Amendments Nos. 1, 21 and 22 are related and may be taken together by agreement.
Industrial Designs Bill, 2000: Committee Stage.
I move amendment No. 1:
In page 8, subsection (1), between lines 25 and 26, to insert the following definition:
" 'design right' shall be construed in accordance with section 42;".
All the amendments are concerned with the "design right" under the Bill. Amendments Nos. 1 and 21 are concerned with creating legal clarity around the term "design right" and providing a definition of the term. Amendments Nos. 21 and 22 operate together to create greater legal certainty concerning the effective date from which an infringement action may be taken under the new law.
Amendments Nos. 2 and 7 form a composite proposal and amendment No. 8 is related and they may be taken together by agreement.
I move amendment No. 2:
In page 9, between lines 27 and 28, to insert the following subsection:
"(7) A design shall not be deemed to have been made available to the public-
(a) for the sole reason that it has been disclosed to another person under explicit or implicit conditions of confidentiality,
(b) where it is made available less than one year before the filing date or, where priority is claimed, the date of priority, by a person as a result of information provided or action taken by the author or his or her successor in title, or
(c) where a design has been made available to the public without the authorisation of the author or his or her successor in title.”.
Amendments Nos. 2 and 7 simply switch the location of subsection (3) of section 12 to the interpretation section of the Bill. The amendments are intended to provide greater clarity to improve the ease of practical application of the provisions relating to the novelty and individual character by making it absolutely clear that the definition of "made available to the public" applies wherever the phrase is used in the Bill and not just in relation to section 12.
Amendment No. 8 provides for the deletion of subsection (4) of section 12 which deals with the display of designs at official or international exhibitions certified by the Minister. In essence, this subsection states that the display of a design at an exhibition will not destroy the novelty of that design, provided the application by the proprietor to register it is made within six months of the opening date of the exhibition. The provision is primarily a repeat of section 76 of the Industrial and Commercial Property (Protection) Act, 1927, which was considered very useful because it enabled design proprietors to test their design on the market prior to registration.
I draw the committee's attention to subsection (3) of section 12, now subsection (7) of section 2 on foot of amendments Nos. 2 and 7, which provides that the novelty of the design shall not be destroyed where it is made available to the public less that one year before the filing date of the application for registration or the priority date, whichever is earlier. Under this subsection the designer can use the design and test it on the market during 12 months prior to applying for registration without risk of destroying the novelty and individual character of his or her design.
I move amendment No. 3:
In page 10, line 33, to delete "premises." and substitute the following:
Amendment No. 3 is proposed to validate in the law on the protection of industrial design notices served under this Bill, which are sent via electronic means such as fax and e-mail. It is intended to facilitate the world of e-commerce and the realities of the methods employed in modern society to notify persons of legal requirements or other matters that may be important to the establishment of claiming legitimate rights. Similar provision was included in the recent Copyright and Related Rights Act, 2000, which was approved by the Oireachtas last year.
Amendment No. 4 is a drafting amendment and is grouped with amendments Nos. 34 to 37, inclusive, and 39. These amendments may be taken together by agreement.
I move amendment No. 4:
In page 11, subsection (5), line 3, to delete "£1,500" and substitute "\1,905 (£1,500)".
This amendment facilitates the inclusion of euro amounts in the legislation in recognition of the changeover to the euro next year.
Amendment No. 5 is consequential on amendment No. 6 and they may be taken together by agreement.
I move amendment No. 5:
In page 11, line 16, to delete "Every regulation" and substitute "Subject to subsection (2), every regulation".
This is a technical amendment by virtue of amendment No. 6 which is related to the inclusion of the new subsection (2) in section 10. It creates a link between the two subsections in the interests of clarity and legal certainty. Amendment No. 6 proposes to insert a new subsection which provides that, in cases where regulations are made under section 79 of the Bill which enable the Minister for Enterprise, Trade and Employment to introduce the measures by secondary legislation to achieve the ratification and implementation of the Geneva Act of the Hague agreement concerning the international registration of industrial designs, such regulations will not come into effect until both Houses of the Oireachtas have taken positive action, by resolution, to approve the draft regulations laid before them. This resolution procedure is proposed to give an active role to the Oireachtas in the ratification of this international treaty as distinct from the passive role associated with the procedures under the current text of section 10.
I move amendment No. 6:
In page 11, between lines 22 and 23, to insert the following subsection:
"(2) Where a regulation is proposed to be made under section 79, subsection (1) of this section shall not apply and a draft of a regulation to be made under that section shall be laid before both Houses of the Oireachtas, and the regulation shall not be made until a resolution approving the draft has been passed by each House.".
I move amendment No. 7:
In page 11, lines 38 to 43, and in page 12, lines 1 to 6, to delete subsection (3).
Perhaps the Minister will read his note to us on that section.
This section relates to spare parts used for repair purposes. The existing law on the protection of industrial designs is primarily set out in the Industrial and Commercial Property (Protection) Acts, 1927 to 1958, and the rules made thereunder. There is some reference to design in copyright law and the Copyright and Related Rights Act, 2000, provides an exception to copyright protection for functional designs produced in industrial quantities, but none worth mentioning in the context of spare parts used for repair purposes.
The 1927 Act contains the definition of design, but does not specifically exclude spare parts, whether used for repair, from the protection afforded by the Act. It does exclude from the definition such designs as are, " mere mechanical devices or those that do not have aesthetical appeal". The only conclusion that can be reasonably drawn from an examination of the existing law, therefore, is that spare parts, including those used for repair purposes, are potentially protectable under the current Irish law where they meet the criteria set out in the definition of design in the 1927 Act. However, this matter is very unclear and results in an unacceptable level of uncertainty in Irish design law.
