Fine Gael support this legislation. I have been looking at legislation for many years but I have never come across a situation where the reading of the explanatory memorandum was more difficult and more confusing than the actual Bill. Perhaps the Minister's Department would consider ensuring that, as far as possible, the explanatory memorandum is just that. The Bill is far more user friendly, consumer friendly and Dáil Deputy friendly than is the explanatory memorandum. I hope that point will be taken on board, particularly in the area of intellectual property which is technical.
The Bill before us implements the EU directive on the legal protection of designs and will mean that Irish business and designers in future will be bound by an international system of design protection under the Geneva Act of the Hague Agreement. The Bill results in our law being considerably modernised, allowing for the expansion of remedies in both the civil and criminal codes which will be available in respect of breaches of design rights. Undoubtedly, this is a welcome move. The Bill implements fully the terms of the EU designs directive and includes the same definitions and language of the directive in so far as it can. It is a complex and technical area.
As well as complying with the legal requirements of the directive, the Bill extends the protection afforded to design by ten years from 15 to 25 and also extends the protection of copyright to include all registered designs. This is the first time in Irish law that this has happened. When enacted it will allow the owners of these design rights better scope to enforce their ownership by referring matters to the Controller of Patents, Designs and Trademarks or, indeed, through the courts and it also provides a more effective and faster system of registration of designs. The Bill deals with certain rectification procedures and sets out the basis where persons are not entitled to register design rights or to adopt another person's design rights for their own use and benefit.
The Industrial Designs Bill is one of a number of Bills in the intellectual property area published recently allowing this country to keep pace with international developments and modernisation. It is important to note the important advances made so far as industrial design is concerned and the manner in which many of our designers have kept pace with best international practices over a number of vocations. In the past ten years we have had the Patents Act, 1992, the Trademarks Act, 1996, and implementation of the European directive on trademarks. In 1998 we had the Intellectual Property (Miscellaneous Provisions) Act, 1998, with regard to civil copyright cases. Since then the Patents (Amendment) Bill, 1999, has completed Second Stage and is awaiting Committee Stage.
Over the years we have neglected to update our legislation in this area. Until now the registration of designs in Ireland was governed by the Industrial and Commercial (Property Protection) Act, 1927, which deals with patents, trademarks and designs. The registration of designs in Ireland is still governed by the 1927 Act whereas our near neighbours in the UK have seen considerable modernisation and development in design law. For example, Britain had the Registered Designs Act, 1949, the Design Copyright Act, 1968, and the Copyright Designs and Patents Act, 1988. In the meantime Irish design law has remained largely unchanged.
Industrial designs are protected by design registration under the 1927 Act or where a design is not capable of registration it may be protected in certain circumstances under the Copyright Act, 1963, amended 14 years ago by the Copyright (Amendment) Act, 1987.
This Bill centres around the EU directive on the legal protection of designs adopted by the Council of Ministers in September 1998 and published in October 1998. This came into force on 17 November 1998 at which time it was announced that member states had three years to implement the directive which will expire in October 2001. I am sure it is the Minister's intention to have all Stages of the legislation through both Houses and signed by the President in advance of that date. Fine Gael supports the harmonisation of the law in those areas directly affecting the working of the internal market. The matter of penalties, remedies, sanctions and enforcement will remain in our own hands. I am pleased the Government took an early decision, following the publication of the EU directive in October 1998, to introduce this primary legislation.
The terms of the directive give rise to certain important changes in our domestic law as outlined in the Bill, for example, the meaning attributed to "design", the criteria for registration and the meaning of this registration, the introduction of a "must fit" exclusion from registerability, the introduction for the first time of a grace period and the extension of the period of exclusivity available.
Part 1 deals with design registration and it is no surprise to learn that the design must have features of shape, configuration, pattern or ornament. This is a new definition in the Bill which states: ""design" means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colour, shape, texture or materials of the product itself or its ornamentation." The shape or pattern must be applied to an article as under Irish design, registration is based on the specified article and there is no protection for a shape which is considered abstract or a pattern which is not obvious from the article. The shape or pattern must be applied in all cases to a specific and particular article. This is a practical effect when deal ing with the first registration or when determining a breach.
In Britain there is an exemption from registration when dealing with articles of an artistic or literary nature. In Ireland design works or sculpture works may be accepted for registration. Perhaps the Minister of State could comment on the exemption from registration or otherwise in respect of articles of a literary or artistic nature. On application for registration the new design must be one not previously published in the State and the matter of novelty is considered of great importance. In other jurisdictions there have been difficulties in deciding what is new and original and it seems the test, that is applied in order to consider novelty, is that an original should be interpreted as referring to a design no previous designer had created for any purposes, and a new article would be in reference to a design which was not in this sense original but was new in so far as it was the first time it was the subject matter of an application.
