Vol. 199 No. 11
I move amendment No. 1:
In page 6, between lines 27 and 28, to insert a new subsection as follows:—
"(2) Saturdays, Sundays and Public Holidays shall be excluded days for the purposes of subsection (1) of this section."
The purpose of this amendment is simply to make sure that account is taken of the fact that many offices have gone over to a five-day week and Saturdays, therefore, should be excluded in accounting short periods of time.
On reconsideration, I am satisfied it is not necessary to proceed with Deputy Sweetman's amendment. The section as it stands refers to a day which is specified by the rules as an excluded day and not one defined by the rules. The provision of Section 6 of the Bill closely follows the existing provision in Section 148 of the 1927 Act. It is intended to prescribe rules governing days and hours of business and excluded days on the general lines of the existing relevant rules. These are as follows: Days and hours of business at the Office: the Office shall be opened to the public every weekday, except Saturday, between the hours of 10 and 4 and, on Saturday, between the hours of 10 and 1, except on the days following, and then they specify Christmas Day, bank holidays, Good Friday, etc., and the rules also include under excluded days "whenever the last day fixed by the Act or by these rules shall fall on a day when the Office is not open, or on a Saturday, which days shall be excluded days for the purpose of the Act and it shall be lawful to do any such thing on the day following such excluded day or days, if two or more of them occur consecutively." I am advised this takes care of Deputy Sweetman's point.
I am afraid it does not. Suppose there is a four-day notice and it is served on Friday, Saturday should not count in these four days, and I think it does count. It is only if the last day is Saturday that what the Minister says applies. I think the Minister should agree to take it by the rules rather than by the section and, if it is taken by the rules, Saturday will not be counted as part of the four days for a four-day notice already specified.
That will be done.
I do not think it is the case at present. The rules will be tabled?
They will be tabled.
Perhaps, with amendment No. 2, the House could take No. 3 also. It is cognate.
I move amendment No. 2:
In page 11, line 18, before "refuse" to insert "if he so thinks fit".
The purpose of this amendment is to make it clear beyond question that there is a discretion in the Controller and that the Controller cannot, if I may use the word without offence, shelter behind the section by saying that he is bound to follow out the section slavishly and that he has no discretion.
I have looked into that and I am advised positively that the word "may" has the meaning that Deputy Sweetman wants attributed to it.
It means exactly the same as "if he thinks fit".
Yes, that is so.
That can be thrown up at him then as a ministerial direction.
"The discretion of the tribunal is unfettered", and that applies in respect of the same type of wording. That is Kerly on Trade Marks. The Deputy may quote me, as well as Kerly, in future.
I do not think that has been the practice up to this, but we will use the quotation in future.
I move amendment No. 4:
In page 12, between lines 10 and 11, to insert a new subsection as follows:
"(2) This section shall not apply to a trade mark which is shown to the satisfaction of the Controller to have been used in the State for a continuous period of not less than two years immediately preceding the date of the application."
This is a much more vital matter. For a considerable number of years Part B of the register has been used for the purpose of having a part of the register applicable to marks which had the benefit of user. Under the Bill the Minister is providing that Part B in future will not be as it has been hitherto but will be a second-class Part A. I suggest that is wholly undesirable. Where it has been tried elsewhere, it has proved to be wholly unsatisfactory. Let me make this confession. When the Minister and I were discussing this on Committee Stage, I did not understand the implications quite as clearly as I do now, and I venture to suggest that the Minister did not fully understand the implications then, either, because his "night and day" reference, when considered in the context of the report itself, could not possibly hold water in any circumstances.
The position is that for the past 44 years traders have had an opportunity under Part B of registering, without disclaimer, marks they had used for at least two years. The purpose of my amendment is to maintain the status quo in that respect. There have been no ill-effects whatever, except perhaps that Part B was not as useful as it might have been because it was limited entirely to the use of marks. The purpose of this section is to allow registration in Part B, without disclaimer in certain instances, but in respect of used marks, the disclaimer facility, or method, shall we say, would not be available. Registration in Part B of a composite trade mark does not give protection for the individual parts of the mark. It is nonsense, therefore, with all due respect, to say that by registering a mark that has the words “night and day” excluded as part of the mark, there was any attempt to register the words “night and day” as such. That might arise if the registration were in Part A. In Part B registrations, which do not have to have any essential particulars, it would be an invalid argument.