We have now been presented, by virtue of Article 40 of the EU design directive on the legal protection of designs, with an opportunity to tidy up Irish law in this area and provide much needed clarity in the law. Article 3(3) of the EU directive sets out the position in general relating to spare parts and how they should be treated in design law. This provides that, where a spare part remains visible during the normal use of the product of which it forms a part, it will be eligible for protection, provided the spare part is also new and has individual character. Article 40 of the directive qualifies this, however, by stating that member states shall maintain in force their existing law on spare parts used for repair purposes in order to restore the appearance of a complex product, but may introduce changes to those laws for the purpose of liberalising the market for such parts.
Section 14 of this Bill implements the provisions of Article 3(3) in respect of spare parts in general. There is then the matter of how we choose to treat spare parts used for repair purposes in the new legislation. The provision of subsection (1) of section 14 would, if left unqualified, operate to protect spare parts used for repair purposes. This would mean that manufacturers of, for example, motor cars, electrical goods such as fridges, washing machines and cookers as well as furniture and a host of other consumer durables would be empowered in law to prevent smaller independent spare parts manufacturers from making and selling replacement parts for their products.
As Deputies will be aware, there is a very large and vibrant spare parts industry spread across all industrial sectors. In the motor car sector, many Irish businesses are involved in producing replacement parts such as car doors, wings, mirrors and upholstery to name but a few. Ireland does not have, however, a primary vehicle manufacturing sector to speak of and, therefore, legislation to prevent the production of independent companies of replacement parts for cars would not operate in favour of Irish industry. Neither would it operate in the interests of the Irish consumer given that monopoly rights tend to produce pricing structures that do not generally operate in favour of consumers.
It is my intention to take the option of liberalising the market for spare parts used for repair purposes offered by the directive. I do this in Ireland's strategic interests, in the interests of the small and medium sized enterprises in Europe and, most of all, in the interests of consumers. Ireland's strategic interest lies in the availability and price of such spare parts to Irish consumers. Any move to maintain or introduce protection by registration of such parts could only result in the long-term in higher prices and restricted supply of such parts arising from the monopoly control that such a law would create. That scenario could only be harmful to Irish and European consumers and must, therefore, be avoided.
I referred a proposal to enable this Bill to be amended to facilitate liberalisation of the spare parts market in the law to the Office of the Attorney General for legal clearance. Given that the technical and legalistic nature of the matters to be considered by that office in advising on this issue require further time, I propose to defer my amendment on spare parts until Report Stage.
I thank members for the opportunity to clarify the matter. I am proceeding with the liberalisation option in the interests of consumers and hope the committee will agree with me on this.
That is a valuable statement from the Minister of State on his intentions. Ireland is not a primary manufacturer of motor cars and it is clear where our strategic interest lies. We have a significant spare parts industry and there is no dispute with the direction the Minister of State has indicated he will take.
I thank Deputy Rabbitte and the Minister of State for reaching an accommodation.
Will the Minister of State comment on the onus this section places on the controller to establish whether the design is new? Has he had feedback from the controller's office to the effect that it can meet the obligations contained in this section?
This gives the controller the power to refuse registration of a design on specific grounds. It is a very important provision in that it gives power to a statutory officer, namely the controller, to control access to the intellectual property rights, that is, the design rights that exist upon registration of a design. If the application for registration of a design is refused by the controller, no design right shall subsist in a design and the applicant cannot stop the use of the design by a third party. Part (a) of the subsection implements one aspect of Article 11 of the EU design directive giving the controller the power to register a design which is contrary to public policy or to accepted principles of morality. The power to reject applications for the registration of intellectual property on these grounds is a common feature of intellectual property law. This is a regular feature, which is understandable on morality grounds or if a copyright work has been infringed. The third case relates to matters such as national flags.
It is hugely onerous in terms of the searches that the controller might have to engage in.
My understanding is that it would be a fairly straightforward administrative function in respect of these three areas.
Amendments Nos. 9 and 10 are related and may be taken together by agreement. I ask Deputy D'Arcy to take the Chair.
Deputy D'Arcy took the Chair.
I move amendment No. 9:
In page 11, subsection (2), line 20, after "Every filing" to insert "referred to in subsection (1)".
This amendment is intended, again, to recognise international commitments. Subsection (2) of section 26 provides that an application for the registration of designs, which is equivalent to a regular national application for registration under domestic law of a country that is party to the Paris convention for the protection of industrial property or to the agreement establishing the World Trade Organisation or under any other international agreement to which Ireland and that country are party, shall be treated as giving rise to a priority under this section.
Amendment No. 9 is a technical amendment which makes it certain it is applications that qualify for priority under subsection (1) that are being referred to and not all applications as may possibly be understood from the existing text. Amendment No. 10 makes it clear that, in cases involving applications from countries that have a bilateral agreement with Ireland, citizens of such countries may also avail of the right to priority under this Bill.
I move amendment No. 10:
In page 15, subsection (2), line 23, after "which" to insert "the State and".
Will the Minister comment on the technological capacity of the office of the controller to register designs?
The office is in a position to deal with these.
Is there, for example, an electronic filing system?
