Amendment No. 34. Amendment No. 35 is an alternative and No. 36 is related. These amendments may be taken together by agreement.
SECTION 83.
I move amendment No. 34:
In page 42, subsection (2), to delete lines 22 to 24 and substitute the following:
"unless all the partners are either or both a registered trade mark or patent agent or the partnership satisfies such conditions as may be prescribed for the purposes of this section. A partnership of one or more registered trade mark agents and one or more registered patent agents shall be deemed not to contravene section 106 or 125 of the Patents Act, 1992.".
Mixed partnerships now exist in the United Kingdom and there is no logical explanation why professionally qualified persons whose principal occupation is in their dealings with the Irish Patents Office should not join together in partnership. There is no sound reason for the perpetuation of this prohibition. Trade mark and patent agents have practised together since they became established as separate professions, but have been obliged by the aforesaid prohibition to organise these de facto partnerships as separate entities to their great inconvenience and cost.
The two professions have almost everything in common, except for the technical training required by patent agents to handle the inventive subject matter of patents. Practically all the respective formality aspects and the respective administrative requirements of the two professions mirror each other and are organised in the same way, such as filing, formal aspects of prosecution, grant or registration, renewal, opposition, revocation, restoration and most aspects of litigation. Trade mark practice and patent practice are universally recognised as integral parts of the larger discipline of intellectual property practice. They are founded on adherence to the relevant legislation as interpreted by case law, many of the decisions of which appear in the same publications, irrespective of whether trade marks or patents are involved.
The requirements which section 83 proposes to extend or perpetuate is particularly onerous in its application to small partnerships consisting, for example, of one trade mark agent and one patent agent. It causes unnecessary delay in the conferring or acquisition of partner status in such concerns. Furthermore, it has long been the case that practically every registered patent agent is also qualified as a registered trade mark agent, although the converse is less frequently encountered.
Deputy O'Keeffe's amendment seeks to exempt the profession from the requirements normally placed on partnerships. Sections 106 (2) and 125 (1) of the Patents Act, 1992, impose requirements that partnerships cannot hold themselves out to be patent agents and European patent agents unless all the partners are qualified. The same condition is imposed in section 83 (2) on trade mark agents who form partnerships. There is no justification for exempting trade mark agents from partnership obligations which are accepted by all other professional people. The only argument is that the UK allows for mixed partnerships, and it is the view of our office that that is not a sufficiently good reason for undermining the arguments I put forward. The case made by Deputy O'Keeffe has emerged relatively late in the day. We are not aware of complaints about the practice and we have not received representations directly on this aspect of the Bill.
The amendments in my name, Nos. 35 and 36, would effectively achieve the same result as that proposed by Deputy O'Keeffe; therefore, I support the amendment in his name. It is a matter of indifference to me which wording should be chosen. There should be some provision that recognises mixed partnerships which can hold themselves out as having both trade mark and patent agency skills. As the Minister said, the mere fact that that is permitted in the United Kingdom is not sufficient reason in itself to permit it here, but that begs the question, why is it permitted in the United Kingdom? The reason is that it makes good sense. Why should a practice that is lawful there be prohibited here if it makes good sense?
It is not a question of the public interest being compromised. Mixed practices as contemplated by Deputy O'Keeffe's amendment would not simply be a mix of registered trade mark agents or patent agents. They would also have to comply with such other conditions as might be prescribed. It might not be sufficient to have a token patent agent in what is effectively a trade mark agency or vice versa. Minimum proportions could be established by regulation.
The Minister gently upbraided me for appearing to favour closed shops. In my strongly held view, intellectual property law should be the subject of flexibility in matters such as this. Although this case has been put forward late in the day I would ask the Minister to whole-heartedly embrace Deputy O'Keeffe's or my amendments and put forward on Report Stage good reasons that it should not be permissible to have mixed practices subject to the right of the Minister to provide by regulations whatever safeguards are necessary to ensure they are not abused.
Mixed practices are allowed in the United Kingdom and there is no logical explanation why professionally qualified persons whose principal occupation is in their dealings with the Irish Patents Office should not join together in partnership. The Bill is modelled on the UK legislation.
I cannot argue with the proposition that, even though the argument has arisen late in the day, it is at least entitled to a coherent rebuttal. I accept there may be some validity in the argument put forward by Deputies O'Keeffe and McDowell, but it seems to be a dilution of the principle and it probably has implications for the European Patents Convention. I do not know whether it could be accommodated in the rules. As Deputies have requested, I will consider the matter, but I do not wish to mislead the House. I have said on a number of amendments, including Deputy McDowell's earlier amendments, that I am disposed towards bringing them back on Report Stage, by which I mean positively incorporating them in the Bill, but I cannot say that about this amendment until I examine it.
Perhaps the Minister will maintain neutrality until then.
I will maintain a position of neutrality until the amendment has been examined. If a submission is made to me on it, I will have it considered.