The Minister has referred me to Kerly. I would refer the Minister to the 8th edition, page 263. As pointed out by Mr. Justice Meredith, to whose judgment we referred each other the other day, the right conferred by registration in Part B is a continuing privilege. The alleged infringer has a complete defence if he can show that the use is not calculated to deceive. No claim to excessive use of the "night and day" words, which the Minister used on the last occasion, would stand for a moment and a disclaimer would be entirely superfluous.
To suggest that a person could arrogate to himself a proprietary interest in such words by including them in a Part B registration would not hold water. Apart from that, I suggest to the Minister that Section 16—it was Section 15 before it was amended— provides a full safeguard for the probable use of such words. I want to suggest to the Minister that it is essential in the interests of everyone— consumers, public, owners of trade marks and everybody else—that there should be some radical new thinking by the Controller in his approach to these matters.
The Minister has given certain information in reply to questions which, in my submission, disclose a sorry state of affairs. When we discussed the rejection of trade marks at an earlier stage, the Minister very properly made the point that what was done in one year might not be referable to that year at all, and accordingly he took three years together. On 5th of this month, in answer to Question 28 on the Order Paper, the Minister gave the average percentage of acceptance of applications for the registration of trade marks in each period. For the three years ending on 31st March, 1953, the percentage accepted was 97.2; in 1956, it was 87.6; in 1958, it was 75.4; in 1959, it was 76.2; in 1960, it was 77; in 1961, it was 69.7; and up to last March it was 60. In other words, the percentage of accepted applications has dropped in a three-year average period by one-third.
May I also refer the Minister to the number of hearings that have been held under the relevant section of the Act under which we are now operating? In 1953, there were three such hearings to deal with objections by the Controller of Trade Marks. In 1954, there were two; in 1955, none; in 1956, five; in 1957, four; in 1958, 13; in 1959, 18; in 1960, 16; and in 1961, 42. I have not got the figure for 1962, but I am told it will be of the same order.
I suggest seriously to the Minister that the combination of those two sets of figures, quite apart from the arguments on the section itself, disclose a state of mind that requires radically to be changed. I suggest further to the Minister that he can get abundant evidence and that if he considers it desirable, before this Bill goes to the Seanad, to have such evidence, he can receive a deputation of people concerned in this matter and they will provide him with abundant evidence of the great dissatisfaction that exists in relation to this method. He will be told that the use of the disclaimer provision in Part B of the Bill, where there has been two years' continuous user, will virtually mean that the system in relation to trade marks will be so unsatisfactory that nobody will be concerned with it and that ordinary commercial practice will be completely hamstrung.
I want to support this amendment. The system which operated here for a great number of years provided that registration under Part B could be obtained after a bona fide user of two years' standing or where the trade mark was capable of becoming distinguishable. This is now being changed. It is proposed that all trade marks will be on the same basis, whether or not there has been two years' user. It is further proposed that disclaimer will be permitted for registration under Part B. I want to support the amendments for the reasons given by Deputy Sweetman.
We are of the view that if in fact a person can show he has been bona fide using a mark for two years, he should be entitled to registration under Part B without the proposed disclaimer. There was no system of disclaimer in respect of Part B up to the present time. We are in fact adopting the British system which, I understand, has not proved to be satisfactory. We anticipate and apprehend that a great many disclaimers will come to be operated under Part B if our system is not adopted. If it is adopted, then when a person can show a bona fide use for two years of a mark, and when he can show it is a genuine trade mark, he will be entitled to register without disclaimer. We anticipate there will be considerable difficulties out of the operation of Part B as provided in this section—that there will be a great number of disclaimers—and we believe this will involve a considerable amount of commercial confusion, that in many instances it may discourage the operation of legitimate trading practices and that it would be worth while to give a trial period to the proposals we have made.