The existing register in the Patents Office is manual, but the aim is that the register shall be kept in electronic form in the future. I referred to that briefly in an earlier contribution. The eventual intention is that information on all designs registered since the Industrial and Commercial Property (Protection) Act, 1927, came into force should be available in electronic form by 2002.
I move amendment No. 11:
In page 17, subsection (2), lines 16 to 18, to delete "a period of up to 30 months from the filing date of the application or, if priority is claimed, from the date of priority," and substitute "such period as may be prescribed by the Minister".
We are moving along extremely efficiently today, slightly quicker than the copyright legislation which took us some time. The deferment period of 30 months, which I have included in subsection (2) is consistent with the deferment period in the draft community design regulation and the Geneva Act of the Hague agreement concerning the international registration of industrial designs. Notwithstanding this, the view has been expressed to my Department that the period of 30 months is too long.
Having considered the matter further, I believe the best approach to this issue is to provide that the period of deferment may be set by the Minister in secondary legislation. Hence my proposal to delete the reference to 30 months in subsection (2). It is my intention to prescribe a deferment period of 30 months in the interests of consistency with the draft Community design regulation and the Geneva Act of the Hague agreement, both of which set an international standard in this area of up to 30 months. However, I will keep this matter under review when the new legislation is operational and, if there is evidence following implementation that this period is hindering the operation of the design registration system, those provisions can be amended relatively easily and quickly to correct any such problems.
I move amendment No. 12:
In page 18, subsection (5), line 4, after "proceedings" to insert ", unless objection is taken thereto by a party to the proceedings".
This might appear to be a pedantic point, but it is more serious than that. I seek to have included at the end of subsection (5) the words, "unless objection is taken thereto by a party to the proceedings". The statement, which can be taken as evidence by the controller, is not even a sworn statement. It is a departure from the rules of evidence that an unsworn certificate can have the status it is accorded here. The right of cross-examination is a constitutional right. One cannot cross-examine a certificate. Even a requirement to make an affidavit would have been an improvement. The right to cross-examine was established in the Haughey and other cases. It is also established under the human rights convention. Certificate evidence should only be accepted if there is no objection. The amendment is not especially onerous. It does not alter the capacity to apply to the court for rectification which is an important right. It merely says, "unless objection is taken thereto by a party to the proceedings". If objection is taken, it is reasonable that the controller should give evidence by affidavit and, if necessary, be open to examination because a lot could ride on a case. It is insufficient to have a written statement from the controller where there is an objection. It is reasonable to require an affidavit and, depending on a particular case's circumstances, the controller should be subject to cross-examination. This trend has emerged elsewhere and I am concerned at this departure from the rules of evidence which exist in common law.
There is a practical dimension. Our view is that there should be no obligation on the controller to appear before the High Court in proceedings about the rectification of the designs register. The controller's signed written statement should be sufficient in the vast majority of cases. The text of section 33(5) gives the High Court the power to direct the controller to appear and be heard, despite the provision of a statement. Any party to the proceedings can make an application requesting the controller's presence and the High Court will comply if it considers it appropriate. The wording of the subsection reiterates the text of section 86(4) of the Patents Act, 1992, and section 78(2) of the Trade Marks Act, 1963. There are no difficulties in practice with these provisions and, therefore, the additional text proposed is not required. I do not accept this amendment.
I do not dispute that in most cases, as the Minister stated, the controller ought not to be required to appear. The amendment says that only in the event of an objection would he or she be required to make a sworn statement, which is not onerous.
We are not far apart. My interpretation is that when the controller is needed a person can apply to the court to have him or her appear in person under cross-examination. I accept the Deputy's point and believe that it can be accommodated under the current text.
The line, "unless otherwise directed by the High Court," is not the same as the application of the accepted rules of evidence. If a person, who believes that something important rides on the case, enters an objection, then an affidavit would be required. Counsel could make such an argument to the High Court which could direct the controller if it considered it appropriate. I am old fashioned in my attitude to this and unhappy about the trend in recent legislation of departing from tried and trusted rules of evidence. I will consider my position for Report Stage.
I move amendment No. 13:
In page 18, line 27, to delete ", in any case, the High Court" and substitute "the High Court or, as the case may be, the Controller".
The purpose of this section is to establish that an entry made by virtue of a court order, or an order of a controller, has effect from the date on which the entry should have been made, and that a varied entry has effect as if it had been made in its varied form, and that an entry deleted shall be deemed never to have had effect. The section as currently drafted qualifies this provision by permitting the High Court to direct that such an order may have a different effect that better suits the circumstances of a particular case. The amendment will give the same power to the controller as to the High Court over rectification of the register. Given that the controller may also make an order rectifying the register under section 34, this makes sense.
The Minister brought a large sheaf of amendments. Why are there so many amendments to a Bill on which there was no pressure over deadlines? There must be good reasons for them because this is not a contentious Bill. The Opposition had little time to consider many of these amendments. Having done so, we reserve the right to introduce amendments on Report Stage.
Amendments Nos. 15 and 16 form a composite proposition on which amendments Nos. 14, 17 and 18 are consequential. Amendments Nos. 14 to 18, inclusive, may be discussed together by agreement.
I move amendment No. 14:
In page 19, subsection (1), line 22, to delete "subsection (2)" and substitute "subsection (3)".
