I welcome the opportunity to contribute to the debate on this technical Bill which is very important in an Irish context. I thank the Minister of State for introducing the Bill and also for his detailed explanation of its contents.
This Bill is of importance to Irish business and to organisations carrying out their business here or planning to establish operations here. To date, the inability of service organisations to register their names, brands and logos has been a significant omission and cannot have been helpful in the establishment of the International Financial Services Centre in Dublin.
Trademarks — and their registration — with the protection they afford are a matter of serious concern to industrial and commercial interests. Brands, as they are better known, have become a major business asset. Brands, which cover goods of all shapes and sizes, will now embrace services for the first time. Members will appreciate that the value of some international brands stretches into billions of dollars. Brands, whether international, national or local, are important to proprietors and of interest to their competitors.
While the Bill is of a somewhat technical nature, it is necessary for the protection of brand owners and will provide them with rights of redress when their proprietorial rights or interests are infringed. It is worth reflecting that a trade mark or brand is a tangible representation of entrepreneurial skills, ideals, thoughts, initiatives and inventiveness.
As my party's deputy spokesperson on enterprise and employment, I congratulate those who have created brands suitable for registration. In particular, I recognise the courage and initiative of our young and emerging entrepreneurs who have recently registered brands and those people establishing or developing new businesses here. I ask these people not to consider brand registration as another piece of bureaucracy but as a goal achieved toward fulfilling their aspirations and ambitions in commercial life.
On 20 March 1883 a number of countries signed what has become known as the Paris Convention for the Protection of Industrial Property. That this convention is still a basis for modern regulation and legislation is a credit to its signatories. While the emphasis was then placed on industrial property, today intellectual property has become a significant part of Irish, European and International law. Intellectual property embraces three areas: patents, copyrights and trademarks. These three are interrelated. Our Patents Act was brought up to date in 1992. The Copyright Act, 1963, and the Trade Marks Act, 1963 are in need of modernisation and advancement. I am interested in the proposal of the Minister of State to bring copyright legislation up to date as it is important that the three prongs of intellectual property law are kept abreast of each other in terms of world developments.
This Bill proposes to repeal the Trade Marks Act, 1963. It is proposed to incorporate the European Council directive of December 1988 and regulations of December 1993 relating to trade marks and the Community trademark into the legislation. The Bill will give effect to the Madrid Protocol relating to the international registration of marks, which was signed on 28 June 1989 and to certain provisions of the Paris Convention.
The Madrid Protocol stems from the Madrid Arrangement 1981 covering an international system for the registration of trade marks. Ireland concluded the Madrid Protocol on 27 June 1989 and agreed to incorporate this in Irish legislation by 28 December 1991. To accommodate certain states this deadline was extended to 31 December 1992 in exceptional circumstances. We are only three years behind the extended deadline.
The decision of the Minister of State to incorporate these European directives in Irish law by means of this Bill is correct. While he could have achieved the same result by way of statutory instrument under the European Economic Community Act, 1972, as amended, this would not give the House and industry the same opportunity to debate the proposed changes in Irish law. I note that the Minister retains the right, and properly so, to prescribe rules under which matters such as fees and registration will be dealt with. Perhaps the Minister will advise the House if significant changes in the current fee structures are proposed. While I appreciate the cost factor involved in the registration of trade marks I am concerned about small businesses who will have more forms to fill and paperwork to deal with. This will involve them in further costs.
The Bill is pro-business and much more flexible than the previous Act. It gives better protection in cases where rights are infringed and at the same time makes it easier to establish that such rights have been infringed. The inclusion of "services" which embraces so many sectors including communications, tourism, banking, insurance, finance, etc., is overdue but welcome. The fact that international financial organisations could not register in Ireland heretofore would not have been of assistance to the International Financial Services Centre. Penalties which heretofore were of a civil nature are now of a criminal kind. I welcome that and I do not think the balance has moved too far in the other direction.
The owners of brands in Ireland who up to now had to register them abroad on a country by country basis will have two additional options. One of these is to register with the World Intellectual Property Organisation — WIPO. This United Nations agency, based in Geneva, could then make registrations in countries nominated by the brand owner. This will assist Irish business although for the foreseeable future the WIPO registration system will continue to exclude major countries such as the United States and Japan.
The United States, for example, with its Patent Office in Washington DC and its nominated ports of entry for goods entering the United States is concerned to have its own measures to control and restrict counterfeiting, which is a major international problem.
