Select Committee on Enterprise and Economic Strategy debate -
Friday, 2 Feb 1996

SECTION 19.

Mr. Rabbitte

I move amendment No.11:

In page 16, subsection (1), line 5, after "business" to insert "or otherwise for the purpose of dealing in any way (including offering or exposing for sale of hire)".

This relates to the section providing that the proprietor of a registered trade mark may apply to the court for an order for the delivery up of infringing goods or materials. I have expanded the wording of section 19 (1) to avoid doubt as to the meaning of "business" which is defined in section 2 as a trade or profession. Deputy O'Keeffe referred to this on Second Stage. The wording proposed is in line with that used in section 27 (4) of the Copyright Act, 1963. It was also suggested, on behalf of the anti-counterfeiting group that there could be a possible challenge to the scope of the term "business" as it stands.

Mr. T. Kitt

I appreciate what the Minister said regarding section 19 (1). I would like him to comment on the need to involve the District Court as well as the Circuit Court. Under sections 19 and 22 of the 1995 Bill there is a practical difficulty. This relates to the calls for enforcement of trade mark proprietors' rights contained in the Bill. If we fail to empower the District Court to make orders there will be problems, primarily outside Dublin, because rural circuit courts are required to sit in various counties within the circuit at various times. Will the Minister comment on this dilemma, particularly outside the Dublin area? Many District Court areas tend to be primarily county-based which means the problem is not so acute. However, a problem arises due to the nature and manner in which Circuit Court vacations occur. This is a question of efficiency of delivery and there is a case for empowering the District Court and the Circuit Court to make orders for delivery up.

Mr. Rabbitte

The argument that Deputy Kitt outlined has been made to us and considered. The advice from the Attorney General's Office is that we have to hang our hat on one or other, and our firm advice is that it should be the Circuit Court. I refer Deputy Kitt to the amendment I have just moved which, in effect, makes the provision vey much stronger. I accept that access outside Dublin, or at least in some places outside Dublin, may not be as convenient in all circumstances as one would like. The more important thing is that the substance of the provision is now very strong and the wishes of the industry have been met. In terms of the court of jurisdiction, we are sticking with the Circuit Court.

Mr. T. Kitt

I appreciate what the Minister has done in regard to the other section. The bottom line is that we should provide a sufficient and workable Bill. However, I ask the Minister to bear in mind for Report Stage that there is expense in going to the Circuit and High Courts but I will accept what he said.

Amendment agreed to.

Section 19, as amended, agreed to.