I move amendment No. 14:
In page 21, subsection (3), lines 31 and 32, to delete "or, if the grantor is a body corporate, bearing the seal of the body corporate" and substitute "and this requirement may be satisfied in a case where the grantor is a body corporate by the affixing of its seal".
The present text is defective as it requires a body corporate to apply a seal when in fact some bodies do not have seals. The revised text allows for a signature or seal which can be accepted as drafted.
Deputy Michael McDowell has just joined us. I am sorry, Deputy you were unable to be here earlier. The Minister indicated that he is favourably disposed towards considering before Report Stage a number of the amendments in your name which you were unable to move.
May I move those amendments now?
I cannot allow you to do so but the Minister has said he is favourably disposed towards them.
Virtually all of them are protected from the point of view that they will be dealt with on Report Stage. I do not know if I am technically required to move them then but there is nothing to prevent the Deputy from reentering them.
Minister, I think you will be in a position during Report Stage to move the amendments which have fallen.
I move amendment No. 15:
In page 25, between lines 38 and 39, to insert the following subsection:
"(2) Upon receipt of an application for the registration of a trade mark, the Controller shall cause a search to be made amongst earlier trade marks as defined in section 11 for the purpose of ascertaining whether or not there is on record in respect of the same or similar goods or services, an identical or similar earlier trade mark.".
The purposes of this amendment is to create a statutory duty on the part of the Controller to cause a search to be made in respect of conflicting trade marks which are similar or identical to earlier ones. The Minister's attitude heretofore has been that there will be such a provision in the rules. Some of those who are intimately concerned with the operation of the Bill are anxious that the prior search might be informally abolished simply by its non-inclusion in the rules or by a change in the rules at a later stage. What is the Minister's attitude to the creation of such a clear statutory duty?
I do not think the creation of an explicit statutory duty is necessary. This duty is adequately provided for as the Bill stands. The search is an administrative procedure which would be more appropriately provided for in the rules. The Bill will maintain the situation which exists under the current Act, where the search is provided for in the rules rather than in the Act. The wording of section 10 is such that it would be interpreted as imposing a search obligation on the Controller. The Deputy can be assured that it is the intention that the Patents Office will continue the present practice of carrying out a search of earlier marks as part of the process of examining trade mark applications. I am not persuaded that it is necessary to explicitly enshrine the search in the Bill. The office must carry out this search at the moment and it does so on an application being received.
There would not be a need to insert an explicit provision if there was not doubt on the issue. There were indications that it is possible that the prior search practice now in operation under the existing rules might be abandoned. I ask the Minister for an assurance that this is not the intention and that it is not under active consideration. It is one thing to say the former and another thing to say that it might be the first item on the agenda.
I suspect there might be a misunderstanding on this issue. I have no difficulty in giving the Deputy the assurance he seeks. This is not the intention and I refer him to section 10, where it is manifestly implicit that the search procedure will continue and it is not intended that this will change.
As the Minister will appreciate, if the practice of search were discontinued and section 10 was merely relied on as an invalidating provision, it might be thought that the onus to carry out this kind of research was being cast on holders of trade marks and their agents. The primary worry is that if the Patents Office discontinues prior search and merely relies on the provisions of section 10 to invalidate a registration or make a mark erasable on that ground, the onus might be thrown on the trade mark proprietor where as there should still be an onus on the office itself.
The assurance I give now and which I gave on Second Stage was on deliberate understanding of the implications of the point the Deputy has raised. This is the official advice I have been given and there is no indication that this will change.