Section 11 provides that the design which is new and has individual character shall be capable of being registered and the criteria for such registration are contained in sections 12 and 13. The Bill includes provisions which will be subject to inspection by the registrar and subject to obtaining copies of documents. It appears no inspection can take place until after registration has been completed while section 24 provides that the design shall be classified. Section 40 provides that the Patents Office shall provide details on registered designs on request, accompanied by information, to enable the controller to identify that design.
I was interested to hear the Minister of State refer to the Patents Office going on-line, which is a marvellous achievement to which I look forward. It is one of those offices that conjures up images of Dickensian cobwebbed rooms full of paper. It is closely associated in my mind with such august offices as the Registry of Deeds and, until lately, the Companies Office. The on-line facility should be available to all public offices. The situation in the Companies Office remains somewhat unsatisfactory regarding filing documents and returns – the normal form-filling procedures of that office. It is the bread and butter of the Companies Office but the fact that most of those activities are not available electronically is a source of concern to businesses and particularly small to medium-sized enterprises. Matters should be progressed along the lines suggested by a recent statement from the Taoiseach. I hope the Patents Office and the Registry of Deeds follow suit.
The existence of the registration of a class in which a design might be registered can also be discovered by way of application to the controller. The procedure for registration, I understand, takes some time to secure and I hope this can be dealt with positively following the passage of the legislation. There appears to be an undue time lapse in terms of waiting for registration and presumably if modern technology were applied the delay would be considerably shorter.
The design is registered for an initial period of five years and may be renewed thereafter and the maximum time under the Bill is for 25 years, an extension from the present ten years for registration of design articles. I note that packaging designs and get-ups as well as type faces will be considered for registration as will the design of a part of a complex product, provided that the criteria are met for registration and provided that the part design remains visible during normal use which, under the legislation, means "use by the end user" excluding servicing, repair or maintenance. The Minister of State made a passing reference to the situation regarding motor car components and spare parts. This area is a source of some uncertainty and will be considered in some detail on Committee Stage.
The section dealing with individual character is important in so far as a design must have individual character and would have to be deemed to have the character by the informed user. It must convey a different overall impression than any of the design available to the public before the filing or priority date. When deciding on whether individual character is present the degree of freedom of the designer has to be considered.
This Bill has been welcomed, by and large, by experts in this field. There was a seminar considering the matter in some detail some months ago which the Minister of State attended. There were submissions from experts, such as European patent attorney, Mr. Peter Short, and Ms. Yvonne McKeown from McLoughlin and Donaldson, who made some interesting comments following the immediate publication of the Bill last year. I understand the Bill has also been welcomed by the Copyright Association of Ireland.
There was a particular reference to the introduction for the first time of a grace period in Article 6 of the European directive. This article provides that activities of exhibition and publication or other disclosure will constitute the making of the design available to the public, unless such activities could not reasonably have become known in the normal course of business to those specialising in the sector concerned prior to the filing date. Practitioners will have noted that this will cause not only some difficulty but some legal uncertainty and I trust the Minister of State will clarify this in the course of his reply or on Committee Stage.
In section 2 of Article 6, there applies a grace period of one year in respect of disclosures made by the designer or that person's successor in title or a third party as a result of information provided or action taken by the designer. Thus comments such as disclosures made in the 12 months before the filing or priority date will not deprive the design of one of its most fundamental aspects of registration, the matter of novelty. The provision of a grace period is new and something practitioners will take some time to embrace.
Practitioners have welcomed the duration of protection which has been increased from a current maximum of 15 years to a maximum of 25 years from filing applicable in blocks of five year periods. The extension of the period of protection under Article 10, section 43 is welcome. There may be a problem in so far as the provision that allows for the deferment of publication of design is concerned. It has been suggested that this period should not be 30 months, as envisaged in the legislation, but perhaps 18 months, which would mean a certain harmony with the period as in the patents legislation. A period of 30 months is considered too long and perhaps for consistency 18 months should be considered.
As well as design being defined in the Act, so too is product, as "any industrial or handicraft item, including parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographical typefaces, but not including computer programmes". It is clear that the definition is broader than that of article, which is also contained in the Bill and to which I referred earlier and which will allow for the registration of designs for articles which have no function other than to carry the design. Designs for packaging, get-up and graphic symbols will be registrable, therefore, for the first time.
It is clear that designs for typographical typefaces will be registrable for the first time and the definition also includes items such as motor car parts for assembly into a "complex product", a product composed of multiple components which can be replaced. I referred earlier to the difficulties we may have regarding clarification of car components and spare parts.
