Seanad Éireann díospóireacht -
Wednesday, 13 Mar 1963

Vol. 56 No. 6

Trade Marks Bill, 1962—Committee and Final Stages.

Sections 1 to 21, inclusive, agreed to.

SECTION 22.

Mr. Fitzpatrick

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.

Minister for Industry and Commerce (Mr. J. Lynch)

As Senator Fitzpatrick observed, I saw the Senator with three registered patent agents on this point yesterday. I had already dealt with this matter in the Dáil and had resisted an amendment. I had, of course, before then taken fully into account advice which I had got and memoranda which I had read on both sides of this particular question. Nevertheless, I decided to see the agents, in case by sticking to the text of the Bill as it stands I might in any way do an injustice or in any way make this a less effective Bill, to make sure that none of these two events would happen.

I listened carefully to what the agents had to say and read subsequently very carefully the brief they presented to me on this matter. I want to say at this stage that in major respects no new arguments had been put forward that I had not taken into account before. In some other respects, new arguments were put forward but were not sufficient to convince me.

Let us look back on this whole question. First of all, a mark must be distinctive of the goods that it purports to refer to whether the mark is registrable in part A or part B of the register. This is the first prerequisite. The mark may be registered in part A. It is a much more effective registration because after seven years it may not be objected to. Part B is different. The marks there may be more easily removed and for that reason some marks that would not qualify in the opinion of the Controller for registration in Part A are registrable in Part B.

Hitherto in this country, the law has been that marks that had been in use in the State for a period of two years were qualified for registration in Part B if they first passed the required test of distinctiveness. But even with that distinctiveness and even with two years' use in the State, there could still be certain symbols, letters, numbers, or words forming part of that mark which could be marks, letters, symbols, numbers or words in ordinary use and matters that no one person could be given a proprietary interest in. The intention is that if a mark such as that were in use for two years it should be, provided it satisfied the test of distinctiveness, registered in Part B.

Under the law as I now propose it, the same test of distinctiveness will still apply, but the 2-years' user will not be necessary if the distinctiveness test is satisfied. But the Controller may require a disclaimer in respect of part of the mark in which it would be wrong to give a proprietary interest to the applicant for registration. I think that is reasonable because the provision as I propose it, and as it is in the Bill, is an illustration of the dual purpose of this Bill, protecting the proprietary rights of the registered proprietor on the one hand and also the trading public from unreasonable trespass on their natural rights on the other.

I want to say, in reference to what Senator Fitzpatrick said, that the law has been changed in England since 1938. It is not my intention, nor do I think it is generally desirable, to follow willynilly British law in this matter, although in matters affecting commercial interests we tend to follow them—insurance, trade marks, copyright and other matters like that— because we have such a lot to do with British trade in this respect. But the law was changed, from what we now have to what we now propose, in Britain in 1938 and has continued so since. That, as I said, is not a sufficient test but, nevertheless, I think it is an illustration that it has worked out satisfactorily in practice in Britain over the past quarter of a century.

The three patent agents who came to see me did put up certain arguments which, as I said, have not succeeded in convincing me. But there are other people who are interested in this line of business—members of the Senator's own profession and the Incorporated Law Society who have been adverting to the provisions of this Bill. Their members have dealings in trade mark applications and they—the Incorporated Law Society—did not make any suggestion along the lines now being made in the Senator's amendment. The Senator suggested that a vast crop of disclaimers would be likely to be made on Part B of the register. I have made, or attempted to make, an assessment of the number of disclaimers that would be likely to be made in used marks having regard to the previous experience of the Controller and his staff in this respect, and the figure that I have got for likely disclaimers in Part B on this basis is four per annum. This is the best estimate I can get of the number of disclaimers likely to arise.

There is another section in the Bill —Section 48—which enables traders who propose to register trade marks to come in advance and seek preliminary information from the Controller as to whether such a mark would be registrable without going through all the formalities of full application for registration. There, again, is the prospect of avoiding cluttering up of the register or avoiding the emergence of a vast crop of disclaimers. The provisions now proposed in the Bill are expected to facilitate traders seeking registrations. They will not render any less effective the registration given to the marks in Part B. An insistence on a disclaimer will not affect in any way the common law rights that the trade mark would have established for itself by user or otherwise.

