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Dáil Éireann díospóireacht -
Wednesday, 21 Nov 2001

Vol. 544 No. 4

Industrial Designs Bill, 2000: From the Seanad.

The Dáil went into Committee to consider amendments from the Seanad.

A Cheann Comhairle—

I have moved on from the Order of Business.

However, we have not.

The Chair decides. The Chair has decided and we now proceed with the business of the day.

We have to take responsibility for legislation. This is undemocratic and unfair.

Discussion of this matter is to conclude within 30 minutes if it has not already done so.

Seanad amendment No. 1:

Section 15: In page 12, subsection (2), line 43, after "Act", "or by an application for such a right" inserted.

Seanad amendment agreed to.

On a point of order. There have been 30 minutes set aside for this and I am not sure the House will need that much time. Could we agree the amendments now on condition that the remaining 27 minutes be given to the Minister for Public Enterprise to come into the House and explain to the people—

The Order of Business has been decided. It was voted on five or six times and it cannot be changed at this stage. The decision has been emphatically made by the House. We cannot alter it. The Deputy is not in order to propose or suggest a change to the Order of Business at this stage. We have moved on.

The House can agree a change.

The House cannot change what has already been decided on the Order of Business.

It can by agreement.

It can by agreement, but we have moved on from the Order of Business. These questions were put. The question on how this Bill is to be taken was put and agreed to and we cannot revisit it.

Can I ask that the amendments be circulated? Is that in order, or will we really reduce this to a Chamber of farce?

Amendments Nos. 3 and 4 are related to amendment No. 2 and may be discussed together, by agreement.

Seanad amendment No. 2:

Section 20: In page 14, between lines 5 and 6, the following new subsections inserted:

"(2) Subject to subsections (3) and (4), an application under subsection (1) may be amended, at the request of the applicant and with the approval of the Controller, at any time prior to registration.

(3) An amendment to an application for registration of a design under this section shall not be approved of by the Controller if the amendment affects the identity of the design.

(4) Where an amendment to an application for the registration of a design under this section is made the filing date of the application shall be retained.".

The amendments were circulated.

It is usual to have amendments available for circulation to Members present in the House. Can that be done?

They were circulated. They were in the post.

I acquired them in the Bills Office prior to the Order of Business.

Some of us have been in committee since nine o'clock this morning.

They were circulated. Amendment No. 3 is related and being discussed with amendment No. 2.

I am aware the amendments were circulated, but I would be happy if additional copies were produced.

Amendments Nos. 2 and 3 are concerned with enshrining in law the current practice which permits applicants to submit amendments to their applications for registration of designs. These amendments may only be submitted prior to registration with the approval of the Controller. It is left unqualified that this power to amend design applications could be used in an anti-competitive manner to lay claim to ownership of others' designs by changing the design and invoking the earlier filing date to claim ownership thereof. That potentially undermines the entire system of registered design protection. My legal advice is that, given the importance of the provision, it is advisable to incorporate this provision in the primary law, rather than rely on provisions in secondary legislation.

Section 21, as with the final element of the previous amendment, seeks to ensure that where the Controller has refused an application for registration of a design – as opposed to the last amendment which deals with requests by applicants for changes to applications prior to registration – and amendment to the design appli cation is subsequently permitted by the Controller, that does not significantly alter the design in question in order that the design may be registered, then the application shall retain its original filing date. This relates to amendments Nos. 2 and 3 and to sections 20 and 21.

The provisions are effectively to protect the original copyright? Somebody cannot, by making a marginal change to a design, attempt to claim an entirely new copyright.

That is exactly right. One keeps the original filing date of the original application.

To what designs do the provisions relate?

We are going back to the fundamental elements of this intellectual property legislation. In terms of design, we are talking about the shape of a product. In the Seanad we spoke of the appearance of a product that is the subject of industrial design as distinct from the function of the product. We have discussed many aspects of intellectual property legislation here in recent years such as copyright legislation, patent protection and during the Deputies' time in Government they dealt with the trademark law. Industrial design refers to the appearance of a product. A typical example is the shape of the Coca Cola bottle.