I understand from the Bill, although the Minister may correct me, that computer programmes are excluded as products because the Government is anxious to avoid confusion between this directive and the computer programme protection directive. Any overlap could give rise to confusion, yet the Minister referred in his speech to the fact that this legislation covers electronic filing. I am not sure of the extent to which we have incorporated a body of legislation to deal with the directive on computer programme protection. I do not recall legislation being passed, or being before the House, so I am not sure where the application of that directive to Irish law stands. I ask the Minister to comment on that.
The directive sees significant changes in Irish law as far as novelty is concerned. For the first time, we have introduced the concept of universal novelty, whereas under current law only local novelty is required. There is also a subjective test as prior art must be shown to have become known to the relevant industrial sector within the European Union; otherwise the requirement of novelty in individual character does not appear to depart significantly from our local test as to similarity applied under existing law.
The directive does not require examination, and it is questionable whether the novelty examination carried out by the Irish Patent Office for prior Irish designs would be worthwhile in the context of this new universal or international novelty. I understand the European office that will deal with design registration will be based in Alicante and I wonder if there will be an Irish representative. What will be the relationship between the European office in Spain and the Irish Patent Office? Will Ireland have a representative on the international inspectorate? What will be the changed role and function of the Dublin office?
The directive does not include provisions on ownership but these are included in the Bill in sections 17 to 19. The Bill identifies the author of a design as the person who creates it or makes the arrangements necessary for its creation. Section 19 states that the author is "the first proprietor of the design unless the design is created by an employee in the course of employment, in which case the employer is the first proprietor of the design, subject to any agreement to the contrary". Such an agreement may be between an employer and an employee, third party, agent or client. The author, if not the first proprietor, has the right to be named as the author in the application for registration.
It is provided that the scope of protection conferred by a design right shall include any design which does not convey on the informed user a different overall impression. A design registered in a member state shall also be eligible for protection under the law of copyright of that State, from the date on which the design was created in any form. It seems that a cumulative protection by design registration and by copyright must be provided. If so, it is necessary to delete from Irish law the current prohibition on such cumulative protection and to regulate the protection to be given by copyright. The directive contains other provisions relating to invalidity or refusal of registration and rights conferred by registered design and imitation of rights.
We will have to consider some aspects of the Bill in detail on Committee Stage. I refer particularly to matters that might arise, for example as regards the "must fit" exception with particular reference to spare parts in the motor industry and the repair exception. The directive makes clear certain matters which will render a registration invalid, in particular if it is lacking novelty or is functional, immoral or contrary to public policy, registered by a non-proprietor or a party who cannot establish a bona fide interest, conflicting with an earlier registration or deemed never to have given rise to any rights.
A considerable section of the Bill deals with reliefs available to injured parties or parties that may be offended by a registration. The three remedies available in such instances are injunction, presumably to stop all registration that may be adverse to the interests of the person involved, the seizure of the goods that gave rise to the problem in the first instance and an application to the court for damages as a civil remedy. I note that the court mentioned in section 62 for an application for the seizure of infringing products or articles is the District Court and I am somewhat surprised as I find it a little difficult to comprehend that this is an area of speciality of District Courts. While there may not be a flood of applications from persons who allege extensive breaches of the Industrial Designs Bill and are seeking the seizure of goods, one would imagine that a District Court's expertise in this area would be somewhat limited.
The Minister referred to the role of the Garda Síochána when conducting an examination, investigation or search and it is important that gardaí are sufficiently competent in this area. To allay fears we may have in that regard, the Minister said there will be experts, I presume a panel of them, available to accompany the Garda. I assume the experts will advise the local District Court on the nature of the infringement or on the damage that may have been caused. Who will be on the panel of experts? Where will they come from? How many persons does the Minister envisage as sufficient to operate as a team? What evidence will be required of them to fulfil their duties?
The overlap between design registration and copyright and the extent to which designs may be protected by copyright is complex and specialist. When these matters are before the courts, in particular the District Court, I hope the appropriate level of speciality and expertise will be available. The Hague Agreement on the international deposit of designs provides for a single design registration covering a multiplicity of States. Since 1925, only 19 states, excluding Ireland, have adhered to the treaty. Under the Industrial Designs Bill, 2000, it will be possible for Ireland to adhere to the new Hague Agreement and ratify the treaty, which will contribute to the harmonisation of design law through the EU in accordance with commitments already given.
As the legislation must be enshrined in Irish law by a particular date in October, and taking into account that there are nine weeks left in the current session, Fine Gael will co-operate fully with the passage of the legislation. I thank the Minister of State, Deputy Tom Kitt, for his opening comments. No doubt his officials will be available to Members of the House to attempt to iron out some of the difficult technical language in the Bill. I look forward to the debate on Committee Stage following completion of Second Stage.