One other remark in respect of user —the suggestion that 2-years' user within the State should be sufficient. Assuming a mark has all the elements of distinctiveness and assuming the trader can establish that it has been used for two years in the State, the extent of usage will be in question. If the Controller satisfies himself, if it is proved that it is in use, then the extent of that use either in scope or in relation to the sale of goods will matter because that user could be confined to a very small part of the State. A man might be making a small commodity on the Island of Cape Clear which is in the State. He could have established a 2-year user of the mark in a small community like that. The mark could be distinctive but, nevertheless, could contain certain elements over which a person could not be entitled to register a proprietary interest.

Therefore, in all the circumstances, I think the law as now proposed is a better one than we have had up to this and I think the interests both of traders who seek to register the marks and of the public are better safeguarded in the Bill as it stands. I regret that I cannot accept the Senator's amendment.

Mr. Fitzpatrick

Arising out of what the Minister said, I should like to ask whether he or his Department had any evidence of hardship having arisen since the foundation of the State as a result of registrations in Part B without disclaimer. I would be very interested to hear if there had. I respectfully suggest that what the Minister is doing here is just accepting the British Act of 1938 in its entirety. I have no objection at all to following the British law, where that law is sound or where its procedure is desirable. However, I do not think, just for the sake of uniformity, that we should accept the British law without question. A better thing to have done here was to accept the British law in so far as it is an improvement, but to retain our own law in so far as it has stood the test of time.

I should also like to suggest to the Minister that a person might be better off not to register a trade mark at all than to register in Part B subject to a disclaimer, because if he registers in Part B subject to a disclaimer in respect of a substantial part of his mark, then he is debarred from becoming the owner of the mark by using it. Instead of improving his position he is putting himself in a worse position.

The Minister suggested that the Incorporated Law Society has not called for the amendment I am seeking. I think there are about 1,300 members of the Incorporated Law Society and I do not think that any percentage of them would hold themselves out as experts on trade mark. The number of times that solicitors are called to deal with trade mark law is, indeed, very, very seldom. When we are, we usually pass on the case to one of the three gentlemen whom I introduced to the Minister yesterday afternon. The Minister stated that as far as he can assess the number of disclaimers which would be insisted upon under Part B would be as low as four per annum. I should like to know how the Minister arrived at that assessment. I would say the very fact that the Controller presumably advised the Minister to put in this provision in the Bill means that the Controller intends to use it and that he thinks it is a good thing to use it.

As I said before, there are two sides to every story. There is the official side; there is the administrative side, and, presumably, this disclaimer provision might make it more difficult for the Controller to make mistakes and might make the administration of the Act easier. On the other hand, it is not in the interests, in my opinion, of the commercial public, with whom we should be interested here.

I do not think that the Minister is quite correct when he says that to qualify for registration in Part B the mark must have a distinctiveness. I think that only relates to registration in Part A and that it is enough for registration in Part B if the mark is capable of distinguishing. That is the test for Part B. To pass for part A it must have a characteristic distinctiveness of its own. It is a much more severe test. That is really the whole weight of my argument that the little protection that Part B gives—and it is not a very effective protection—is being taken away from it by this section, which I say will be used.

Mr. J. Lynch

What the Senator did say is correct. There are distinctions between the distinctiveness in the two Parts.

Professor Hayes

This is very difficult.

Mr. J. Lynch

Part B requires a mark to be capable of distinguishing.

Mr. Fitzpatrick

Capable in time, I suggest.