Another option for Irish business on enactment of the Bill would be for brand owners to register with the Office for the Harmony of the Internal Market — OHIM. This will deal with Community trademark registrations. The office has been set up in Alicante, south east Spain, and is expected to be open for business early in the new year. It will take time for the office to be fully operational because of the complexity and variation of trade marks but it will eventually allow Irish brand owners to make a one stop registration for European Union countries. I am disappointed that Ireland did not secure this office. I do not wish to sound political but the bungling of a previous Administration lost us that facility. It would have given major employment in this country. I understand regional offices may be set up and we should make a case for one to be set up here. That would give us a foothold in the registration of trade marks on the international scene.
The Bill provides that trade marks can be registered for ten years with ten year renewal periods. Heretofore, they could be registered for seven years with 14 year renewal periods. The new system is simpler and more logical. A "use it or lose it" clause has been included whereby a trade mark not used after five years will be extinguished.
Counterfeiting is a major problem in the area of brand protection and trade mark registration. When looking at brands we must realise that trade marks are infringed on a wide scale and involve legal and honest owners in the loss of vast earnings which, in turn, are falsely and unfairly reaped by imitators. There are many examples of this but perhaps the watch industry is the one most well known as suffering from false imitations. Many of us have come across imitation watches bearing famous names. With modern technology imitations are extremely difficult to detect. Footwear, particularly sportswear, is another industry adversely affected by counterfeiters. In Cork, Adidas is bedevilled by imitations. It makes distinguished sportswear which others imitate. The greatest trading nation, the United States of America, suffers problems with counterfeiters who are able to reproduce water and other security marks on the paper on which large denomination dollar bills are printed. I understand this paper is now printed outside that country. Section 14 provides that the use by a person of his or her name shall not infringe the registered trade mark, provided that such use is in accordance with honest practices in industrial and commercial matters.
People have been known to be very inventive in the use of their names in amending or changing them by deed poll. Indeed, this possibility has not escaped distinguished politicans in this city who adopted their own distinguishing marks in their titles. The Minister may recall a case, perhaps when he was a schoolboy, of the Italian gentleman, Senor P. Arker, who produced quality fountain pens bearing his abbreviated first name and surname. The management of the Parker pen company in the United States was not amused. Due to the necessity under Italian law to give due, full and lengthy consideration to the rights of defendants in legal proceedings, matters were somewhat protracted before the might of corporate America was able to rein in the Latin initiative of Senor Arker. Unfortunately, such amusing incidents are unworthy of the attention of today's highly organised, skilled and technically advanced international counterfeiters.
Another example of what is happening in the world of counterfeiting is illustrated in an extract from last Thursday's Financial Times which, under the heading “Italian video pirates targeted” states:
Record producers are to open a special office in Milan in January to spearhead their campaign to beat piracy in the Italian recorded music industry. The office will be run by FIMI, the national industry federation, and IFPI, the international umbrella organisation for the recording industry, and staffed by anti-piracy specialists. With a budget of $1m, the campaign will concentrate on enforcing Italian laws against music piracy and raising awareness. Pirated recordings in Italy — on cassette, compact disc and vinyl — have tripled in four years and now account for 44 per cent of pirated recordings in the European Union. IFPI is modelling its operation on the successful anti-piracy unit set up in Spain in the 1980s.
I welcome the proposed increases in penalties. The ultimate protection would be to make it a peanlty to use, or have for use, counterfeit goods or services. However, this would be difficult to implement in practice and perhaps could infringe our Constitution.
The proposed penalties set out in section 90 apply to those found guilty of contravening the legislation if intention can be shown. The word "intention" crops up a great deal in legislation and always presents problems in the interpretation and the proving thereof. The Minister should re-examine this section which may represent an escape clause in what otherwise may appear to be more severe penalties.
The Bill apears to be based on the UK's Trademarks Act, 1994. While I am not a proponent of copying British legislation, in this case it is acceptable as the British legislation, in turn, appears to be a copy of the EU Councils Trademark Registration Directive we are trying to incorporate into our law. However, section 47 is different from Article 48 of that directive and from section 44 of the UK Act. I will elaborate further on this matter on Committee Stage.
To a large extent, the value of this legislation will be reflected in the way it is enforced. I have already alluded to the section on offences and the difficulty in proving intent. The Bill does not provide for the appointment of trading standard officers who are an integral part of the operation of such legislation in other European jurisdictions. Will the Minister examine this matter on the basis of it being a self-financing operation so as not to place a further burden on the Exchequer? The legislation is designed to assist business, in particular the service sector, which is vital to this country. For these and other reasons, on behalf of my party, I welcome the Bill.