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Trade Marks Bill, 1995: Report and Final Stages.

Wednesday, 28 February 1996

Dáil Éireann Debate
Vol. 462 No. 3

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Bill recommitted in respect of Amendments Nos. 1 and 2.

Minister of State at the Department of Enterprise and Employment (Mr. Rabbitte): Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 1:

In page 11, lines 23 and 24, to delete “which in his opinion is a badge, device or emblem”.

This amendment has the same wording as amendment No. 4 tabled by Deputy McDowell on Committee Stage. I indicated that I might return to this on Report Stage as the amendment was not moved in Committee.

Section 9 provides for the refusal by the Controller of Patents, Designs and Trade Marks of an application to register a trade mark which includes the harp or shamrock, the national flag or emblems of public authorities. The effect of the amendment to subsection (3) is that the controller's discretion in deciding whether a badge, device or emblem is that of a public authority is removed. It will need to be clear that the trade mark contains a badge, device or emblem of a public authority before [651] the controller may refuse the application. Such refusal will not arise if the public authority consents to the use of its badge, device or emblem.

Amendment agreed to.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No.2:

In page 12, line 16, after “by virtue of” to insert “any such rule of law or earlier right as is referred to in”.

This amendment was tabled by Deputy McDowell on Committee Stage as amendment No. 5. As indicated to the House I was disposed to accept the amendment as an imporovement to the text.

Section 10 sets out the relative grounds for the refusal of a trade mark application. Relative grounds involve conflict with other marks as opposed to the absolute grounds in section 8, which relate to the nature of the mark itself.

Subsection 10 (4), paragraph (a) implements Article 4 (4) (b) of the directive which provides that a mark shall not be registrable if it conflicts with earlier rights protecting unregistered marks. Those rights are set out in subsection (4) and the amended text brings out more clearly the point that it is these earlier rights which prevent acceptance of a trade mark rather than subsection (4) itself.

Amendment agreed to.

Amendments Nos. 1 and 2 reported.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 3:

In page 13, before line 1, to insert the following:

“12.—(1) This section applies where on an application for the registration of a trade mark, it appears to the Controller—

(a) that there is an earlier trade mark in relation to which any of the [652] conditions set out in subsections (1) to (3) of section 10 obtains, or

(b) that there is an earlier right in relation to which the condition set out in section 10 (4) is satisfied,

but the applicant shows to the satisfaction of the Controller that there has been honest concurrent use of the trade mark for which registration is sought.

(2) In a case to which this section applies, the Controller shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(3) For the purposes of this section ‘honest concurrent use’ means such use in the State, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 20 (2) of the Trade Marks Act, 1963.

(4) Nothing in this section affects—

(a) the refusal of registration on the grounds mentioned in section 8; or

(b) the making of an application for a declaration of invalidity under section 50 (2).”

I withdrew this amendment on Committee Stage to review the text. I am now satisfied with the text which follows section 7 of the UK Trade Marks Act, 1994. The controller is obliged to refuse an application on the relative grounds as set out in section 10, where the application conflicts with an earlier mark.

This amendment introduces a new provision by way of exception to section 10. It allows for the applicants to demonstrate that there has been honest concurrent use of the mark applied for with an earlier mark or other right. The controller will proceed to publication of the mark upon being satisfied of honest [653] concurrent use and, if there is no opposition, the mark will be registered in due course. If, on the other hand, there is opposition, the controller will decide whether the ground for refusal is made out.

While Article 5 of the directive requires a trade mark to be excluded from the register if it conflicts with an earlier mark or other right, the fifth recital to the directive gives member states latitude as to the stage at which relative grounds are to be taken into consideration.

Amendment agreed to.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 4:

In page 15, between lines 21 and 22, to insert the following:

“(2) If on an application for the registration of a trade mark, it appears to the Controller that any particular element of the trade mark is not distinctive and the inclusion of the element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, he may refuse to accept the application unless the applicant agrees to make a disclaimer in respect of that element under subsection (1) (a) within such period as the Controller may specify.

(3) Particulars of any disclaimer or limitation shall be entered in the register.”