Mr. J. Lynch

The requirement for Part A is adapted to distinguish. There are two degrees of distinctiveness. As far as the disclaimer element is concerned, the Senator suggested that the person is more or less weakening the validity of his mark in respect of some part of which he has to enter a disclaimer, a mark which the Controller thinks, at the time of the application for registration, is not capable of being registered without a disclaimer, because the word, the letter or the number might be in common use. It might be one that anybody else would feel he should have as much a right to as the applicant. Nevertheless, that applicant who has to carry a disclaimer can, in respect of the disclaimed element, in time apply for registration separately of that element. Therefore, the fact that a disclaimer is entered at a particular time does not rule a person out for all time if he satisfies the Controller subsequently of its distinctiveness and of its distinctiveness as applied to his own particular goods, which may usually come about by usage.

Secondly, the Controller cannot exercise the functions that he has in respect of these applications, particularly as to disclaimer, capriciously, arbitrarily or otherwise unreasonably. He must exercise them judicially. There is an appeal to the court. Therefore, if the Controller, whoever he might be, had been particularly difficult about demanding disclaimers, then his decisions in the course of practice are always appealable to the courts. Therefore, no enduring hardship could possibly ensue even if it could be claimed that the Controller was unduly difficult in these matters.

By and large, I think the Bill, as now proposed, will make it easier for people who have marks, which they apply to their goods, and want to register as capable of distinguishing these goods, to do so. At the same time, it will protect the interests of the general public and of other traders. I am afraid I can add nothing more to what I have already said.

Mr. Fitzpatrick

I take it that the Minister has no evidence of hardship having arisen, because if he had he would have told me. As I see it at the present time the Controller has to make up his mind on the application before him. If we give this section into the hands of the Controller he will not have to make up his mind. He will have an easy way out, and he can adopt the line of least resistance and say: "I will register your mark, but I will register it subject to a disclaimer." The fact that the Controller wants this section in the Bill leads me to believe that he intends to use it, and use it liberally. For that reason, and because there has been no case of hardship, the Minister has not convinced me, and I am sure he has not convinced the House.

Amendment, by leave, withdrawn.

Section 22 agreed to.

Sections 23 to 29, inclusive, agreed to.

SECTION 30.

Mr. Fitzpatrick

I move amendment No. 2:

In subsection (1), line 10, before "shall" to insert:—

"and the interest in an application to the Controller for the registration of the trade mark".

The object of this amendment is to make it possible to assign an application for registration of a trade mark. The Bill proposes to change the law regarding the assigning of trade marks. Up to the present it was not possible to assign or transfer a trade mark without transferring the goodwill of the business attached to the trade mark. The Minister has decided to make it easier to transfer or assign a trade mark, and under the Bill it is possible to transfer a trade mark without transferring the goodwill.

I approve of that and I welcome it, but I think it is a great pity that the Minister did not avail of the Bill to make it possible to assign an application for a trade mark. The whole point in registering a trade mark is to obtain protection for it. As we all know, if a person has a copyright or a useful trade mark, the sooner he gets protection for it the better. The date from which protection is afforded is the date of application. If I apply on 1st January, 1962, to be registered as the owner of a trade mark, and my application is not finally dealt with until 1st January, 1964, two years later, I would still be registered as from 1st January, 1962, and I could sue anyone who used my trade mark during that time.

Under the Bill it is not possible to assign that application. Again, if on 1st January, 1962, I apply for registration of a trade mark in respect of some goods which I manufacture, and six months later I sell my business, I cannot sell the interest in my application for the trade mark. I must do one of two things. I must discontinue my application altogether and let it be started anew in the name of the purchaser—and if I do not do that, the purchaser loses valuable priority—or I can continue the application in the name of the applicant. It is true that if the applicant is still in existence when the mark is registered he can assign it to the purchaser.

If the application is to be discontinued and started anew, as I said, priority is lost. That is very important. It goes to the whole root of the registration of trade marks. The date as from which protection is obtained is most important, and if the application is discontinued and I lose priority that is important. The alternative is to let the application go through and for the original applicant to assign it. That is where I say difficulties really crop up.

