under the 1927 Act or various professional people who have to appear before the Controller or the ordinary business people who have to avail of the Act to protect their trade marks. Now, in so far as the Minister has that in mind, and I am sure that is his ambition, he deserves the complete support of the House and the help of every Senator.

Speaking for myself and for those whom I speak for here I can assure the Minister that he will get that support, I would, however, in return appeal to the Minister to come into this House on the Committee Stage of this Bill with an open mind and not come in here with his mind made up that his advisers are infallible. Trade mark law is a very dry subject if I may say so. It is a branch of the law in which very few practitioners claim to be experts. Indeed, it is a branch of the law which very few legal practitioners are ever called upon to deal with. I make no secret about it; I do not claim to be an expert on the subject, and having read the Dáil reports, I do not think the Minister claims to be an expert on it either. For that reason, I think the Minister might be inclined to see one side of the story only and to accept that as the answer to all problems which have been presented from time to time. Nobody is infallible and especially in a specialised subject like this I think the Minister should welcome advice and assistance of people in a position to give it

Having made those general remarks, I think that this is a Bill which can be dealt with in Committee. It is essentially a Committee Bill. There is no great principle involved. It is not a controversial Bill. There is no political kudos in it for anybody. I propose putting down some amendments on the Committee Stage and I would ask the Minister to seriously consider accepting them. If he does accept them, he will have an Act which will meet with the approval of people such as the Association of Registered Patent Agents who have a wide experience in this type of law and are really in a position to put forward the view of the practitioners and the view of the trade mark owner.

I should like on this Stage to refer briefly to Sections 18, 22 and 30 in the hope that the Minister will consider them seriously before the next Stage. Regarding Sections 18 and 22, as I understand it under the present law, as the Minister has told us, only trade marks in use for at least two years could be registered in Part B of the register. However, there is at present no provision for registering a trade mark in Part B of the register subject to the disclaimer. That is technical talk but a disclaimer means that a trade mark may consist of five or six words and the trade mark may be registered, but the owner may be required to announce or disclaim an absolute right to two of those words. That is what a disclaimer means. At the present time as I say, only marks which have been in use for two years can be registered in Section B but when they are registered they are registered without the obligation of disclaiming any of them. Therefore, under the Bill, as at present drafted, the Controller or the court may insist on any trade mark which is registered in Part B of the register being registered subject to a disclaimer. It follows, therefore, that although it would appear at first sight that Section 18 is extending the right to register in Part B and conferring additional rights on the owners of trade marks, it is, in fact, doing no such thing because it is obliging, or may oblige, the owner of a trade mark to register it subject to a disclaimer.

As I understand it, there is no necessity for that because in order to infringe a trade mark which is registered in Part B you must steal the whole thing so to speak. You cannot infringe it by taking a couple of the words or by taking one word. There are several cases and lots of authority for saying that the register should not be cluttered up by the registration of unnecessary disclaimers. I shall quote these cases for the Minister on the next Stage. Therefore, I appeal to the Minister to amend this section by removing from the Controller or the court the right to insist on a trade mark which has been in use for two years, or if he likes to make it three or four years— but I suggest two years — being registered subject to a disclaimer. I propose to conclude my remarks on Sections 18 and 22 by informing the Minister that experienced patent agents, trade mark agents of long standing, would prefer to have the law remain as it it rather than have the right to register new marks in Section B, but make them subject to a disclaimer.

I hope I have made that point clear. I understand that when the association were asked whether they would prefer to retain the present law in regard to Part B applications rather than extend Part B to unused marks and make all Part B marks subject to disclaimers, they answered without hesitation that they would prefer to retain the present law on this matter in spite of its disadvantages. That is the considered opinion of people who have given this matter great thought and who have spent a lifetime in this type of work.

That brings me to Section 30. In his opening statement the Minister informed us that under the present law it is not possible to assign a trade mark without assigning the goodwill attached to it. That is quite so. In these modern times of intensive advertising, take-over bids and one thing and another, it is highly desirable that it should be possible to assign a trade mark without the necessity of assigning the business or the goodwill attached to it. The Minister and his advisers are to be thanked for introducing that provision into the Bill.