Amendment, by leave, withdrawn.
Amendments Nos. 35 to 42, inclusive, not moved.
I move amendment No. 43:
In page 43, between lines 25 and 26, to insert the following subsection:
"(9) No offence is committed under any enactment restricting the use of certain expressions in reference to any persons not qualified to act as a solicitor by use of the term ‘Trade Mark Attorney' in reference to a registered trade mark agent.".
Under the Patents Act, 1992, a registered patent agent who is on the European register may describe himself as a European patent attorney. The Bill does not allow a registered trade mark agent, even though entitled to legally represent trade mark owners before the Community trade mark office, describe himself or herself as a trade mark attorney. That means that Irish professional representatives are disadvantaged compared to their counterparts in other member states of the European Union, notably the United Kingdom. UK trade mark agents may be described as trade mark attorneys, but Irish registered trade mark agents, equally qualified by examination, may not be so described.
Irish registered trade mark agents are competing with United Kingdom agents and others to provide trade mark legal services for companies in the United States and the Far East which wish to register and secure advice on their trade marks with the new Community trade mark office.
The term "agent" in the United States does not carry the same credibility as the term "attorney". The professional body of Irish registered trade mark agents find it unfair and damaging that it cannot compete on an equal footing with other European practitioners, particularly those in the United Kingdom. Trade mark work from the United States will go to the United Kingdom because a United States company will perceive Irish trade mark agents have a lesser qualification than their UK counterparts because they cannot describe themselves as trade mark attorneys. Registered trade mark agents provide legal services in the field of trade marks and that should be reflected in their title.
I support Deputy O'Keeffe's amendment and have tabled one to insert a new section 90 designed to achieve the same result. I am not hung up on the wording chosen to achieve that result. I wish to bring to the attention of the committee a letter written to its members by the director general of The Law Society in this regard. It states:
I wish to bring to your attention the views of The Law Society in relation to the above Bill.
The Law Society submissions are contained in the attached copy of a letter dated 12th January, 1996 from the chairman of The Law Society's Company and Commercial Law Committee, Mr. Gerald FitzGerald, to Mr. Joe McDermott, of the Department of Enterprise and Employment.
The letter also states:
Most strongly of all it is the Society's view that the proposal, set out in opposition amendments, that trade mark agents be given the right by way of professional description to style themselves "trade mark attorneys" is wrong in principle and should be rejected. The Society strenuously objects to this proposal which, it would appear, is deliberately designed to cause confusion in the minds of the public between solicitors on the one hand and trade mark agents on the other. The term "attorney" has been exclusively associated with lawyers for centuries. The Society believes it is not in the public interest for trade mark agents to be given a statutory entitlement to present themselves as if they were solicitors.
The term "trade mark attorney" for many people, particularly in other jurisdictions such as the United States but also in this country, would immediately convey the impression that individuals so describing themselves were fully qualified lawyers.
We strongly submit that, as trade mark agents are not solicitors, the public's ability to identify and have confidence in solicitors should not be undermined by creating confusion in this way. Please understand that the solicitors' profession has no objection whatsoever to competition from trade mark agents. What solicitors fundamentally object to, however, is trade mark agents being provided with a statutory entitlement to present themselves as if they were solicitors. That is not in the public interest. I hope you will be able to see your way to supporting . . . [The Law Society's point of view].
While in some sense the term "attorney" may carry the meaning of being a lawyer, it does not have that exclusive meaning. We speak in terms of powers of attorney and a powers of attorney Bill is before the House. Being a person's attorney means that the attorney is that person's authorised legally empowered agent. Any member of the committee could appoint another to be his or her attorney. On some occasions the exercise of that power has been the subject of fraud. For example, if one executes a power of attorney in favour of one's accountant and, as he or she is entitled to do under such power of attorney, pledges the person's house, that pledge can bind that person. There are revocable and irrevocable powers of attorney.
United Kingdom trade mark agents may describe themselves as attorneys. The term "attorney" and the term "solicitor" have the same meaning in the UK and Ireland. There is not a special meaning of the term "attorney" here that does not exist in England. I know and greatly respect Mr. Murphy, but the arguments he makes about non-permission of the use of the term "attorney" by trade mark agents here would also apply in the United Kingdom.
We must deal with this matter realistically. A trade mark agent is given major powers by his client which, effectively, are analogous to that given to a solicitor.
If an international trade marks attorney conference were held here tomorrow, Irish trade mark agents would be the foremost paricipants and some solicitors might also attend it. Given that, it is unnecessary to put Irish trade mark agents, especially when acting for foreign companies, at a disadvantage compared to their UK counterparts. It is unacceptable to deny them the use of the term "attorney" when to most of those people it does not convey the meaning associated with the term "solicitor". Those people do not assume that the person with whom they are dealing can defend them on a criminal charge or sell houses on their behalf. The term "attorney" in that context means a formally authorised agent capable of binding his or her principal. To liberalise the law and give Irish trade mark agents the same opportunities as their UK counterparts, I argue that the Minister should accept this provision. It would create confusion in people's minds as between the status of trade mark agents and solicitors under Irish law.
