I move amendment No. 1:
In page 12, to add a new subsection as follows:—
"() This section shall not apply to a trade mark which qualifies for registration in Part B and which is shown to the satisfaction of the Controller to have been continually used in the State for a period of not less than two years immediately preceding the application."
I put down this amendment and the subsequent amendment at the request of the Association of Registered Patent Agents, who are specialists in the subject matter of this Bill. Since the Second Stage of the Bill was taken here last week, the Minister was kind enough to agree to receive a deputation of the Patent Agents Association. He received that deputation at very short notice and I wish, on my own behalf and on their behalf, to publicly thank himself and his officials for so doing. The fact that the Association of Registered Patent Agents have thought fit to follow up these amendments both in the Dáil and in this House, the fact that they have thought fit to prepare lengthy memoranda in support of these amendments, and the fact that they have thought fit to ask the Minister to receive them on a deputation, is, I think, the best argument that I could put to the House or to the Minister in support of these amendments.
These agents specialise in registering trade marks and advising business people on their rights in respect of trade marks. As I said on the Second Stage, there are only three or four of them in the country and each and every one of them has long experience in this branch of the law. So much by way of general remarks. As I say, I cannot put forward any better argument than the anxiety of these men to improve this Bill as much as they can and their anxiety to produce a perfect Act.
Amendment No. 1, which stands in my name, is an amendment to Section 22. It proposes to add a new subsection which will read as follows:
This section shall not apply to a trade mark which qualifies for registration in Part B and which is shown to the satisfaction of the Controller to have been continually used in the State for a period of not less than two years immediately preceding the application.
As we all know, the object in registering a trade mark is to secure a statutory protection for the trade mark and to protect infringements of it. Apart from that statutory protection, the owner of a used trade mark acquires rights in it at common law, which he can enforce against anybody who attempts to infringe it.
A trade mark may be registered in either Part A or Part B of the register. As I hope to show the House by a short quotation, there is a considerable difference between registration in Part A and Part B. It is harder to qualify for registration in Part A but, once registered there, the owner of a trade mark has greater protection. It follows that it is easier to get registered in Part B, but Part B affords less protection. To show what I mean, I propose reading a short passage from the judgment of the late Mr. Justice Meredith in the Leathermac case of Richardson v. Weiner, which is reported. Mr. Justice Meredith said:
The reason that the requirements for registration in Part B are substantially less stringent than those for registration in Part A is that the proprietor is put in a less advantageous position. Under Section 113 registration in Part A gives to the proprietor (subject as therein stated), "the exclusive right to the use of such trade mark upon or in connection with the goods in respect of which it is registered." Registration in Part B does not confer this right at all. It merely makes the registration prima facie evidence that the registered proprietor has the exclusive right to the use of the trade mark, and even then the proprietor can obtain no relief for infringement if the Court is satisfied that the user by the Defendant is not calculated to deceive. (See Section 114.) The net effect, therefore, of registration in Part B seems to be to facilitate an action in which the Plaintiff has a substantially lighter burden of proof than he has in an ordinary “passing off” action, while, at the same time, not being as exacting in the requirements for registration as in the case of registration in Part A.
It follows from that that there is a considerable difference between Part A and Part B.
For the past sixty years it was possible to register a trade mark in Part B on proof that it had been used by the applicant for a period of two years, and it was not possible to be called upon to accept a disclaimer in respect of any part of a Part B mark. A disclaimer, as I tried to explain the last day, is a renunciation of rights in respect of part of a trade mark. Supposing the trade mark was "Tudor Chocolates" manufactured by Cadburys, in a Part A application the Controller could ask the applicant to disclaim his absolute right to the word "Tudor" and anyone else could come along and use "Tudor" as part of another trade mark. That is as clearly as I can state the meaning of "disclaimer".
It was always accepted here that because a Part B registration conferred lesser rights, a disclaimer was never called upon and never thought necessary. That has been the position here since 1905, and I respectfully suggest to the Minister that in all that time there have been no complaints and no abuses about failure to insist on disclaimer in respect of a Part B registration. It is a well-settled principle of law and procedure that unnecessary disclaimers are to be avoided.