At present many foreign companies are buying trade marks here. There are big take-over bids as between one company and another. A situation can arise in which the company which applied for registration of a trade mark may be defunct. It may not be in existence when the trade mark is registered. If that is so, that company cannot then assign the trade mark and it continues to be registered in the name of a defunct organisation. That is not an imaginary case. This business of companies becoming defunct occurs frequently as, for example, when one American company is merged with another. The patent agents who deal with those matters tell me that has happened frequently and has caused hardship. They tell me that between them they are asked on average once a week to advise on that sort of thing, and they say: "You cannot assign your application," and the whole thing is dropped. It may not come to the knowledge of the Controller and it may not come to the knowledge of the Minister.

Up to about five years ago it was possible to assign an application in the Industrial and Commercial Property Office. An application was made by A and if he sold his business and the interest in the application, he would merely go to the Controller for assignment in the name of the purchaser and the application was continued in the name of the purchaser. That was the practice and procedure in the Industrial and Commercial Property Office up to five years ago. I defy contradiction on that. Whether it was right or wrong it was a convenient procedure, and it worked well and led to no abuses. As from about five years ago, the procedure was changed, and it has not since been possible to assign an application. If an individual applicant dies, the Act and the rules provide that the application may be continued in the name of his personal representative. This is in the Act and it is in the rules.

What I am really asking the Minister to do is to put a company in exactly the same position as an individual and to say if the company becomes defunct, or before it becomes defunct, it can assign the application to somebody else. I do not think that is unreasonable. The Minister and his advisers have followed by and large amendments of the law in England, where he has thought it advisable so to do. There is law dealing with trade marks. There is law dealing with copyrights and there is law dealing with patents. I am told that the law in relation to patents was amended in England by an Act of 1949; that prior to 1949 it was not possible to assign an application for the registration of a patent, but the shortcoming of that was seen by the British and in their Act of 1949 they remedied that and it is now possible to assign an application for registration in a patent. I ask the Minister and the House what is the difference between an application to register a patent and an application to register a trade mark? Each of them is equally important in its own sphere.

The Minister was good enough to receive a deputation and far be it from me to discuss in detail any interview that we had. While we were received in deputation, I feel that this is an oversight in the Bill. It is a great inconvenience and I personally—this is something that any practising lawyer will be able to follow—cannot for the life of me see what the objection is to continuing the application in the name of a purchaser. The Minister told me on the Second Stage that the reason was that the trade mark, when it was registered, was registered as at the date of application. In my respectful and considered opinion, that is the strongest possible argument in favour of the right to assign because it means the date of application is important; it is extremely important. I think that I am correct in saying that all sorts of rights which are in the course of being acquired can be assigned. I think a squatter's title in the course of being acquired can be assigned.

An action started in the High Court in the name of one person can, for the sake of evidence, be continued in the name of another person. There is nothing fundamental about this amendment. It is simply an amendment calculated to make this Bill work more easily and make the work of the people dealing with it easier.

The Minister may ask how many cases of hardship have arisen because it is not possible to assign. I asked the Minister that question in relation to my previous amendment and he did not answer me. I take it, therefore, that there was none. I do think that there are many cases of hardship resulting from it being impossible to assign applications. There are, of course, degrees of hardship. Applications have in many cases to be withdrawn; additional fees have to be paid; additional fees in the form of stamp duties have to be paid and additional fees have to be paid to professional people for making new applications. That is a hardship. Then there is the case of the defunct corporation. That is a real hardship which crops up very often. When a person is considering selling out his business and his trade mark, if he is a company, it very often happens that the company is thinking of going out of business; otherwise it would not be selling. It is very likely that the company is considering going out of business. There may be long delays and even an Irish company could be wound up before the mark became registered. It would not then be in a position to assign. You have the question of a foreign merger. There is one final point I want to make on this. I understand that a foreign company which registers its trade mark abroad and then assigns it here can in some way or another—I confess I am not too clear about it—register this trade mark here as on the date on which it was registered abroad and in that way can get priority that is not open to an Irish national.

I am convinced that this is a desirable amendment. It is an amendment which the Minister could very well accept. There is no question of principle involved. There is no hardship on anybody and it would at least make the work of the people dealing with this sort of thing a lot easier and, when passed, it would avoid serious hardship.