As I have stated, the experience in Great Britain has not been a particularly happy one, and we suggest the Minister should accept this amendment. If he does not wholeheartedly agree with it, I suggest he should at least give it a trial period and see how it works out in practice. While we are here undoubtedly doing something that is of some benefit commercially, we are taking away the advantages we give in Part B by reason of the possible number of disclaimers that will come in. I would therefore suggest again that our amendment should be accepted and given a trial period.
From the discussion on the last occasion, and from what I have heard here today, I must say I cannot do otherwise than resist the amendment. In the first place, I do not know whether Deputy Sweetman implied that there was automatic registration in Part B, after two years' user.
Not automatic.
The provision is that the mark distinguishes the goods for a period of two years and that the mark is capable of distinguishing the goods for that period. It is possible that user of a mark can extend for two years, by containing words or other matter in ordinary usage, that should not be employed by the trader or manufacturer concerned. That is the main reason for my resisting these amendments—that this two year user might otherwise give an automatic right to persons to get on to Part A of the Register in circumstances that would not be desirable in the public interest.
I do not want to interrupt but the Minister surely overlooks the fact that it is the composite trade mark that is registered. The individual items in it are not. It is those individual items that are the words in common use.
And if it is capable of distinguishing the goods, it should be registered.
In that case, my argument applies. I object to the amendment. It does not impose any obligation on the owner of the trade mark to accept a disclaimer. I want to say in reply to Deputy Sweetman's suggestion that things have gone too far so far as the Controller's office is concerned, that that is not the case, I am assured.
I am positively assured it is; the facts bear it out.
They would seem to do so but the percentage of decisions against applications made are in a specific period—the Deputy says a three-year period. Applications are increasing all the time. In a ten year period, the average has increased from 990: in March, 1958, the average was 990 and for the year ended 31st March, 1962, the number of applications received was 1,413. With the passage of time, it is obvious that trade marks submitted will tend to lose their distinctiveness. In so far as it is a juggle with words and lines as depicted on marks, I wish to make them at all times distinctive. Therefore, it stands to reason the more applications that are made, the more likely it is similarity will occur. As well as that we have a limited staff available for this purpose. Staff are not easy to train, and it takes some time, so that there are some arrears of work involved in this, which, in the event, is inevitable. Therefore, the increasing number of applications, and the greater difficulty in achieving distinctiveness and the difficulty in recruiting quickly the type of staff necessary, all add up to this difference in percentages of acceptances over the past number of years. I am afraid I cannot elaborate more, as I said on Committee Stage, and I must continue to resist the amendment.
The Minister has not answered one point I made. Will he receive a deputation, before the Bill goes to the Seanad, of people who are dealing with it every day and who can prove to him the dissatisfaction that exists?
Perhaps if the deputation comes in the ordinary way.
In other words, I am going to write a letter.
If I say yes, I cannot refuse.
I move amendment No. 5:
In page 13, between lines 53 and 54, to insert a new subsection as follows:
"(5) Where the ownership has been assigned, the application for registration may be amended by substituting the name of the new owner upon such evidence of assignment being made available as the Controller in his discretion may require."
Amendment No. 5 and amendment No. 10 can be discussed together.
When this was tabled on Committee Stage, the Minister gave as his objection to it that the trade mark had been operative from the date of the application and that accordingly if the matter were to affect the date, it would mean that registration as of the date of the application could be made by a person who was not in fact the owner.
While amendment No. 5 is exactly the same as it was before on Committee Stage, amendment No. 10 deals with the objection that is being made by the Minister. I cannot see for the life of me what the objection is to ensuring that a trade mark can be properly assigned during the period of pending application. I am not suggesting that perhaps I may not have fully drafted everything that is necessary, but it seems to me that it is quite a simple matter and that it requires only a little drafting thought. There is a very genuine difficulty, when, during the currency of an application before acceptance, there has been a change in owner. It may very well be that insistence by the Minister on the stand he has taken so far would delay entirely the liquidation of a company which had gone out of business, but in respect of which an application was pending. The liquidator would have to consider that, even though the whole business of the company is being taken over by the new company. I do not in any way pretend that I have made my draft complete.