These amendments concern making available to the public material on the design as registered. It reverses the order of subsections (2) and (3) in the interests of making the Bill easier to read and understand. This is more logical and means that all matters relating to the rights to inspect the register are dealt with before matters concerning material not subject to this right. The new subsection (2) also amends subsection (3), which it replaces, by insertion of the clause, "other than an entry that is not open to public inspection by virtue of subsection (3)". This change recognises the special circumstances that will apply in cases falling under the terms of the new subsection (3), where deferment of publication occurs, provides legal clarity and improves the Bill's language.
Under amendment No. 16, the new subsection (3) also amends the existing subsection (2), which it replaces, by insertion of the clause, "the register shall not be open to public inspection in relation to that design", in place of the text, "the representations of the design shall not be open to public inspection." This is to make it clear that no information from the register, where publication of the registration of a design has been deferred, shall be available to the public until the deferment period expires. The most useful information on a registered design may be the representations, but the supporting information, describing the design and giving details of the registered proprietor, class of registration and so forth, may assist a person, perhaps a competitor, in identifying a design and copying it for commercial use. It is, therefore, best to prevent access to all such information, as this amendment provides for.
Amendments Nos. 14, 17 and 18 are technical ones reflecting the change in the order of subsections (2) and (3), made by amendments Nos. 15 and 16, for correct cross-reference.
I move amendment No. 15:
In page 19, lines 25 to 27, to delete subsection (2) and substitute the following:
"(2) Where a request is made to the Controller for a certified or uncertified copy of, or extract from, an entry in the Register, other than an entry that is not open to public inspection by virtue of subsection (3), the Controller shall issue a copy of the entry or extract to the person making the request on payment of the prescribed fee.".
I move amendment No. 16:
In page 19, lines 28 to 31, to delete subsection (3) and substitute the following:
"(3) Where deferment of publication is requested under section 32, the Register shall not be open to public inspection, in relation to that design, until the expiry of that period of deferment.".
I move amendment No. 17:
In page 19, subsection (4)(b), line 36, to delete "subsection (3)" and substitute "subsection (2)".
I move amendment No. 18:
In page 19, subsection (5)(a), line 41, to delete "subsection (3)" and substitute "subsection (2)".
Amendments Nos. 19 and 20 are related and will be discussed together by agreement.
I move amendment No. 19:
In page 20, paragraph (a), line 39, to delete "and".
Amendments Nos. 19 and 20 provide that the controller shall inform members of the public whether any disclaimers, memorandums or declarations of partial invalidity of the design right have been entered in the draft register in respect of that design. The fact that there is a disclaimer memorandum or a partial invalidation of a design would be of significant interest to any person interested in establishing whether a design right exists in that design or to what extent that protection afforded by the registration is restricted or limited by such memoranda or partial invalidation. It is only right therefore that this information should be made available by the controller to a person once he or she is able to identify the particular design to which this information relates.
I move amendment No. 20:
In page 20, between lines 39 and 40, to insert the following:
"(b) whether any disclaimers, memoranda or declarations of partial invalidity of the design right have been registered, and”.
I move amendment No. 21:
In page 21, subsection (1), line 32, to delete "design right" and substitute "a design right, which shall subsist in a registered design".
I move amendment No. 22:
In page 21, lines 33 and 34, to delete subsection (2).
Amendments Nos. 23 to 25 inclusive are related and will be discussed together by agreement.
I move amendment No. 23:
In page 23, subsection (2)(a), lines 11 and 12, to delete subsection (4) of section 44" and substitute "section 43".
The purpose of section 45(2) is to provide that any act carried out during the period between expiry and restoration of the design right, which would be deemed an infringement if the design right had not expired will still be treated as an infringement if carried out during the period when an application for extension of protection could have been made. The purpose of 45(3) is to provide that in the event of restoration of a lapsed design right there are special provisions to protect the interest of persons who commence acts which are retrospectively converted into infringements by virtue of such a restoration under the terms of the previous subsection. Amendment No. 25 is concerned with the fact that the subsection, as currently drafted, refers to publication of notice of the application for restoration. In fact, it is notice of the restoration itself that is published and not notice of the application for restoration. Therefore 45(3) should read, "publication of notice of the restoration".
I move amendment No. 24:
In page 23, subsection (3), line 16; to delete "subsection (4) of section 44" and substitute "section 43".
I move amendment No. 25:
In page 23, subsection (3), line 17, to delete "application for".
I move amendment No. 26:
In page 24, subsection (2), line 25, to delete "the making available or use of".
This amendment is proposed to ensure that Article 11(1)(b) of the EU directive on the legal protection of designs is implemented fully and correctly. The current wording leaves some scope for a different interpretation of that Article. Section 47 also includes a statement to the effect that the making available or use of the design would be the grounds for invalidation. This was inserted in the Bill in an attempt to clarify the intention of the directive in this matter. Article 11 of the Directive provides that a design shall be declared invalid if it does not fulfil the requirement of, among others, Article 8. Article 8 states that a design right shall not subsist in a design which is contrary to public policy or to accepted principles of morality. It does not refer to the making available or use of the design as a requirement for invalidations. Section 21(1)(a) of this Bill deals with the same issue with respect to refusal by the controller to register a design and this phrase is not employed there. As such this section needs to be amended to remove the reference. It is really a technical amendment.
I move amendment No. 27:
In page 24, subsection (6), line 40, to delete "registrable" and substitute "registered as a trade mark".
This is another technical amendment.