Mr. Ross

I should like to support Senator Fitzpatrick in regard to this amendment. Before doing so, however, I should also like to associate myself with what he said on the first amendment in thanking the Minister for his courtesy in receiving the members of the Patent Agents Association, which he did for a considerable time yesterday afternoon and at short notice.

It seems to me that there are three main arguments which have already been debated here and in the Dáil against the amendment and I should like to summarise those for a moment. Senator Fitzpatrick has in part dealt with them.

The first is that no real hardship is caused by not putting in the amendment. I think Senator Fitzpatrick has put particularly well the hardship that is caused. The one case which I should like to underline for him is that of American companies. As I understand it, company law here is that, when a company is going to cease to operate, it goes into liquidation. Liquidation takes some time. The liquidator has to be appointed and although the liquidation may proceed, the liquidator is still able to make assignments of sales of property. In the United States I understand the position is different in that the company, when it is taken over by another company, may, in fact, die completely. It is not a question of shares being acquired and a company, or its subsidiary, being controlled by another company. The company which is being taken over apparently dies completely. In such an event, I think a very great hardship is caused if the company put in application for registration and is then precluded from proceeding with it because it has, in fact, died and the taking over company, the company which has bought its shares, is not able to proceed. As the trade mark agents told us yesterday, they have requests to deal with this sort of problem on an average of one a week —50 a year—and that seems a great deal.

Another argument against the amendment is that the amendment may not be able to stand by itself. That is probably true. If the amendment were to be accepted in subsection (1) of this section it would be necessary for further amendments to be made to the section dealing with partial assignment. Probably the whole of this part of Section 30 would need alteration in some form or another. That should not be an insuperable task if the amendment of itself is sound. I would hope that the Minister would not be put off by the fact that this amendment will present some difficulty.

Finally, the argument against the amendment seems to be that it is not in the British Act of 1938. Senator Fitzpatrick spoke of practising lawyers. I might consider myself a practising lawyer, and I find it, quite frankly, a very humiliating experience and a very frequent one, when dealing with lawyers across the water, to have to say, in relation to companies' matters or trade mark matters, patent matters or quite a number of matters of law in general, "We have not got that". They say: "Well you are rather behind the times". It seems to me that here we have a chance to be able to say we are ahead of them on the other side.

I understand that the British Association of Trade Mark and Patent Agents are very keen to see an amendment of this kind introduced into the next British Act. We have to remember that the last British Act was in 1938 and normal trade practice has developed very considerably since that time, which is 25 years ago. If the British are thinking now in terms of introducing some amendment of this kind into future legislation, I should like to see us at least for once one jump ahead.

Mr. J. Lynch

I just want to mention two specific points Senator Fitzpatrick raised, apart from the generalities of his argument. One was that there is provision for the transfer of applications for patents. He suggested that there is no distinction, but a patent involves an invention, something positive, something tangible, created by somebody, and for that reason, I think, patents are in a different category altogether.

Secondly, he said that what he proposed in his amendment was the practice in the office some time ago. There was evidence of two cases in which the transfer of the interest in an application was granted—an application for a registration of a trade mark was granted. There was such a case but it was a mistake.

Mr. Fitzpatrick

Several cases I said.

Mr. J. Lynch

Two cases could be traced. Since these statements were made in the course of the passage of this Bill through both Houses an exhaustive examination has been made and it is established, as near as possible, that this has been discontinued.

On the general issue, a trade mark is something that is industrial or commercial property. The application for a trade mark is a different matter altogether and my advice is that there is no provision in law for assigning the property right in an application. I sought the best advice available on this matter and I have been told that an application for registration of a trade mark does not, in itself, give rise to any assignable property right. Apart altogether from that, I am told the difficulties we might create for ourselves, if we permitted such an assignment, are by no means determined. We do not know where we would go if we permitted this right in the Bill.