In fact, the case is strengthened by what the Minister has said already, the unfortunate delays which exist due to the shortage of staff. In fact, if these delays are going to be unavoidable in the future, the case is strengthened for permitting assignment, if that becomes necessary. There cannot be any objection to such an assignment. If it is only a question of drafting legislation to permit it, then I think it should be done as soon as possible.
I am afraid I have nothing to add to what I said on the last day. I am advised strongly I ought to continue my resistance to this amendment. If I may advance any reason, I think the main argument against it on the last day was that the trade mark is registered as of the date of the application made and in the name of the person who is owner on that date. Apparently, that goes to the very root of trade mark law and in subsequent proceedings, the actual date of registration may be the deciding factor. A further point arises that was not mentioned in the course of the former Stages, that is, where an assignment occurs, if it is a partial one, that is, an assignment without goodwill, the provisions of Section 30, subsections (4), (5) and (6), dealing with the restrictions on assignment and transmission, apply. I understand that no difficulty whatever, to the knowledge of the Controller, or my own knowledge, has occurred. It has not been brought to our knowledge.
The Minister's brief has appallingly lacked. It is the only kind word I can think of using.
I am advised no case of difficulty has been brought to notice. Secondly, the provison to be included here is not in existing British law. I regret I must continue my opposition.
I want to say this and I regret very much having to say it. The rules and order of the House require that I should say anything I wish to say about the Minister and not about those who advise him. The Minister is showing an obscure anti-rigidity. It is clearly evidenced in the manner in which objections are raised and applications are registered, as evidenced by the figures I indicated earlier, and it makes me particularly glad that it is not the branch of the law in which I have to practise. The Minister understands why I have to refer such comments to him personally.
I think amendments 6, 7, 8, 9 and 14 may be discussed together as they are consequential.
I move amendment No. 6.
In page 13, line 57 and page 14, lines 1 to 3, to delete "and the appeal shall be made within a period of two months from the date of dispatch to the applicant of the statement or within such further period, not exceeding three months, as the Court may allow."
I think this meets the point made earlier. It will give the Controller power to give an extension on the limitation of time up to 3 months.
I move amendment No. 7:
In page 14, between lines 7 and 8, to insert the following subsection:
"(6) Except by leave of the Court no appeal against a decision of the Controller under this section shall be made save within a period of two months from the date of dispatch to the applicant of the statement in writing referred to in subsection (4) of this section or within such further period not exceeding three months as the Controller may allow (upon request received before the expiration of the said period of two months)."
I move amendment No. 8:
In page 14, lines 57 and 58, and page 15, lines 1 and 2, to delete "and the appeal shall be made within a period of two months from the date of dispatch to the appellant of the statement or within such extended period, not exceeding three months, as the Court may allow".
I move amendment No. 9:
In page 15, between lines 5 and 6, to insert the following subsection:
"(8) Except by leave of the Court, no appeal against the decision of the Controller under this section shall be made save within a period of two months from the date of dispatch to the applicant of the statement in writing referred to in subsection (6) of this section or within such further period not exceeding three months as the Controller may allow (upon request received before the expiration of the said period of two months)."
Amendment No. 10 has been discussed with amendment No. 5.
I am not moving amendment No. 10 now.
I move amendment No. 11:
In page 23, between lines 7 and 8, to insert a new subsection as follows:
"(12) The Controller shall, if so required by an applicant, take steps to secure that information given for the purpose of an application under the foregoing provisions of this section (other than matter entered in the Register) is not disclosed to rivals in trade."