While I accept there is some merit in the view expressed by The Law Society, it overstates the reasons for opposition to this provision and fails to deal with the position that prevails in the UK which does not prejudice English solicitors. People who deal with English trade mark agents under the term "attorney" are not confused about whether they are dealing with a solicitor under English law.
I am sympathetic to the proposals put forward by the two previous speakers. Coming from a Border area I appreciate the difficulty caused as a result of trade mark agents south of the Border working under one name and those north of it working under another. That difficulty needs to be addressed particularly in the light of increased dealings between companies in Border areas and those in the US as a result of the peace and reconciliation initiative, the Delors package and other measures. I look forward to hearing the Minister's reply.
Reference was made frequently in the arguments advanced by Deputies O'Keeffe and McDowell relating to the practice in the United Kingdom. The UK provision is consisetnt with its Copyright, Designs and Patent Act, 1988 which allows registered patent agents to use the terms "patent agent" or "patent attorney" under section 276 of that Act. The Lord Chancellor has accepted, in principle, that trade mark agents should have a right of audience in county courts. A similar suggestion for patent agents was rejected by the Attorney General's Office when the heads of the Patents Bill were being finalised. We adopted a different approach in the Patents Act, 1992, where, in section 126, we restricted the use of the term "European Patent Attorney" to persons who had passed examinations set by the European Patents Office.
Deputies Ned O'Keeffe and Michael McDowell referred to practice in the United States in support of their case. However, in discussions my departmental officals had with the association on 25 January it was admitted that a patent attorney is more qualified than a patent agent and that the two terms are not interchangeable as is the case in the United Kingdom. Unlike the European Patents Office, the equivalent office for trade marks — the office for harmonisation within the Internal Market — does not recognise the term "attorney" which does not enjoy widespread use within the European Community; I think it is used by three of the 15 member states only. I am also advised that the term could lead to confusion and ambiguities with regard to the qualifications of trade mark agents. Deputy Micheal McDowell stitched into the record the letter from the Director General of the Incorporated Law Society specifying why, in the view of that society, that confusion would arise.
I have approached Part V of the Bill — dealing with trade mark agents — on the basis that regulation of agents is necessary and this is reflected throughout Part V by the use of the term "registered". It is explicitly stated in sections 81 and 83 that the agent must be registered. Therefore, it is desirable that the full expression "registered trade mark agent" should gain currency among agents and users alike. The addition of a new term would militate against this and, for those reasons, is opposed.
I might remind the Minister that he is segmenting the market and committing the sin of which he upbraided me earlier. It could be suggested that we are using monopoly rights in the term "attorney".
Is the Minister accepting my amendment No. 43?
No. This is a relatively recent entrant to the debate. Although there is no reason to be dismissive of it without adequate study, I have studied what is the practice here and where it should differ from what has been the case in the United Kingdom. For example, I re-examined Deputy Michael McDowell's original Bill, which does not include this change, which is neither here nor there; indeed, on reflection, there may be a good argument for its inclusion.
It was drafted by a lawyer.
I listened to Deputy McDowell's earlier argument on the term "registered", and, as he will understand better than me, the arguments are not entirely separate. For example, he asked what I would think of somebody representing themselves as a solicitor and so on. The same argument applies here. While I am not particularly noted for my defence of the legal profession sometimes they are too easily criticised for no more than a cheap headline. They hold the view that confusion would arise if one were to use the term "attorney", which has not been the practice here.
Deputy Crawford reminds me that I have had representations from some of my colleagues which I am studying. To play safe, I am keeing an open mind on it for the technicalities of Report Stage. Nonetheless, my view is that I am unlikely to change from what has been the pattern here.
Amendment, by leave, withdrawn.
Section 83 agreed to.
Sections 84 to 86, inclusive, agreed to.
SECTION 87.
Amendment No. 44 in the name of the Minister. I note that amendment No. 45 is cognate and, by agreement, suggest that they be discussed together.
I move amendment No. 44:
In page 45, subsection (2), line 10, to delete "86 (1)" and substitute "86".
A decision taken by the Controller under section 86 (1) can be appealed to the High Court under the provisions of section 86 (3) and varied at the court's discretion. Therefore, it is more accurate to refer to section 86 than 86 (1). The same argument would apply to my amendment No. 45.
Amendment agreed to.
Amendment No. 45 has already been discussed with No. 44.
I move amendment No. 45:
In page 45, subsection (4), line 24, to delete "86 (1)" and substitute "86".
Amendment agreed to.
Section 87, as amended, agreed to.
Sections 88 and 89 agreed to.