Some of the provisions on assignment of trade marks are new. The assignment of trade marks without the goodwill of the business, is something for which there has been a demand, but I do not think it is wise to go this far to assign an interest in an application for the registration of a trade mark. In the first place, as far as a defunct company is concerned or an ordinary company continuing to trade relinquishing its right in the application for a trade mark, I do not think any difficulty arises. If it is defunct, it may have assigned the mark itself which, at this stage, is not a registered trade mark but one for which an application has been made. The application continues in the name of the original company. The company to which the mark has been assigned produces evidence at the appropriate time that this is their mark and, therefore, they are entitled to become registered as proprietors.

Mr. Fitzpatrick

That is exactly what the amendment seeks.

Mr. J. Lynch

It is not. I am suggesting it is the interest in an application that the amendment seeks. If, at the time of the registration, the person in whom the ownership of the interest in the trade mark resides, applies to the Controller, giving the appropriate evidence, then the new owner will be registered simultaneously with the original applicant. I do not think that gives rise to any particular hardship or difficulty.

As far as I am aware—and I am in close touch with industrial and commercial organisations—none of them has ever complained to me that any hardship arises out of the lack of this facility. The Federation of Irish Industries or any chamber of commerce with whom I have frequent contact have never complained in any way that any difficulty arises. Senator Ross referred to the British patent agents and their interest in having a similar amendment to British law. The fact is that British patent agents have not succeeded in persuading the British Board of Trade to change British law in this respect. There is no administrative body in the world more sensitive to the requirements and requests of the trading public than is the British Board of Trade. We know what Napoleon called the British, and it was justified in the context. By reason of their history, the British Board of Trade is very concerned about ensuring that the wheels of commerce and industry in Britain run smoothly. I feel sure that if they felt that there was something in the case made by the British Chartered Institute of Patent Agents, they would have conceded any points raised readily. The fact is that they have not succeeded, but the British Chartered Institute understandably are interested in having this done here. The fact that they have not succeeded in convincing their own Board of Trade is a very significant point.

As far as our being behind the times in our legislation is concerned, I shall readily admit that much of our legislation is behind the corresponding legislation in Britain, but as I said in introducing the Second Stage, this is part of our industrial and commercial property law which we are now splitting up into these separate components. We have the Companies Bill as well as the Trade Marks Bill and the Copyright Bill. I think that when Senator Ross meets his British colleagues next time, he will be able to claim that our Companies Bill is ahead of the British legislation.

Mr. Fitzpatrick

We will all be exhausted.

Mr. J. Lynch

Yes. As the House knows, I am dealing with that every week and I will be exhausted before I get into the House; but at least in that respect we will be in advance of the British as far as companies legislation is concerned.

To sum up, I do not believe that the difficulty that has been suggested exists in the Bill. It is simply a matter of assigning a mark without assigning the application for the registration of the mark. It is a simple matter to ensure that when the mark ultimately is registered as of the date of the original application in the name of the original applicant, at that time the new owner of the mark can ensure that his interest in it is suitably inscribed in the register. This serves two purposes. It preserves the property in the mark, which seems to be the intention of the amendment, and ensures that there is going to be no difficulty about the examination of the merits of the application. In all the circumstances, particularly in so far as I have received no complaints about hardship accruing either from the trade interests in this country or, indeed, from any American companies that seek to set up business here—and I am sure that if there were difficulties I would have heard of them, since those American companies, in my experience, are not slow to make their grievances known —there would seem to be no indication that this is necessary.

Senator Ross did make one other suggestion, that the patent agents here say that about one of these cases occurred every week. If that is so I should like to know how many of these cases occurred in Britain. There must be scores of them every week if we have one here. The law has not been changed in Britain, therefore, the law, as it stands, works reasonably well and the law as I now propose will work well. There is no reason for the Senator's amendment.

Mr. Fitzpatrick

If I understand the Minister correctly he would not change the law here because he has not received any complaints about cases of hardship, but on the disclaimer question he has decided to change the law——

Mr. J. Lynch

I gave more than one reason.