I will agree the amendment subject to clarification. In relation to the powers of the Controller to refuse registration one of the grounds for doing so would be if the design subject matter were contrary to public policy. Can the Minister of State give an example of the type of design that might be refused on those grounds?

That issue is not related to this amendment.

We are talking about section 21.

We are dealing with sections 20 and 21.

We are dealing with the powers of the Controller where registration is concerned and his power to adjudicate on any matter. He has the power to refuse registration and one of the grounds for refusal would be if the subject matter of the design was contrary to public policy. Will the Minister of State provide the House with an example of such an application that would be refused registration by the Controller?

I understand where the Deputy is coming from. A profane design would be one where there would be an issue in terms of public policy regarding which the Controller would have concerns.

Seanad amendment agreed to.
Seanad amendment No. 3:
Section 21: In page 14, between lines 22 and 23 the following new subsection inserted:
"(3) Where an amendment to an application for the registration of a design under this section is made the filing date of the application shall be retained.".
Seanad amendment agreed to.
Seanad amendment No. 4:
Section 37: In page 19, lines 16 and 17, subsection (5) deleted and the following new subsection substituted:
"(5) A correction of the Register under this section shall have the effect that the error in question shall be deemed never to have been made.".

As Deputies have acknowledged, much of this area is quite technical and this is very much a technical amendment.

Is a copy available?

In the absence of a copy we will find it hard to reply.

I presume copies are being circulated.

The amendment reads "A correction of the Register under this section shall have the effect that the error in question shall be deemed never to have been made", which is very much technical.

The amendment is proposed in the interest of legal clarity and as a contribution to making the Bill more user friendly. The key change proposed is the insertion of the terminology "that the error in question shall be deemed never to have been made" rather than retaining the current text which provides that "the correction shall have effect as if it had originally been made in its correct form". I am concerned that the current text may be ambiguous and the amendment I propose will make it absolutely clear that the designs register can be amended to remove errors entirely. It is a purely technical amendment.

I have not seen it.

One copy between all of us has been circulated so far.

Surely there is a photocopying machine in the vicinity of the Chamber.

Acting Chairman:

It would be helpful if Deputies had copies of the amendments.

Seanad amendment agreed to.

Acting Chairman:

Amendments Nos. 5 and 6 are cognate and may be discussed together, by agreement.

Seanad amendment No. 5:

Section 63: In page 30, subsection (1), line 44, "subsection (2)” deleted and “subsection (1)” substituted.

Amendments Nos. 5 and 6 are technical amendments to correctly align crossreferences within the Bill.

Seanad amendment agreed to.
Seanad amendment No. 6.
Section 65: In page 32, subsection (1), lines 6 and 7, "subsection (2)” deleted and “subsection (1)” substituted.
Seanad amendment agreed to.
Seanad amendment No. 7.
Section 89: In page 44, line 42, "‘texture or materials'." deleted and the following substituted:
"‘texture or materials',
(c) the substitution in section 78 of ‘the Industrial Designs Act, 2001' for ‘the Act of 1927' in subsection (1)(a),
(d) the substitution in section 78 of ‘the Industrial Designs Act, 2001' for ‘the Act of 1927' in subsection (2),
(e) the insertion of the following after section 78–
78A. (1) The copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface is not infringed by the making of a product to the design or the copying of a product made to the design.
(2) The copyright in a design document or a model recording or embodying a design for anything other than an artistic work or a typeface is not infringed by the issue to the public, or the inclusion in a film, broadcast or cable programme service, of anything the making of which is, by virtue ofsubsection (1), not an infringement of that copyright.
(3) In this section and section 78B—
"design" means the design of any aspect of the shape or contours (whether internal or external) of the whole or part of a product, other than surface decoration;
"design document" means any record of a design, whether in the form of a drawing, a written description, a photograph, storing the work in any medium or otherwise;
"product" means 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; and
"complex product" means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.
78B (1) This section applies where an artistic work has been exploited, by or with the authorisation of the copyright owner, by–
(a)making by an industrial process products falling to be treated for the purposes of this Part as copies of the work, and
(b)marketing such products, in the State or elsewhere.
(2) After the expiry of 25 years from the end of the calendar year in which such products are first marketed, the work may be copied by making products of any description, or doing anything for the purpose of making products of any description, and anything may be done in relation to products so made, without infringing the copyright in the work.
(3) Where only part of an artistic work is exploited as mentioned insubsection (1), subsection (2) applies only in relation to that part.
(4) The Minister may prescribe:
(a)the circumstances in which a product, or any description of product, is to be regarded for the purposes of this section as made by an industrial process;
(b)the exclusion from the operation of this section such products of a primarily literary or artistic character as the Minister thinks fit.
(5) In this section references to products do not include films.',
(f)the deletion in section 85(2) of ‘15 years' and the substitution of ‘25 years',
(g) the repeal of section 79(2).”.