Section 16 allows for the disclaiming of a particular element of a mark or the imposition of a limitation as to its effects. Up to now this Bill only provided for voluntary disclaimers and limitations. These would generally arise where applicants offered a disclaimer or limitation to overcome potential opposition to a trade mark application.

On Committee Stage Deputies O'Keeffe and McDowell tabled amendments to allow for compulsory disclaimers of elements of trade marks by the controller. I indicated then that I [654] would accept the principle of compulsory disclaimers and undertook to amend this section accordingly.

The amendment now before the House provides for compulsory disclaimers in the new subsection (2). It also provides for particulars of disclaimers or limitations to be entered in the register in subsection (3).

Amendment agreed to.

Bill recommitted in respect of No. 5.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 5:

In page 16, line 23, after “they” to insert “or their packaging”.

This amendment was tabled by Deputy McDowell on Committee Stage as amendment No. 12. I offered then to consider it on the basis that it makes the text more explicit and is in keeping with the rest of the section.

Section 20 is an important provision which defines infringing goods, material and articles. The amendment now proposed makes clear that an infringement arises if the packaging of goods bears a sign which infringes a registered trade mark. This is stated in subsection (2) paragraph (a) and, for absolute clarity, the amendment repeats the wording “or packaging” in subsection (2).

Amendment agreed to.

Amendment reported.

Acting Chairman: It is proposed to group Amendments Nos. 6, 15 and 19 for the purposes of debate.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 6.

In page 18, between lines 36 and 37, to insert the following:

“24. (1) If the District Court is satisfied by evidence that there is reasonable ground for believing that infringing goods, material or [655] articles are in the possession, custody or control of any person in the course of business or otherwise for the purpose of dealing in any way (including offering or exposing for sale), the District Court may by order authorise a member of the Garda Síochána to seize the goods, material or articles without warrant and to bring them before the court.

(2) If a judge of the District Court is satisfied by information on oath that there is reasonable ground for suspecting that infringing goods, material or articles are on any premises in the course of business or otherwise for the purpose of dealing in any way, the judge may grant a search warrant authorising a named member of the Garda Síochána not below the rank of inspector, accompanied by such other members of the Garda Síochána as may be necessary, to enter on the premises, if need be by force, and to seize any such goods, material or articles and bring them before the court.

(3) On proof to the District Court that any goods, material or articles brought before the court under subsection (1) or (2) are infringing goods, material or articles, the court may—

(a) order them to be delivered up to the proprietor of the registered trade mark concerned;

(b) order them to be destroyed or forfeited to such person as the court thinks fit; or

(c) order them to be dealt with in such other way as the court thinks fit.

(4) The powers of the District Court under this section shall be exercisable by the judge of the District Court for the district in which the goods, material or articles are for the time being or, as the case [656] may be, where the premises concerned are situated.”.

In the debate on Committee Stage there was general support for section 90 dealing with counterfeiting, and the need to facilitate trade mark proprietors in the protection of their brands. Following consideration of the views expressed by a number of Deputies, including in particular Deputies O'Keeffe and McDowell, I undertook to reflect on whether section 90 was adequate to deal with trade mark offences.

The example of large-scale production of glassware to deliberately feed off the reputation of our most famous producer of hand crafted glassware was cited. In such a situation the remedy of delivery up provided for in section 19, may not be sufficiently effective. I, therefore, propose a new provision to allow for seizure of infringing goods, materials or articles, as defined in section 20. The parliamentary draftsman has advised that this provision is best included as a free-standing provision after section 22, rather than as part of section 90. Deputy Kitt asked me to consider the involvement of the District Court in protecting the rights of trade mark proprietors due to the nature and manner in which Circuit Court vacations arise. This provision allows for the District Court to authorise seizure of infringing goods, material or articles by the Garda Síochána.

Subsection (1) allows for the District Court to authorise seizure of goods, material or articles. This would enable a member of the Garda Síochána to seize items and to bring them before the court. This subsection follows subsection 27 (4) of the Copyright (Amendment) Act, 1987, and will provide one remedy for trade mark proprietors whose mark is being infringed.

Subsection (2) mirrors subsection 27 (5) of the Copyright (Amendment) Act, 1987 and allows for a judge of the District Court to grant a search warrant to the Garda Síochána and to authorise seizure.