Mr. Fitzpatrick

On the disclaimer question he has decided to change the law although he received no complaints. On this question of patents and trade marks I should like to take up the Minister because I think he has been urged to argue an impossible proposition. The registration of a patent protects an invention. The registration of a trade mark protects the trade mark. I may make an invention and until that invention is patented anybody else can make a similar invention and whoever gets in first has proprietary rights over the patent. I think that is a fairly accurate summary. I might think of a trade mark and if it is a new one it may be a good one but there is nothing to prevent another opponent in trade from getting to know about the same trade mark and whoever gets in first and gets registered is protected. Therefore, the very same principle applies to a patent as to a trade mark, and in this world of intensive advertising an eye-catching and attractive trade mark which will put my goods before the world over television and everything else can be every bit as valuable to me as a patent. The principle is the same. I cannot see any difference.

The Minister's next point was that an application to register a trade mark is not a right of property and, therefore, it is not assignable, but it is not the registration I am assigning. It is the trade mark, which is something which exists, and the registration of it only declares my ownership in it. What I want to do is to say: "This is my trade mark. I have applied for registration——"

Mr. J. Lynch

Registration does not declare ownership.

Mr. Fitzpatrick

It protects my ownership. It is my trade mark and I have applied for registration. When I get registration I will be the exclusive owner.

Quite candidly on the Minister's last point, I should like to be clear about this and the record to be very clear. The Minister has stated that at the present time I can assign a trade mark, not an application for a trade mark, but I can assign a trade mark and I can take an assignment from the owner of the trade mark who has applied to be registered as owner. I understand quite well what the Minister says, that it is not the ordinary application that is assigned to me, it is the trade mark. I understand the Minister to say that, when a trade mark is being registered, if I produce to the Controller my assignment the Controller will register me as the purchaser. If that is so, then I thoroughly agree with the Minister that it takes a lot of my argument away. But I should like the Minister to be very clear on it, because I understand that it is not the law, and that the Controller will, notwithstanding any assignment, in practice register the trade mark in the name of the applicant for it and in the name of the applicant alone. I am advised that you can get it into the name of the purchaser, but if the original applicant is defunct, the trade mark for all practical purposes is dead and gone with him. If that is so, and if the Office of the Controller will act as indicated by the Minister that is certainly a way out.

Mr. J. Lynch

May I re-state what I said? A trade mark in respect of which an application for registration is made may be assigned, but the application is continued in the name of the original applicant and subsequent to registration the name of the assignee can be registered as the subsequent proprietor.

Mr. Ross

As the original applicant does not exist does not the chain break?

Mr. J. Lynch

The original applicant existed as of the date of application. The mark is registered as of the date of application and, therefore, it is in the name of the original applicant. It takes some time to process those things. At the time of registration which dates from the original application, the new or subsequent proprietor can be entered in the register. Therefore, two names will appear, the name of the original applicant because it is from the date of the original application that the registration is effected, and the name of the assignee of the mark or interest in the mark who is the subsequent proprietor. Nevertheless, his rights are exactly the same.

Mr. Ross

He gets the priority of the original applicant?

Mr. J. Lynch

He assumes the priority of the original applicant.

Mr. Fitzpatrick

Let us clarify that. If A is the owner of a trade mark and he applies for registration on 1st January, 1962, and on 1st June, 1962, he assigns the trade mark to B, and if the trade mark is not registered until 1st January, 1963, am I to understand from the Minister that it will be registered in the name of A but on production of assignment it automatically transfers to the name of B notwithstanding the fact that on 1st January, 1963, A may be defunct?

Mr. J. Lynch

That is the position.

Mr. Fitzpatrick

If that is the position then there is no point. I hope it is the case. I shall withdraw the amendment on that understanding.

Amendment, by leave, withdrawn.

Section 30 agreed to.

Sections 31 to 63, inclusive, agreed to.

SECTION 64.

Question proposed: "That Section 64 stand part of the Bill."