This is the section which is taken exactly from the other Act. I think there is a misprint here. It refers to the Act of 1928 while, of course, it is the Act of 1938. I think it is a good subsection, a good proviso. On the last occasion, the Minister referred to the Official Secrets Act as being operative. That would, of course, be operative in respect of any unauthorised disclosure but this is not an unauthorised disclosure that I am referring to. I want to make it quite clear that only information that is not confidential and is not secret will be disclosed to rivals in trade. The absence of such a provision in the Minister's Bill here, when he follows the other Acts so carefully in other respects, highlights this and has caused some considerable uneasiness in the profession.
The omission which the Deputy proposes to repair was deliberate because it was thought that not specifying any type of information gave the applicant greater protection in the matter of all the knowledge that should be undisclosed. However, rather than take the chance of permitting disclosure of other types of information that should not be disclosed if I write this specific type into the Bill, I suggest to the Deputy that I could provide for this specifically in the rules in order to put it beyond doubt.
I am perfectly happy with that and, accordingly, I withdraw the amendment.
Amendments Nos. 12 and 13 being consequential may be taken together.
I move amendment No. 12:
In page 29, line 31, after "of this Act)" to add "or from a correction of an error in the register by the Controller under subsection (3) of section 42 of this Act".
Deputy Sweetman raised this on the Committee Stage and I undertook to examine it further. He said there should be a right of appeal against any correction and, consequently, I am introducing this amendment.
I am obliged to the Minister.
I move amendment No. 13:
In page 29, line 32, after "or decision" to add "or correction".
Amendment No. 14 was discussed with amendment No. 6 and others.
I move amendment No. 14:
In page 29, between lines 37 and 38, to insert the following subsection:
"(3) Except by leave of the Court, no appeal (other than an appeal under section 25 or 26 of this Act) from an order or decision of the Controller or from a correction of an error in the register by the Controller under subsection (3) of section 42 of this Act shall be entertained of which notice to the Court is not given within one month from the date of the order, decision or correction appealed against or within such further period not exceeding three months as the Controller may allow (upon request received before the expiration of the said period of one month)."
I move amendment No. 15:
In page 31, between lines 49 and 50, to insert a new subsection as follows:
"(3) Nothing in this section shall make it an offence to put the letter R in a circle on a label or other display tab attached to any product."
We had some discussion in regard to this on the Committee Stage. I explained to the Minister at that time, and I think he appreciated it, that the letter "R" was often included in goods that came from America and I am not clear, frankly, from what the Minister said on the last occasion whether, in fact, to send something out with the letter "R" on it in a circle is or is not an offence in the eyes of the Minister. This amendment is to the section that deals with the offences and I want to get clear beyond question—it is at column 390—what is in the Minister's mind so that, when we know that, it may be considered before it goes to another place.
The object of the section, as it stands, is to make it an offence to describe any goods as carrying a registered trade mark if, in fact, such a mark is not registered. That offence may be committed whether by word or symbol. The registration applies to registration in this country. The symbol "R" in a circle as used in the US may be used here but that does not indicate that the trade mark is registered in this country, that it is a registered trade mark within the country and the section——
I am glad the Minister agrees with me that it is a matter of some difficulty.
It is a matter of some difficulty. I am sorry to say that as I was pursuing my argument I got myself into some difficulty in my own mind. Will the Deputy leave it over and allow it to be taken care of in another place? I promise to communicate with him personally about it.
I am quite happy to do so.
I move amendment No. 16:
In page 33, line 41, after "Controller" to insert "(including the hearing by the Controller of representations, if any, by the person)."
The Controller is given the right in certain circumstances to remove the name of a registered agent from the Register if he is guilty of certain conduct. The purpose of the amendment is to ensure that the agent will have the right to be heard by the Controller before he makes an order removing him from the Register. It is something in favour of the person whose name might be otherwise removed to give him an opportunity to be heard.
I move amendment No. 17:
In page 33, line 54, before "apply" to insert "on giving notice to the Controller in the prescribed manner".
The purpose of this amendment is to provide that notice be served on the Controller prior to any application to be made to the court so that the Controller will have an opportunity of knowing what the application is to be.