I move amendment No. 28:
In page 25, lines 39 to 43, and in page 26, lines 1 to 4, to delete subsection (1) and substitute the following:
"(1) At any time after a design has been registered, any person may apply to the Controller for the grant of a compulsory licence in respect of the design on the ground that-
(a) a demand in the State for a product incorporating the design is not being met or is not being met on reasonable terms, or
(b) a demand in the State for a product incorporating the design is being met by importation other than from a member of the World Trade Organisation,
and the Controller may make an order on the application as he or she thinks fit.".
The subsection provides that any person may apply to the controller for the grant of a compulsory licence on the grounds, firstly, that a demand in Ireland for a product incorporating the design is not being met or is not being met on reasonable terms. This is necessary to ensure that access to innovations and developments in designs are not being denied to the people in business of this state either through a refusal to distribute products made to the design in Ireland or through distributing such products at excessive prices or with unreasonable terms attaching to their use. The second ground for application for a compulsory licence is the ground that demand is being met by importation from a non member of the World Trade Organisation. This provision is designed to underpin the effective operation of the WTO agreement by permitting businesses from WTO member countries to produce goods incorporating a registered design for the Irish market where the only supply of such goods is being provided from outside the WTO. This proposed amendment of the subsection aims to ensure clarity, legal certainty and user friendliness and is modelled on the text proposed in section 9 of the Patents (Amendment) Bill, 1999.
I move amendment No. 29:
In page 26, subsection (1), line 20, to delete "a Member State of the EEA" and substitute "the State".
This is a technical amendment.
I move amendment No. 30:
In page 30, subsection (1), line 16, after "Garda Síochána" to insert "accompanied by such other members of the Garda Síochána or other person or persons as that member thinks proper,".
This section provides for search and seizure powers in civil cases where a suspected or actual infringements of invention property rights have occurred or are likely to occur concerning registered designs. Subsection (1) as currently drafted provides that the District Court may where satisfied that there are reasonable grounds for believing that infringing products or articles are being hawked, carried about or marketed authorise by order a member of the Garda to seize without warrant the product or articles and to bring them before the District Court. This additional text is being proposed to enable a member of the Garda to be accompanied by other members of the Garda or by other persons as he or she thinks appropriate. It may be useful for the Garda to be accompanied by the registered proprietor of the design or by experts in relation to the subject matter of the design to assist with identification of the infringing product. Section 71 of the Bill which is concerned with search and seizure of infringing products or articles in criminal cases already proposes this approach and the amendment will create consistency between the two provisions.
I move amendment No. 31:
In page 30, subsection (4), line 34, after "location" to insert "if to do so would divulge the identity of confidential informants".
This is not a contentious piece of legislation. This particular section is another ad hoc departure from the rules of evidence. Subsection (4) of the search and seizure section, section 62, says that "a witness or deponent shall not be obliged to indicate the source of the information upon which that witness formed the belief that material may be found in a particular location.". That is a pretty blanket exemption and I do not think there ought to be a blanket exemption from divulging the source of knowledge, unless there was a likelihood that it would compromise a confidential informant. I am not sure that I understand. If no injury is likely to be caused, then why should we depart from the rules of evidence here, why should the source of the knowledge not be divulged ? I am not sure why we are going to these lengths to say that a deponent or witness shall not be obliged to indicate the source of the information. It is about checks and balances. Theoretically, anybody can make a statement but is not obliged to source the information. If there is some kind of threat to the identity of confidential informants, that is fair enough, but if no question like that arises then I question the need for a blanket exemption.
My information is that the person who is attempting to seize the goods must be absolutely certain that the information is correct. The problem would be if that person was mis-informed and was wrong. That is the concern we would have.
What is the test of certainty? What safeguards will apply?
That is the problem. It would be difficult to make the call unless he was certain. Our concern is that it would open up legal problems if we are putting that responsibility on the person. He could not make the call unless he was certain.
Generally speaking, one cannot go even to the District Court and make a deposition and expect that in all circumstances it will be automatically accepted. Normally, it is subjected to some tests and where no threat is evident to a confidential informant, where no injury is likely to ensue, why the requirement for the blanket exemption?
The problem would lie in the possibility that if the informant got it wrong, then the provision would never be used again. According to this section, application to a District Court for seizure of infringing products or articles——
I ask the Minister to address the actual text of my amendment, which is extremely moderate in its scope. I am merely seeking to add the words: "if to do so would divulge the identity of confidential informants". We could live with that constraint if it was likely to divulge the identity of confidential informants, but if it is not so likely, why should we give this blanket exemption?
We would be concerned about legal certainty. We would be concerned that we would undermine the usefulness of the provision and make it obsolete.
I am not entirely persuaded that they are solid arguments.
I refer the Deputy to section 132(4) of the Copyright Act, but I will certainly examine it further between now and Report Stage.
I move amendment No. 32:
In page 30, subsection (5), lines 40 and 41, to delete paragraph (b) and substitute the following:
"(b) the person had no reasonable grounds for such seizure.".
This amendment relates to the same section. My amendment would seek to excise subsection (5) (b) where the test is malice. The words, "the information on which the registered proprietor applied for the order was given maliciously". The Minister referred me to section 132(4) of the Copyright Act. I refer the Minister to section to 133 (12) (b) of the Copyright Act, where a very similar amendment was accepted from me. I cannot recall whether the Minister came back on Report Stage with his own version of it, but the thrust of the point was accepted.
I am seeking here to moderate or soften the test somewhat. Malice is very difficult to prove.
Deputy Rabbitte's point is that the District Court would receive hearsay evidence without the obligation to reveal the source of the information. That is a good point. If anyone is allowed to make an allegation, it would allow for people making allegations for the wrong reasons and without any substance to them. It could be very damaging to a person in business.
