The Minister made the point that there have been very few convictions to date under existing legislation; I would like further information on this. While I accept the Minister's intention to give powers to the Garda and to provide in this legislation, as far as is possible, an effective deterrent against counterfeiting, Garda resources are overstretched in many respects. Is there a section within the Garda where this legislation will be policed? Is anybody responsible at this time for investigating counterfeiting, for collecting intelligence on it, for giving the Minister a feel for what is happening in the market? If not — and I suspect there is not — is it possible as a practical follow on to the enactment of this Bill to put something in place which would collect intelligence and conduct investigations into counterfeiting in order to allow this Bill be put into practice?
Trade Marks Bill, 1995: Committee and Final Stages.
The substance of the main representations made to me by industry in general and the anti-counterfeiting group, which represents some of the leading international marks, was that it was a question of the powers available. I understand it is also the view of the Garda Síochána that this issue involves a question of the powers available as distinct from enforcement. However, I should not mislead the House on the point of it being the primary duty of the trade mark owner to protect that mark. In discussions I had with trade mark owners they were generally satisfied with that fact, provided the law was updated and the Bill contained provisions to confer powers of action on the Garda. I presume it is, though not exclusively, a matter for the fraud squad.
Section 25 of the Bill states that any garda can act on foot of the powers provided. Following that, it is a matter for the trade mark owner to protect his own mark. This issue involves the protection of intellectual property. We can only set down the legislative framework which the trade mark owner can then use to vindicate his ownership.
I wish to raise some points in relation to this and later sections of the Bill for the purpose of clarification.
Section 8 (1) (c) states that the following shall not be listed as trade marks:
. . . . trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
This is a very broad definition. It would be possible, for the sake of argument, to include any application under that definition. Such a broad definition could create considerable difficulties for applicants.
The Committee Stage has been taken unexpectedly and, therefore, I must be careful when I state that this provision was imported from the 1963 Act. However, if memory serves, that was the case. I am assured that this provision is internationally accepted. My main reason of confidence in this regard is that neither the industry nor the agents' association is concerned about this definition. For example, electricity could not be registered as a trade mark or something which seeks to convey that generic impression. While it might appear to be quite broad, I am assured the definition is internationally accepted or, to put it another way, that which constitutes a trade mark is internationally accepted. We felt it necessary to include the explicit grounds for refusal of registration in this section.
I accept the Minister of State's argument on the grounds that the definition is internationally accepted and that is was imported from the 1963 Act. If that is the case, the definition has stood for over 30 years and, if the fears I expressed have not materialised in that time, I am prepared to accept it.
Section 9 deals with specially protected emblems which cannot be used in the construction of a trade mark. On the spur of the moment I have tried to identify the emblems in question. The national flag, the harp and the shamrock obviously enter the reckoning under this section. I am aware that ministerial consent can be given for the use of specially protected emblems. I do not foresee anyone using the national flag to construct a trade mark, but I can foresee a tendency to use the shamrock or the harp.
Senator O'Sullivan referred to certain Irish beverages and, in that context, it has been a welcome development to see the number of Irish pubs being established in cities in central and eastern Europe. I am aware of one such establishment which is situated in a country in south-central Europe — outside the European Union — which I recognised because there was a large shamrock on display at the front of the building. Is there an expectation that many people will apply to use the shamrock, harp or other emblems in this manner? What is the Minister of State's attitude to such applications?
This provision is probably as old as the State and is certainly as old as the 1963 Act. The saving grace is that section 9 (1) provides that trade marks consisting of such emblems shall not be registered unless the controller is satisfied that consent for their use has been given by the Minister. A person may seek to register a product using the shamrock in some shape or form and, where this might normally be rejected out of hand, the controller reserves discretion as to whether that registration can proceed. The experience is that this has worked reasonably well in practice.
Must the person involved have the Minister's consent before applying to the controller?
Yes. Section 9 provides that the controller must be satisfied that consent for its registration has been given by the Minister. The Minister of the day would need to be satisfied that unfair advantage was not being conferred on a particular company or, alternatively, that damage was being done to national standing as a result of permitting the use of an emblem which can be associated with the State.
I am reasonably satisfied with the provisions of this section when they are taken in conjunction with those of section 12. However, section 10 (2) refers to "the likelihood of confusion on the part of the public". I am sure that the extent to which the public may or may not be confused is a matter which can be decided by the courts. It is not a popular thing for a politician to state, but there is daily evidence that sections of the public are confused about certain issues. If the Minister of State is satisfied with the inclusion of the term to which I referred, I accept his decision. However, the matter of public confusion is a very broad one. Is it correct that the courts will interpret this matter?