The amendments proposed in respect of paragraphs (c), (d) and (f) are technical in nature. Paragrahs (c) and (d) dimply replace the reference in the relevant provisions of the Copyright and Related Rights Act, 2000, to the Industrial and Commercial Property Act, 1927, which is being repealed by the Industrial Designs Bill, with reference to this industrial design legislation. They are in essence transitional provisions to ensure the safe legal passage between one system of law and another.

Paragraph (f) simply extends the protection afforded under copyright law to the designs of typefaces in respect of industrial production of those typefaces on articles from 15 to 25 years to reflect the extension of designs under this Bill to 25 years.

Paragraph (e), however, is a substantive insertion into the copyright law that is required to clarify in that law the type of protection that is to be afforded to the documents and models in which designs are first recorded prior to their incorporation in products. This current Industrial Designs Bill is only concerned with protecting designs once they have been applied to products and does not address sketched diagrams or other recording of designs, including electronic recordings, before they are so applied.

Under current Irish law, design documents only qualify for copyright protection where they are not used or intended to be used as models or patterns to be applied industrially to products. Where they are so used, all copyright protection is denied, giving rise to concerns about compliance with our obligations under the Berne Convention to protect, in particular, artistic works. It is necessary to update the law to provide greater legal clarity and reflect the experience of legislators, especially in the UK, in this very complex area of law.

Paragraph (g) is a consequential amendment arising from the introduction of the new provisions to the Copyright and Related Rights Act. The current text of the Copyright and Related Rights Act, 2000, contains a provision in subsection (2) of section 79 that deals with an aspect of the overlap between copyright protection and protection of industrial design by registration. It essentially permits industry to make products incorporating a design once the copyright owner has allowed the design to be used on industrial products. This provision is no longer required once the terms of amendment No. 7 are in place because the relationship between copyright and protection of industrial designs by registration are comprehensively covered in that amendment. I trust this explains in a practical manner the complexity of the issues at stake and I trust Deputies will agree that the proposed amendments are not only welcome but that they are necessary insertions in our copyright law.

Will the Minister clarify the definition of complex product in amendment No. 7? It states it is a "product which is composed of multiple components which can be replaced permit ting disassembly and re-assembly of the product.". Does this cover copyright in relation to the design of buildings or architecture, or is there any way in which the interpretation of this could be applied to the intellectual copyright of the design of buildings, including pre-fabricated buildings, which are capable of being dismantled and reassembled?

My advice is that that is not the case. The language is from the directive so the answer to the Deputy's question is "No".

I want to be sure because I was an architect in another life and the Minister of State's Department always refused to introduce the registration of title for architects long before he was ever in it. It was a long-lasting battle lost many years ago. Can I be assured that what is now being considered will not affect the intellectual property rights of construction designers, including architects and urban designers?

Again, my advice is that that is not so. The products mean "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". That is the definition of "product".

This legislation, which emanates from an EU directive, does not interfere with the intellectual property rights of the construction industry in terms of building design.

Seanad amendment agreed to.
Seanad amendments reported.

I thank the House for its cooperation on this issue, not just in terms of intellectual property legislation but other complex areas concerning intellectual property we have dealt with over the years.

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