Mr. Ross

There is some concern about the use of the word "symbol" in this section. It is not really clear what is meant by "symbol" in subsection (2) which reads:

For the purposes of this section, the use in the State in relation to a trade mark of the word "registered", or of any other word or of a symbol referring whether expressly or impliedly to registration, shall be deemed to import a reference to registration in the register...

There was a certain amount of debate in the Dáil about the use of a well-known American symbol, the letter R in a circle, and I think the Minister was questioned as to whether it might be excluded in the Bill. I can see an objection to that because there may be other symbols from other countries which may be equivalent to the use of the word "registered" in this country to hold out that a trade mark has been registered in those countries.

I think it would meet the point if the Minister would consider ruling on, or making an Order from time to time as to what symbols are referred to, under this subsection. I would ask the Minister to consider that. I know he was asked by the trade marks people to consider the addition of some third subsection, to the effect that for the purposes of the section, "symbol" meant such symbol as the Minister from time to time by Order prescribed, so that at least the people who have to work under the Bill when it becomes an Act would know what symbols refer to registration and what symbols do not.

Otherwise, the difficulty will arise that a symbol may be used, innocently or otherwise, to hold out that a trade mark had been registered when it had not been registered, and the only way to decide on it would be to go before the Controller or before the courts. If the Minister were to declare from time to time the symbols to which the subsection applies, which would be symbols holding out that the trade mark was registered, it would clarify and simplify the procedure very much.

Mr. J. Lynch

When I saw the agents yesterday with Senator Fitzpatrick, the Senator himself made this point. I have been giving it some thought and while I would not like to facilitate any person who would have been innocently advertising goods and creating the impression in the minds of the Irish public that this case was the subject of a registered trade mark, as a result of my thinking on the matter, there is something in the case made. I believe that the use of the word "symbol", without any qualification, might create some difficulties for people who would be asked to advise whether a particular symbol would be within the law or be excluded. Since then, I have been considering the possibility of meeting this by an amendment and I think it can be done.

By a little juxtaposition of these words and importing the words "or of a prescribed symbol" in subsection (2), I think I can, if it is in order, a Leas-Chathaoirligh, have an amendment circulated quickly. I should be glad to do so. May I hand it in?

An Leas-Chathaoirleach

Yes. There are two amendments by the Minister in relation to Section 64.

Government amendment No. 3:—

In subsection (2), page 31, line 32, to delete "or of a symbol".

Amendment agreed to.

Government amendment No. 4:—

In subsection (2), page 31, line 33, before "shall" to insert "or of a prescribed symbol".

Amendment agreed to.

Section 64, as amended, agreed to.

Sections 65 to 72, inclusive, agreed to.

First Schedule agreed to.

SECOND SCHEDULE.

Question proposed: "That the Second Schedule be the Second Schedule to the Bill".

Mr. Ross

In connection with the Second Schedule, I think there is a slight misprint which the Minister has probably not noticed. In the heading should it not be "three years" rather than "one"?

Professor Hayes

It is "three years" rather than "one"?

Mr. J. Lynch

It is a misprint.

Professor Hayes

Should it be "three years" or "one"?

Mr. J. Lynch

It should be "three years".

Mr. Murphy

It would be in order to make that alteration?

An Leas-Chathaoirleach

That alteration is in order.

Question put and agreed to.

Title agreed to.

Agreed to take remaining Stages today.

Bill reported with amendments and received for final consideration.

Question proposed: "That the Bill do now pass."

Mr. Fitzpatrick

At this stage, I should like to get back to the contents of Section 30. That is the section which deals with assignments. The Minister told me that on production in the office of an assignment of a mark during the currency of the application——

An Cathaoirleach

It is customary for the Minister to absent himself when the bell rings for a Division in Dáil Éireann.

Mr. Fitzpatrick

This will not take a second.

Mr. J. Lynch

It is a long second.

Mr. Fitzpatrick

I was about to ask the Minister if it turns out that it does not work that way in the office, would the Minister give an assurance that he will give us an amendment?

Mr. J. Lynch

Precisely.

Question put and agreed to.