I am checking the Copyright Bill. We did understand Deputy Rabbitte's position in regard to section 133 (12), but that referred to a direct seizure by the owner of copyright rather than under the order of the court. There is a distinction there in copyright law. In section 133 (25) of the Copyright Act, it deals with the court situation where a decision can be made on reasonable grounds. Section 133 (12) refers to direct seizure.
Do you require this to be raised on Report Stage, Deputy Rabbitte?
Yes. The point remains that the test is malice. I think that is a very high hurdle to overcome. My wording of the person having no reasonable grounds for such seizure does not weaken the section in any way, as far as I can see. The section we are dealing with is the right to make application to the District Court in terms of seizure of infringing products. I do not see how that weakens the section. I would argue that it strengthens it.
These are issues that I will examine between now and Report Stage. With regard to the Copyright Bill, the court will apply the reasonable grounds test before giving an order in the first place. There are issues that I would be willing to examine between now and Report Stage.
I move amendment No. 33:
In page 32, between lines 22 and 23, to insert the following subsection:
"(6) In infringement proceedings brought by the registered proprietor the appropriate court shall take into account any loss suffered by licensees.".
This deals with the right and remedies available to licensees of registered design. In general licensees are given the right to initiate proceedings against infringement of a design either through the registered proprietor or by themselves where the registered proprietor refuses to act. This additional subsection is being proposed in the interests of legal certainty and of providing clarity in relation to infringement proceedings before the court. Similar provision is contained in the Trade Marks Act, 1996 at section 34 and in the Patents Act, 1992 at section 51 in respect of exclusive licensees. The aim of the subsection is to ensure that where proceedings for infringement for a registered design are taken by the registered proprietor, the court shall take into account any losses suffered or likely to be suffered by licensees. This will permit licensees to subsequently obtain their share of damages or other compensation applied by the court for the infringement. Its inclusion in the new design legislation will contribute to the consistency of an array of intellectual property legislation.
On the infringement of design, will the European court have jurisdiction over a case elsewhere in Europe? How wide is the court's remit in this?
This is just for the Irish Courts.
Is there not a difficulty here in that the protection is really very limited?
As I said, it refers to our own domestic legislation, but we are clearly in line with international agreements as well.
Could the Minister envisage people taking action in a British court, given that an item designed here may be marketed commercially in the UK and the infringement could occur there?
This relates to those who have registered here. We cannot take action in Ireland with regard to UK design.
I must attend another meeting.
Deputy Perry took the Chair.
Amendment No. 34 was already discussed with amendment No. 4.
I move amendment No. 34:
In page 33, subsection (4)(a), line 12, to delete "£1,500" and substitute "\1,905 (£1,500)".
I move amendment No. 35:
In page 33, subsection (4)(b), line 16, to delete "£100,000" and substitute "\127,000 (£100,000)".
Amendment No. 36 was already discussed with amendment No. 4.
I move amendment No. 36:
In page 33, paragraph (a), line 24, to delete "£1,500" and substitute \1,905 (£1,500)".
Amendment No. 37 was already discussed with amendment No. 4.
I move amendment No. 37:
In page 33, subsection (4), line 47, to delete "£1,500" and substitute \1,905 (£1,500)".
I move amendment No. 38:
In page 34, lines 1 to 8, to delete subsection (1) and substitute the following:
"(1) The court may, on conviction of a person or being satisfied that there is aprima facie case to answer, where the court is satisfied that at the time of the arrest or charge the person had in his or her possession, custody or control-
(a) in the course of a business, trade or profession, a product, knowing or having reason to believe it to be an infringing product, or
(b) an article, knowing or having reason to believe it to be an infringing article,
order that the infringing product or article be delivered up to the registered proprietor of the design or to such other person as the court may direct.".
This is a technical amendment.
Amendment No. 39 was already discussed with amendment No. 4.
I move amendment No. 39:
In page 35, subsection (3), line 19, to delete £1,500" and substitute \1,905 (£1,500)".
I move amendment No. 40:
In page 37, subsection (4), line 15, to delete "is in force" and substitute "has been confirmed by the Revenue Commissioners".
The effect of this amendment would be to excise the words "is in force", which carries the inference that it is automatically unlawful and would be replaced by the words: "has been confirmed by the Revenue Commissioners". This would give the Revenue Commissioners some role in deciding whether to accept a notice. It seems wrong that Customs law of the State can unilaterally be altered by a private entity. If the section were to read: "when a notice given under subsection (1) has been confirmed by the Revenue Commissioners", that would be a safer drafting of this subsection.
The wording is used with the purpose of taking into consideration the intention of subsection (2), which clarifies that the period for which the notice is to be in force shall not exceed five years and shall not extend beyond the period for which the design right is to subsist. To simply receive confirmation from the Revenue Commissioners that a notice has been given would not adequately implement the intention of subsection (2), as it would make it possible for notices, under this section, to be effective beyond the maximum period specified in that subsection. Therein lies a difficulty. The text of this section is identical to the text of section 147 of the Copyright and Related Rights Act, 2000. I am not in a position to accept this amendment.
Amendments Nos. 41 to 43, inclusive, are related and may be discussed together.
I move amendment No. 41:
In page 40, lines 17 to 22, to delete subsection (1).