I think I can best put my argument on this aspect of the case by reading part of the judgment in a case reported in the Reports of Patent, Design and Trade Mark cases, 1915, Volume 32, No. 7. The title of the case is an "Application by Cadbury Brothers Ltd. for the Registration of a Trade Mark." In the course of the judgment Mr. Justice Sargant said:
On the other hand, I think that the commercial case made on behalf of the Applicants is also well founded, that they would, by disclaiming on registering their Trade Mark any right to the exclusive use of the word "Tudor", in fact be inviting the public to disregard such common law rights as they may have acquired to the use of the name, with the result that there would be a crop of passing-off actions.
It is quite true that in the section to which I have referred there is the ultimate proviso "that no disclaimer upon the Register shall effect any rights of the proprietor of a Trade Mark, except such as arise out of the registration of the Trade Mark in respect of which the disclaimer is made"; but commercial persons do not go about with their heads full of provisos to sections of Acts of Parliament, and I can quite see that the disadvantage to the applicants of the insertion on the register of such a disclaimer, unless it is really necessary, might well outweigh the advantage to be derived by the public in general from the impossibility of its being said that there was some statutory, as distinguished from some common law, right to the exclusive use of the word "Tudor" in connection with chocolates.
It seems to me perfectly clear that the registration of this trade mark cannot possibly give rise to any rights except a right to the mark as a whole. It cannot give any statutory rights at all in respect of the word "Tudor", and, that being so, it seems to me that it is wholly inexpedient to place on the register what appear to me to be totally unnecessary disclaimers from the legal point of view, because the effect of that is to unsettle the law and raise difficulties in other cases. The effect of inserting disclaimers which are unnecessary is to raise all sorts of difficulties in cases where such disclaimers are not inserted. If the registrar had merely exercised his discretion in one particular case on one particular application, it may be that I should have found great difficulty in overruling that discretion, having regard especially to what was said in the well-known case of Eno v. Dunn, but here the registrar appears to be insisting on this disclaimer in accordance with a general practice of the office which he has stated. In my judgment that practice is one which is far too wide and would result, as a general rule, in the placing on the register of a vast crop of unnecessary disclaimers.
With the greatest respect I could not possibly hope to put the argument clearer than that. Section 22 as it stands will do just that. It will result in placing on the register a vast crop of unnecessary disclaimers. As I said earlier, apart from the right which the owner of a trade mark gets from registration, he may already have common law rights, and the registration of a disclaimer is an invitation to all and sundry to deprive this man of his common law rights. It will lead to confusion and a great many actions for passing-off.
It is not true to say that a person can by registering anything he likes under Part B acquire rights to it. Before a trade mark is registered under Part B it must meet the requirements of Section 18. The provisions of that section are quite exacting and, therefore, subject to what the Minister has to say, I urge him to accept this amendment. I say this disclaimer is unnecessary. Why do I say it is unnecessary? The law as it stands has worked perfectly well for nearly 60 years without causing any abuse. I know the Minister will tell me that up to now it has not been possible to register new trade marks in Part B. You could only register a trade mark which had been in use for two years. The Bill proposes to confer the right to register new trade marks. I accept that completely; I understand it, but why interfere with the established custom and procedure that has been going on for 60 years by virtue of which a mark in use for two years can be registered without disclaimer? I have no objection to the Minister taking power to insist on new trade marks under Section B being registered subject to disclaimer. I think that is reasonable, but I think the Minister and his advisers—I will not say fell into a trap— went on the line of reasoning that in England since 1938 the law has been amended and I think, when the Minister decided to extend the right to register new marks in Part B, he then decided to go the whole way and said they would register all the marks subject to a disclaimer, or give the right to register all marks subject to a disclaimer. Therefore, when he is giving something with one hand, he is taking it away with the other. I urge strongly on the Minister, both in my own name and in the name of the Association of Patent Agents, that this amendment should be accepted.