Ultimately that will be the case. The initial judgment would be of some value in the sense that it would be refused if it is likely to cause confusion in the public mind as between one product and another. Ultimately, the court will decide. It happens all the time and such a case is listed today.
Services are a new element in the Bill. For example, what is the position if I am a shoemender based in Limerick and I use a certain name for the business, but somebody else wishes to set up a shoemending business in County Donegal and use the same mark? I have no intention of bringing my business to County Donegal. Is there more leniency in terms of one company using a brand name in one part of the country and another which wishes to use the same name in another part? This aspect struck me in terms of services as opposed to goods which are not as easily transferred from one geographic area to another. I may be catching the Minister on the hop regarding this matter but it might arise when services are brought under the banner of trade marks.
The application of this law to services is relatively new but the phenomenon to which the Senator referred happens already in the trade mark area and such cases are contested from time to time. If somebody carries out or provides a particular service and they have no interest beyond their local clientele, they are not likely to seek registration as it is of no value to them. However, the opposite point is that somebody elsewhere may consider that it is a great idea and steal it. As I said, the primary responsibility is placed on the trade mark owner to protect the intellectual property in the mark. However, if they do not seek to do so, there is no recourse to the legislation.
We are moving relatively fast and I overlooked a point I wished to raise. Section 10 (2) states:
A trade mark shall not be registered if because—
(a) it is identical with an earlier trade mark and would be registered for goods or services similar to those for which the earlier trade mark is protected,
What is the position if a product, which should be registered as goods or services, is substantially or entirely different from those to which the earlier trade mark applies?
It depends on the particular circumstances and the controller must decide. Off the top of one's head, it would be difficult to understand the motivation if the goods being offered for sale are substantially different. Why would one want to call margarine butter or Kerrygold if what one is selling is margarine? Where a dispute arises, the controller must make the decision. If it is an identical mark, one starts from the presumption that one is unlikely to be successful. This is important.
Subsection (3) implements article 4.3 and 4.a of the directive by conferring broader protection on trade marks which have a reputation. It provides for a trade mark which is identical with or similar to an earlier such mark to be refused registration even where the goods or services for which registration is sought are not similar to those for which the earlier trade mark is protected. This broader protection may be invoked where the use of the later mark would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark. If one is seeking to register an identical mark, one is already starting on the presumption that one is likely to be refused.
I am reverting somewhat to the discussion on section 10. Section 14 states that a person shall infringe a registered trade mark if that person uses in the course of trade a sign which is identical. I refer in particular to the word "identical" as the Minister used it in relation to section 10. Subsection (2) (a) also includes the word "identical" but subsection (2) (b) uses the word "similar". Ultimately, a court will adjudicate in that regard but will the Minister indicate why the word "identical" is used twice and the word "similar" once?
In the second case, to which subsection did the Senator refer?
Subsection 2 (b).
The first states the obvious. If it is an identical mark, one infringes the right of the person who registered the mark. That is straightforward. Subsection (3) provides that the registration of a trade mark does not entitle the proprietor to prohibit a third party from using in a particular locality an earlier unregistered trade mark which could only claim rights in that locality. It must be read in conjunction with section 10 (4) (a) — where, ironically, the Senator raised the point. This provides for the existence of an earlier unregistered mark which confers the right to prohibit use of a later mark, for example, through an action for passing off.
To be a barrier to the registration of a later mark, the current subsection protects the rights of those who are unable to take advantage of section 10 (4) (a) because their rights apply only in an area so restricted that they cannot claim sufficient right to do this. It cannot always be black and white in terms of the presentation made to the controller. As in section 10, if it is identical, one can start from the presumption that one will be ruled out. However, elements of it may also be similar. In that case, the other considerations come into play and, as the Senator identified, it refers back to section 10 (4) (a).
This section deals with orders for the disposal of infringing goods, material or articles and the type of order a court should make. Subsection (1) (a) states: "for an order that they may be destroyed or forfeited to such person as the Court thinks fit,". To what type of person would the forfeited goods be returned? In his reply to the debate on Second Stage the Minister of State referred to certain recent events. I understand that situation, which involved clothing, although the value to the people to whom they would be returned is questionable. I could accept a court making an order for the goods to be destroyed, but what is the justification for the court making an order for the goods to be returned?
I agree that it is a very wide ranging power. As Senator Howard said, there is no point in dwelling on the kind of circumstances in which the court could order destruction. However, the section was framed in this way to give the court the sole discretion. For example, the Garda might stumble on stolen goods, such as glassware, to which a particular sign was being attached. The court might then, in its sole discretion, decide, rather than ordering the destruction or simple forfeiture of the goods, to render them up to the company which could establish a claim to ownership.