There is, however, according to my information, another matter which could conveniently have been dealt with at the same time. It is not possible at the present time to assign or transfer an interest in an application to register a trade mark. As I see it, a person is the owner of a trade mark. He applies then to become the registered owner of it and by becoming the registered owner of it he gets protection and he can sue anybody who infringes his ownership in that trade mark. It takes, I understand, anything up to two years to get a trade mark registered and to become the registered owner of it. In these times businesses are changing hands and it may well be that the owner of a trade mark may sell his business between the date on which he makes an application to have his trade mark registered and the date on which the registration is completed. If he does so, he is placed in an impossible position under the present law and the present procedure, because he is not entitled to assign his interest in the application to register his trade mark, and his successor cannot continue the application which he has lodged. He must withdraw it and start off all over again. That means that he may lose priority and it leads to endless trouble, inconvenience, expense, loss of priority, et cetera. Again, I shall be able to quote to the Minister on the Committee Stage specific cases of hardship brought about by the impossibility of assigning interest in applications to register trade marks.

I am reliably informed that these difficulties crop up weekly. They may not come to the knowledge of the Minister; they may not come to the knowledge of the Controller, because it is known that at the present time you simply cannot substitute the name of the purchaser for the name of the vendor and continue your application. That is something new because I understand that some years ago it was possible in the industrial and commercial property office to continue an application in the name of the purchaser of a business, just as the Minister knows it is possible at the moment in the case of an action started in the High Court, in the name of one person, to continue it in the name of that person's personal representative. That is not possible in the Industrial and Commercial Property Office at the present time. It was possible a few years ago but the procedure has changed and now the application must be discontinued and a fresh application made.

I must say that for the life of me I cannot see the objection to allowing the assignment of the application. I know full well that when the trade mark is registered it is registered as at the date of the original application. What is wrong with that? The purchaser merely pays his money, gets into the shoes of the vendor and takes over where he left off. That sort of detailed argument could more appropriately be put forward on the Committee Stage. I am putting it forward here in the hope that the Minister will bring in these amendments rather than rely on any amendments which I may put down.

I am not raising any points about the registering of patent rights; I am not raising any points about the right of the Minister to regulate the fees which will be charged by patent agents. I am prepared to accept the provisions in the Bill which regulate these matters. I am satisfied that if the Minister accepts my suggestions, which I make no secret about were inspired, on Sections 18, 22 and 30, he will have a much better Bill than he has now. He will have an Act which will meet with the approval of the only people in this country outside his own advisers who really know anything about trade marks.

I might in conclusion respectfully suggest to the Minister that he should consider between now and the Committee Stage receiving personally a deputation from the patent agents about these points for the benefit of the House. There are only three or four of them in the whole country so that they are a small but highly specialised group of people. Subject to what I have said, I welcome the Bill, and my remarks on this Stage and my efforts on the next Stage will be to put the best possible Act on the statute book.

Like Senator Fitzpatrick, I very much welcome this Bill. It is in a highly technical field of law but one which is constantly being used by practitioners, particularly in commercial matters which are becoming so important in the country at the present time. Our present law is based on the British Trade Marks Acts of 1905 to 1919 and until this Bill we have had no move from those Acts. There was a British Act in 1938 and our new Bill is based very largely on it. We have taken a long time to get this far, but the Minister is to be congratulated on bringing in this Bill because we are constantly finding in practical law the great difficulty of the transfer of trade marks and the assignment of trade marks and the lack of registered user.

Two great improvements in practice which will come from this Bill are the ability to assign a trade mark without having to assign the goodwill attached to it, and the ability to have a registered user of the trade mark.

Like Senator Fitzpatrick, I have been approached and had a number of discussions with one of the members of the Association of Patent Agents in this country. I must echo what he says in that those agents are a very highly skilled group of men and that they are worried about these two particular points he has brought up—the question of disclaimer and the question of assignment.

I did not know that any approach was going to be made to the Minister, but I should like to echo Senator Fitzpatrick's plea to the Minister that if an approach is made he will see these people, because they are to my own knowledge extremely skilled and are the few people who practically administer the assignment and registration marks.