[657] Subsection (3) provides that the District Court may order that goods, material or articles, seized under subsections (1) or (2), be delivered up, destroyed, forfeited or dealt with in such other way as the court thinks fit.

Subsection (4) states that the powers of the District Court shall be exercisable for the district in which the goods, material or articles are situated.

This provision will facilitate trade marks proprietors in taking effective action against infringement. It extends the remedies available to owners of copyright under section 27 of the Copyright (Amendment) Act to owners of trade marks. Subsection (2) should be particularly helpful in tackling large-scale operations which make illegal use of trade marks.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I notice that the warrant is to bring the material before the court. The Minister might consider amending this to state that the material does not have to be brought before the court. The section could be amended by providing that the material be detained by order of the court or brought before the court. It would be unrealistic to require, for example, a crane or £500,000 worth of crystal to be brought before the court. What purpose would be served by bringing such goods before the court?

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe I inserted that in amendment No. 19 based on the fact that prevention is better than cure. The Minister has gone part of the way to meet the amendment. Does he see any merit in accepting paragraph (b) of the amendment?

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte On the point raised by Deputy McDowell, it might be more sensible to insert an “either or” provision. I will look at that matter. As regards amendment No. 19, I kept in mind the views expressed by Deputy O'Keeffe when constructing my amendment. In the opinion of the parliamentary draftsman — and in our opinion — his purpose is met within amendment [658] No. 6 which is a draconian measure compared to the present position. It ought to make for more effective and efficient policing of trade marks and anti-counterfeiting activities.

Amendment agreed to.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 7:

In page 21, line 20, to delete “as” where it firstly occurs.

This refers to two minor typographical errors in the text of the Bill, in section 29 and paragraph 9 of the Third Schedule. Section 29 provides for application for registration to be treated as far as possible as objects of property in the same way as registered trade marks. The correction in subsection (3) corrects an error which crept into the text at proofing stage.

Amendment agreed to.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 8:

In page 26, line 23, after “irrevocable” to insert “after the expiry of three months from the date of notice of the withdrawal”.

Section 42 provides for the applicant to withdraw, restrict or amend his application for registration at any time prior to registration. Section 42 (2) provides that withdrawal of an application cannot be revoked. Deputy McDowell proposed on Committee Stage that this subsection be deleted. While I was not disposed towards accepting his amendment I agreed that some latitude ought to be given to cover genuine error. I indicated I would like a time period to be specified within which withdrawals could be revoked and the amendment allows a period of three months.

Amendment agreed to.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 9:

[659] In page 27, between lines 8 and 9, to insert the following:

“(5) The registration procedure shall be regarded as completed on the date of publication under subsection (4); and that date shall be entered in the register.”.

Section 43 provides for registration of a trade mark when any objections to the application have been overcome. On Committee Stage Deputy McDowell tabled as amendment No. 3 an additional definition in section 2 which defined the date of the publication of the registration to be the date of completion of the registration procedure. I undertook to consider the amendment further. While the term “date of completion of the registration procedure” is used in article 10 of the directive we have substituted the term “date of publication of the registration” for convenience as it is an easily ascertainable date. The definition suggested by Deputy McDowell was acceptable. The parliamentary draftsman has suggested that the most appropriate place to incorporate the point that the two terms referred to shall be treated as one and the same under this legislation is in the new subsection (5) of section 43.

The Deputy also moved amendment No. 17 on Committee Stage to provide that the date of publication of the registration shall appear on the register and certificate of registration. I indicated that I was disposed towards providing for the date of publication of the registration to appear on the register only. The wording now proposed covers that point.

Amendment agreed to.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 10:

In page 37, to delete lines 1 to 3 and substitute the following:

“(4) The Controller may (of his own motion) correct any error made by him in any entry in the [660] Register but, before doing so, he shall give notice of the proposed correction to any person who appears to him to be concerned.”.

This amendment is slightly different from the one I tabled on Committee Stage. The original amendment did not provide for the controller to notify parties who might be affected by the correction of an error in the register. The corresponding provision in section 110 (3) of the Patents Act, 1992, provides for such notification. I move this amendment in the interests of informing concerned parties who may have been misled by an error in the register and for the sake of uniformity with the patents legislation.

