I am afraid that this Bill is very narrow and boring in comparison to the exciting menu I have just heard the House debate. However, I am assured that it is very necessary.
Our present law in this area in contained in the Trade Marks Act, 1963, and the rules made thereunder. Registration of trade marks is administered by the Patents Office, under the direction of the Controller of Patents, Designs and Trade Marks, which maintains the register. Changes in our legislation are necessary due to an EC directive on harmonisation of trade mark law throughout the Community and other international developments which I shall mention later.
In essence a trade mark is a badge of goodwill and the primary purpose of registration is to legally protect the exclusive rights of the proprietor and, thereby, the goodwill subsisting in the trade mark. The register is a record of what are claimed as exclusive rights. There are over 65,000 entries on the register at present and every year approximately 6,000 new applications are made.
The primary purpose of this Bill is to give effect to EU Council Directive No. 89/104 to approximate the laws of member states relating to trade marks. Implementation of the directive will reduce or eliminate differences in approach between EU member states in the area of trade marks, thereby reducing barriers to competition and assisting the completion of the Single Market.
At the heart of the law governing registered trade marks are the key questions of how marks should qualify for registration and what rights are conferred by registration. In order to be registered, a mark must be able to fulfil the essential function of a trade mark — that of distinguishing its proprietor's goods or services from those of his competitors. It may not, for example, be descriptive of the goods or be a word that another trader might legitimately wish to use to describe his goods, nor may a mark be validly registered if it conflicts with an earlier right, for example, a similar trade mark already on the register.
Moreover, the registration of a word or device as a trade mark does not give an absolute monopoly to all uses of that word or device; it is necessary in law to make clear what is the scope of the protection conferred and what acts constitute infringements of the trade mark right.
The directive seeks to ensure that, as far as possible, these questions are answered in the same way throughout the Community. Article 3 is concerned with grounds for refusal or invalidity that relate to the registrability of the mark — sometimes referred to as absolute grounds. Article 4 refers to grounds concerning conflicts with earlier rights — often referred to as relative grounds — while article 5 deals with the rights conferred by a registered trade mark.
The directive is concerned with substantial law, not procedures. While it sets out the ground for refusal or invalidation of registered trade marks, it states specifically that member states remain free to fix the procedures whereby these grounds are applied. This is why articles 3 and 4, which deal with the grounds for refusal or invalidation, include the words "shall not be registered or if registered shall be liable to be declared invalid".
Countries like the UK and Ireland, who register trade marks only after search and examination, can continue to do so while countries that do not search or examine but leave the validity of a registration to be settled by litigation are free to retain their systems if they so wish. The essential requirement is that there must be some legal mechanism whereby the grounds of objection contained in articles 3 and 4 can be considered. The changes to our legislation needed to give effect to these articles are twofold.
First, the test for registering a trade mark will be whether the mark is capable of distinguishing its owner's goods or services from those of another. The new and wider definition contained in article 2 of the directive is reflected in section 6 of this Bill which permits registration of geographic names and the shape of goods or of their packaging.
Second, the rights enjoyed by a registered mark will be broadened so that in future another person's use of a mark on similar goods or services will constitute infringement. Article 5 of the directive gives a much wider protection than was available under the Trade Marks Act, 1963. Under that Act, infringement proceedings could only be taken if another person used the mark on the precise goods for which it was registered. If that other person used the mark on similar goods or used it to sell services related to the goods for which the mark was registered, then the owner did not have recourse to trade mark legislation and had to rely instead on a common law action for passing off.
Section 14 of the Bill will not only extend these broader infringement rights to similar goods but, in the case of a mark that has a reputation in the State, extend infringement rights to non-similar goods where the infringing use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the well known mark.
The second main purpose of the Bill is to make provision for the new Community trade mark. Council Regulation 40/94 of 20 December 1993 established the Office for Harmonisation in the Internal Market for trade marks and designs. This office will register Community trade marks that will have effect in all member states.
The Community trade marks system will operate in parallel with national systems, and offer trade mark owners the opportunity to register their mark throughout the Community by means of a single registration. This Bill makes provision in connection with the operation of Council Regulation 40/94. Applications for a Community trade mark can be made through the Patents Office in Dublin.
A third aim of the Bill is to enable ratification of the Protocol to the Madrid Agreement concerning the international registration of marks and also to implement certain provisions of the Paris Convention for the Protection of Industrial Property. Explicit provision is now being made in Part III of the Bill to allow us to meet our various obligations under both the Madrid Protocol and the Paris Convention.
At present, an Irish trade mark owner who wishes to protect his mark in overseas markets must apply separately for registration in each of the countries in which protection is desired. This entails going through whatever procedures are required in each country, paying fees to each national office and undertaking substantial costs to pursue the various applications.
Trade mark owners in some European countries are able to register their mark by means of a single application under an international arrangement known as the Madrid Agreement. Although this agreement had functioned for more than 100 years, it had a membership of only 44 countries. This is partly because participating countries conduct little or no examination of applications and objections to a trade mark have to be pursued through litigation after the mark has been registered.
In contrast, our trade marks system is based on registration being granted only after the mark has been examined by the controller, including a search of the register for possible conflicting marks. Given the lack of compatibility between the Madrid system and many national systems it was not surprising that many countries, including the United States, Canada, Japan, the UK and Ireland, remained outside the Madrid Agreement. A Protocol to the agreement was concluded on 27 June 1989 which overcame the difficulties we had with the original agreement.