This relates to the excision of section 80(1). The controller seems to be acting in a judicial capacity in that he is allowed to order costs against a party in the proceedings. This is, essentially, a judicial function. I draw the attention of the Minister of State to section 83 which expressly provides that the controller shall not be awarded costs and shall not ordered to pay the costs of any other party. I am puzzled as to why the controller is allowed to order costs against a party in the proceedings before him, on the one hand, but the reverse is not the case. According to section 83, the controller is never liable for costs. Taking amendment No. 42 in conjunction with that, the purpose here is to remove the controller's discretion to order security for costs. This should only be a function of the court. It is going a long way to confer these powers on the controller. First, it is not an even situation as the reverse does not apply. Second, it is manifestly a function of the court.
Section 81 gives the controller power to award costs and to require a person to give security for costs. It also provides for the enforcement of an order for costs, by leave of the High Court, in the same manner as a court order. Subsection (1) empowers the controller to award any party to proceedings before him or her under the Act, such costs as he or she may consider reasonable and to direct how and by what party the costs are to be paid. This is a standard provision in intellectual property law concerning proceedings before the controller. Subsection (2) provides that certain foreign based parties may be required by the controller or, in the case of any appeal, by the High Court, to give security for the costs of the proceedings. It is likely that an order will be made under this section prescribing that if a person neither resides nor carries on business in Ireland or in another member state of the EU, then the controller may require him or her to give security for the costs of an application or an appeal falling within the terms of the Bill.
The intention here is to ensure that Irish based parties are not subjected to incurring onerous legal costs in protecting their rights in circumstances where an order for payment of their costs on success in legal proceedings would not be enforceable. The lodgement of security by persons in the State would, at the very least, provide access to some recompense, if not all costs, where the foreign party refused to meet an order for costs made by the controller or the High Court. Subsection (3) allows discretion to the controller or the court to treat the proceedings as abandoned where security for costs under section 81 (2) is not provided. This means that where a foreign party institutes proceedings against an Irish person in relation to an infringement of a design right under the Bill and subsequently fails to provide the required security, then the controller or the High Court may strike out those proceedings. It is intended to prevent nuisance cases being taken against legitimate Irish users or design.
The Deputy's proposed amendments seek to delete section 81 (1) and to remove the reference to the controller in the other two subsections of that section. It is clearly the intention of the amendments to take away the proposed role of the controller in deciding costs in proceedings before him or her and in deciding on the issue of security for costs. These functions are currently allocated to the controller in respect of patent proceedings under section 91 of the Patents Act 1992 and in respect of trademarks proceedings under section 72 of the Trademarks Act 1996. I am not aware of any difficulties or particular problems with the operation of these provisions in practice.
The nett effect of these amendments would be to have the High Court decide on all matters relating to costs in proceedings before the controller. This would be a very costly and, possibly, time consuming procedure for parties to hearings in the Patents Office to have to undertake. It would also be a backward step in terms of efficient operation of the efficient operation of the adjudicatory procedures under intellectual property law. In any event, the Bill provides that any decision of the controller, including decisions on costs, may be appealed to the High Court. Therefore, parties to proceedings before the controller are not being denied access to justice or to a full hearing before the court in matters of cost. For these reasons and for consistency in the various areas of intellectual property law and procedures, I cannot accept this amendment.
I will reflect on what the Minister of State has said between now and Report Stage.
I move amendment No. 44:
In page 41, subsection (2), line 7, after "High Court" to insert "or the Supreme Court".
This amendment relates to where an appeal from a decision of the High Court shall lie to the Supreme Court, as is normal, on a point of law. Section 84 (2) specifies that this shall only be by leave of the High Court. I am seeking to include "or the Supreme Court". My concern is that it is perfectly possible for the High Court to shut out an appeal, possibly on an important matter. The option should be available for the Supreme Court to permit it. If it was an important point of law, the Supreme Court might be willing to hear it where the High Court had decided otherwise. A High Court judge might decide not to allow an appeal in certain circumstances which seem right to him or her, but the Supreme Court might take a different view. My amendment seeks to provide that option.
As I understand it, the effect of Deputy Rabbitte's amendment would be that an appeal from any decision of the High Court, under the Section, would lie to the Supreme Court on a specified point of law, by leave of the High Court or Supreme Court. My legal advice is that the amendment is unnecessary as the High Court order in question may be appealed to the Supreme Court in any case. I assure the Deputy that I will seek further clarity on this matter and report further on Report Stage.
The amendment would be superfluous if, as the Minister of State has indicated, the High Court may not actually shut off an appeal on a point of law. If he can confirm that at Report Stage, I will be satisfied.
I move amendment No. 45:
In page 43, after line 44, to insert the following subsections:
"(8) Nothing in this Act shall be construed as prohibiting solicitors or barristers from taking such part in proceedings under this Act as has heretofore been taken by solicitors or barristers in connection with a design or any procedure relating to a design or the registration thereof.
(9) A registered patent agent or a registered trade mark agent shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by persons not legally qualified), by reason only of the preparation by the agent of;
(a) a deed assigning the property in a design application or design; or
(b) any document (not being a deed) for use in proceedings under this Act before the Controller or the appropriate court.".