As Senator Fitzpatrick has said, there is no political kudos of any kind in this Bill. As I said in the Dáil, I am not by any means an expert on trade mark legislation. My limited practice at the bar did not extend to this highly technical field. Therefore, any knowledge I have of it stems from the time when I started studying the amendment of existing legislation in my Department.

It is true that the Bill follows closely on the 1938 British Act, but I want to assure the House that in so far as the 1938 British Act disclosed any defects we took care to avoid whatever defects were shown up in it so that our Bill, in so far as we could do it, is nearly as good as it can possibly be made in the existing trade conditions.

I will not deny that there are certain difficulties that were raised on behalf of the patent agents in the Dáil. They referred particularly to the sections mentioned by Senator Ross and Senator Fitzpatrick, namely Sections 18, 22 and 30. I do not want to go into any detail because I think it is not necessary in view of the fact that we will have detailed discusion on these and other sections on the Committee Stage.

I would like to say this in respect of the remarks made by Senator Fitzpatrick about disclaimers. He very aptly described how the obligation to enter a disclaimer arises. Some people have trade marks registered with words or letters that are in ordinary usage coupled with some other distinctive sign or mark. Thus we might find the letter A with some little design inside the angle of the A. I have no particular trade mark in mind but Senators can envisage such a trade mark being registered. The letter A is the property of, I suppose, all Roman languages; therefore, no trader should be permitted to register an exclusive right to the use of the letter A in his trading arrangements; but if he has some other distinctive sign or design inside the angle of the A then he is permitted to register that as his trade mark. He must, however, disclaim in respect of the letter A. That is a very fair provision. It protects the public interest, and it protects other traders who might for reasons of their own see fit to seek registration of a trade mark which incorporates the letter A.

Am I not right in thinking that registration under Part B. affords protection for the entire trade mark only, but not for individual parts of it?

There is no difference between Parts A and B in that respect. However, this is a matter we can go into in more detail on the Committee Stage. I am just putting this forward as a general proposition to the Seanad, that we should not easily permit people to establish an exclusive right to a word or letter in ordinary usage for the purposes of his trade.

With regard to the assignment of the rights in an application for the registration of a trade mark, that, too, was raised in the Dáil, and having listened very carefully to the arguments made, I decided that it was not necessary immediately to assign the rights in an application, certainly not on the grounds of hardship, because experience has shown that no real hardship ensues as a result of continuing the application for registration in its original form. With all respect to Senator Fitzpatrick, I do not think that his analogy of continuing an action in the name of the personal representative of the original plaintiff who has died is quite in point. When an application is made to register a trade mark the date of the application is all important. It is from that date that the ownership of the trade mark subsequently registered will stem. The change of the name of the plaintiff in an action does not matter in the same way because it does not make such a difference to the ultimate result of the case.

You might find that you were statute barred.

Apart from the question of being statute barred, the date of commencement has not any effect on the ultimate result of the action. I do not think it is necessary to go into further details at the moment.

In response to the request of Senators that I should receive a deputation from the Association of Registered Patent Agents, I have no objection but it is rather late in the day. I did not receive any application to see such a deputation until now. I should like to point out to the House that three Bills are going through the Oireachtas and another is forthcoming about the rights of performers. Each is highly technical and the provisions of each affect a wide variety of interests, particularly the Companies Bill. The others are the Copyright Bill which we will take after this one, the Trade Marks Bill and the Performer's Rights Bill which I mentioned. They affect a lot of people and I have received numerous requests to meet deputations. Even though I should like to meet them it would be physically impossible for me to meet all these deputations. However, I shall consider the possibility of meeting these trade mark agents since the suggestion was made in the House that I am not going to regard this as a precedent: that because a request was made in the House I ought to receive deputations.

As this is mainly a Committee Stage Bill, I would be delaying the House and possibly become repetitive at a subsequent stage if I continued to discuss the provisions of the Bill.

Question put and agreed to.
Committee Stage ordered for Wednesday, March 13th, 1963.