The fourth aim of the Bill is to facilitate the registration of trade marks in respect of services. Up to now, service industries were unable to do so as section 11 of the Trade Marks Act, 1963, confined the definition of a trade mark to only goods. This Bill will facilitate the registration of trade marks in respect of services by broadening the definitions of a trade mark as contained in section 6 to cover services. This will benefit service industries who will now be able to protect the goodwill associated with their marks and should assist in attracting service industries to Ireland.
Let me now turn to the detail of the Bill. I should highlight two new provisions which were introduced on Report Stage in the Dáil as sections 12 and 25.
Section 10 sets out the relative grounds for refusal of a trade mark application. Relative grounds have to do with conflict with an earlier trade mark or application as distinct from the absolute grounds for refusal in section 8, which relate to the nature of the mark itself. Section 12 provides, by way of exception to section 10, that the controller shall not refuse an application for registration despite the existence of relative grounds where an applicant demonstrates that there has been honest concurrent use of the applicant's mark with the earlier mark.
The controller will take account of honest concurrent use in considering any opposition to the application. This provision which was introduced at the request of the Association of Patent and Trade Mark Agents, replaces section 20(2) of the Trade Marks Act, 1963, which also dealt with honest concurrent use.
The second new provision is section 25 which deals with powers of seizure and search for infringing goods, material or articles as defined in section 21.
Following the Committee Stage debate in the Dáil on section 92, dealing with the fraudulent use of a trade mark, I was persuaded that more effective deterrents to counterfeiting were needed. Section 20 offers trade mark proprietors the option of applying to the High Court for an order for delivery up of infringing goods. This remedy may not be effective against professional counterfeiters who will likely fail to obey the order and simply move their counterfeit goods to another place. The powers of search and seizure will enable the Garda Síochána to take immediate action following application to the District Court. Seizures will involve a financial sanction in direct proportion to the scale of counterfeiting involved and should be a serious deterrent to those who might seek to infringe the rights of trade mark owners.
Part I of this Bill clarifies general matters and provides for repeal of the present law. Part II deals with the registration of trade marks generally. It reenacts much of what was contained in the Trade Marks Act, 1963, while taking account of various changes that have taken place since enactment, particularly those necessitated by Council Directive 89/104.
Section 47 now provides for a trade mark to be registered for ten years and renewed for further periods of ten years. Under existing legislation the first registration period is for seven years with renewals for successive periods of 14 years. This will bring our registration periods into line with international norms. Section 54 introduces a new category of trade mark whereby an association of members can register a collective mark in respect of goods or services.
Part II of the Bill covers the various provisions necessary to take account of the new Community Trade Mark Regulation 40/94, the Protocol to the Madrid Agreement and our obligations under the Paris Convention.
Part IV contains administrative provisions many of which re-enact existing legislation. Matters covered here include the maintenance of the Register of Trade Marks, the powers and duties of the controller of patents, designs and trade marks and legal proceedings and appeals.
Part V deals with the trade mark agents and replaces section 69 of the 1963 Act. Section 84 provides for the controller to maintain a register of trade mark agents while section 86 outlines the eligibility requirements to be placed on the register of trade mark agents.
Section 90 provides for rules governing the register as well as the professional qualifications and conditions for registration of an agent. Section 91 is a new provision that confers privilege on communications between registered trade mark agents and their clients in the same way as between solicitors and their clients. The provisions outlined in this Part follow largely on the existing provisions in section 105 to 109 of the Patents Act, 1992, as they relate to patent agents.
Part VI is devoted to offences and introduces important new measures to deal with the growing problems of the fraudulent use of trade marks and counterfeiting. Section 92 gives much stronger protection to registered trade marks by broadening the scope of offences to include use of a mark which is identical to, or nearly resembles, a registered trade mark.
The unauthorised use of a registered trade mark devalues the reputation of that mark as the counterfeit goods are generally of inferior quality. Such use also harms traders in the genuine goods who lose business. This Bill will provide trade mark proprietors with wider rights against acts of infringement as defined in section 14.
Part VII of the Bill deals with miscellaneous and general matters. Section 96 breaks new ground by placing the onus of proving use of a trade mark on the owner where use of the mark is contested. In the case of a person seeking to have a mark cancelled on the grounds of non-use under the 1963 Act, the burden of proving non-use rests with that person. This is a difficult matter and it is reasonable and straightforward to call upon the owner of the mark to prove use and this is the approach taken here.
The First and Second Schedules of this Bill set out requirements and procedures for registration of collective and certification marks, respectively. The Third Schedule deals with transitional provisions. Existing registered marks kept under Parts A and B of the former register shall be deemed to be transferred on commencement of the new Act to the new register as set out in paragraph 2. The remaining transitional provisions relate to the status of applications for registration pending at the date of the coming into operation of the new legislation as well as other matters. Paragraph 15 deals with applications for trade marks in respect of services that were made between 1 January 1993 and commencement of the new Act.
I believe there will be a general welcome for this Bill. Its enactment will improve the environment for Irish businesses to register their trade marks and facilitate trademark owners in protecting against infringement.
I commend the Bill to the House.