This deals with recognition of agents for the purpose of proceedings for the registration and continued administration of industrial designs before the controller. In essence, the Bill provides that a registered patent agent or a registered trademark agent is entitled to be represented before the controller and the relevant provisions of the Patents Act and the Trademarks Act are invoked to make this work. However, on further examination of the provisions of the relevant chapters of the patents and trademarks Acts, it has come to our attention that the current construction in the Bill may not be sufficient to permit solicitors or barristers, who currently provide many services in respect of the registration and administration of industrial design, to continue to do so after enactment. Both the Patents Act and the Trademarks Act contain separate specific provisions to enable solicitors and barristers to continue to act in patent and trademark cases after enactment of the recognition provisions for agents under the respective pieces of legislation. Similar provisions in respect of designs are proposed in these amendments and I am confident these new provisions will ensure continuity of involvement for solicitors and barristers under the new industrial design regime.
Acceptance of amendment No. 46 involves the deletion of section 89 of the Bill.
I move amendment No. 46:
In page 44, before section 89, to insert the following new section:
"The Copyright and Related Rights Act, 2000, is hereby amended by-
(a) the insertion after section 31, of the following:
'31A. The copyright in a design registered under the Industrial Designs Act, 2001 shall expire 25 years after the filing date of the application for registration of the design under that Act or on the date of expiration of the copyright under this Act, whichever is the sooner.'.
(b) the deletion in section 79(2)(a) of 'texture and materials' and the substitution of 'texture or materials'.".
The first part is intended to remove any doubt that the term of protection afforded by copyright applies only to designs registered under the new law and does not apply to designs registered under the current law. Part (b) is a technical amendment arising from the enactment of recent copyright legislation, the intention of which was to make special provision for the exemption of certain works, including industrial designs, from copyright protection in certain circumstances. Section 79(2)(a) of the Copyright and Related Rights Act, 2000, was modelled on the definition of design contained in the EU directive which stated that design means "the appearance of the whole or part of a product resulting from the features of, in particular the lines, contours, colours, shape, texture and/or material of the product itself and or its ornamentation". I am advised that the term "or" includes the concept of "and" and should be used in legislation if both the individual elements and any combination of the elements in a listing need to be covered. The use of "and" on its own does not cover individual elements of a list of this nature but rather implies that all the elements must exist for the provision to apply. The amendment simply addresses this matter.
Amendment No. 50 is cognate to amendment No. 47 and amendments Nos. 48 and 49 are related, so amendments Nos. 47 to 50, inclusive, may be discussed together, by agreement.
I move amendment No. 47:
In page 44, paragraph 2, line 18, to delete "this Act comes" and substitute "the provisions of this Act relating to registration proceedings come".
These are technical amendments intended to make certain in law and in user-friendly language that applications for registration of design made prior to the commencement of this new law shall, in normal circumstances, be dealt with under the provision of the existing law. The amendment makes clear that the pre-registration and post-registration procedures and laws that apply under the 1927 Act will apply to such applications rather than the new procedures and laws set out in the Bill. The existing text could be perceived as an obligation on the control of patent design and trademarks to register all such applications, including those that do not meet the existing novelty or originality test under the 1927 Act. These amendments remove any such doubt.
If I had registered a design under the 1927 Act, could I now seek to register it under the new Act? If so, would there be any advantage to me to do so?
The simple answer is no, as the novelty would be gone.
I move amendment No. 48:
In page 44, paragraph 2, line 21, to delete "registered under" and substitute "treated in accordance with".
I move amendment No. 49:
In page 44, paragraph 2, line 23, to delete "apply to that registered design" and substitute "also apply to that design, if registered".
I move amendment No. 50:
In page 44, paragraph 3, line 27, to delete "this Act comes" and substitute "the provisions of this Act relating to registration proceedings come".
I move amendment No. 51:
In page 44, lines 41 to 43, to delete paragraph 6 and substitute the following:
"6. Where copyright did not subsist in a design by virtue of section 172 of the Industrial and Commercial Property (Protection) Act, 1927, before the commencement of this Act, then copyright shall not subsist in that design on or after such commencement.".
The original paragraph 6 was inserted with the aim of clarifying the appropriate filing date for applications that are converted under procedures set out in paragraph 3. On reflection, it appears that the wording of the paragraph might be construed to cause a filing date to apply that is later than the actual filing date and may result in the loss of priority or novelty in extreme cases. It is proposed, therefore, to delete the paragraph and to rely on the provision in paragraph 3 which stipulates that converted applications shall be dealt with in accordance with the terms of the new Act in general. This does not change any practical aspects of the procedure to obtain a filing date and does not, therefore, discriminate against persons seeking to convert their applications for registration in order to have them considered under the terms of the new Bill and to avail of the extra benefits and rights accruing under this Bill. For example, the Bill gives broader rights to restrict the use of design and extends the term of protection from 15 to 25 years.
Amendment No. 53 is an alternative to amendment No. 52, so they may be discussed together, by agreement.
I move amendment No. 52:
In page 45, after line 17, to insert the following:
No. 10 of 1963 Copyright Act, 1963 Section 59
Before Deputy Rabbitte speaks, may I say that I intend to accept his amendment as our amendments have the same intent and effect. I agree with the amendment he proposes.
Is fearr rud déanach ná ró-dhéanach, agus dá bhrí sin tá áthas orm.
I move amendment No. 53:
In page 45, after line 17, to insert the following:
No. 10 of 1963 Copyright Act, 1963 All remaining provisions
I thank the Minister and his officials. I thank Members for their contributions.
I also wish to thank my officials and the Chair. I thank Deputy Rabbitte for his involvement in the discussion, including the point he made earlier regarding amendments. He knows that this Bill has been hanging around for some time and my officials have had time to look at it and to improve it, resulting in a number of amendments. It is a quite technical Bill and I value the committee's support and efficiency.