Amendment agreed to.'

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I move amendment No. 11:

In page 42, to delete lines 22 to 24 and substitute the following:

“unless all the partners are either or both a registered Trade Mark or Patent Agent or the partnership satisfies such conditions as may be prescribed for the purposes of this section. A partnership of one or more registered Trade Mark Agents and one or more registered Patent Agents shall be deemed not to contravene section 106 or section 125 of the Patents Act, 1992.”.

This amendment is designed to create some flexibility in and jurisdiction over the rules dealing with partnership. The purpose is to allow trade mark and patent agents to be partners in firms which conduct business under the patents jurisdiction and the trade mark jurisdiction and not to require, as appears to be the case at present, that one is either a trade mark agent exclusively or a patent agent exclusively when conducting business in either case.

Some large firms in Dublin function as patent and trade mark agents. It seem absurd that they are required to form [661] separate partnerships to carry out different functions. The rules should recognise that patent and trade mark agents form partnerships and that firms established generally for the purpose of the intellectual property law in terms of patents and trade marks should be permitted to function in either area regardless of whether the firm in question has among its partners practitioners of the other art. In terms of practicality, there is nothing to be lost but a great deal to be gained from this amendment. The Bill in its present form can be relatively easily circumvented by establishing two partnerships working together as partners in owning property and running companies. The reality is that companies are functioning as trade mark agents and patent agents and that should be recognised in law for the purpose of the Trade Marks Act and the Patents Act.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte The position in the UK is that partnerships and bodies corporate can use the title “patent agent” provided all partners or directors are registered agents for patent or trade mark work and at least one-quarter of them are registered patent agents. To use the title “registered trade mark agents” all partners or directors must be registered agents of one type or the other and at least one-quarter must be registered trade mark agents. Patent agents must indicate their qualification on all correspondence for mixed partnerships. I am not convinced of the need or justification for such arrangements here. The association has indicated that practically every patent agent is also qualified as a registered trade mark agent, although the converse position is less frequently encountered. Thus persons with dual qualifications can represent themselves as registered patent and trade mark agents. To extend this facility to partnerships where individual partners do not possess dual qualification is an unnecessary dilution of the principle enshrined in legislation that partnerships should not hold themselves out to be qualified in a discipline unless all the partnerships are so qualified. On my [662] advice that is the nub of the case made against Deputy McDowell's amendment.

The argument has been made that the principal occupation of both patent agents and registered trade mark agents is dealing with the Irish patents office and mixed partnerships should be allowed. Increasingly, patents work has been moving to the European patents office and a similar trend whereby trade marks will be registered at the Community trade mark office in Spain seems likely. That would indicate a need for specialisation in each field rather than a dilution of the principle that partnerships should describe themselves as qualified only in matters where all the partners are so qualified. Given the powers agents have in terms of legal privilege and the preparation of deeds, it is essential the public is in no doubt about the qualifications of the individual partners in a firm.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I still believe my proposal is sensible and reflects reality and I wish to press the amendment.

Question, “That the words proposed to be deleted stand”, put and declared carried.

Amendment declared lost.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I move amendment No. 12:

In page 43, between lines 25 and 26, to insert the following:

“(9) No offence is committed under any enactment restricting the use of certain expressions in reference to any person not qualified to act as a solicitor by use of the term “Trade Mark Attorney” in reference to a Registered Trade Mark Agent.”.

With the permission of the House I wish to insert the word “Community” before the words “Trade Mark Attorney” in line 3 of the amendment. If the amendment is so amended it [663] would command general support in the House. I would prefer to leave the amendment in its original form, but in the interest of getting maximum support for it and making it acceptable to all Deputies I beg leave to move it in the amended form as outlined.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte The amendment seeks the facility to use the term “Community Trade Mark Attorney” and to enshrine it in the legislation. I indicated on Committee Stage that the term “Trade Mark Attorney” is permitted under section 86 of the UK Trade Mark Act, 1994, and extends the use of the term “attorney” given in the UK Copyright Designs and Patents Act, 1988, to patent agents into the area of trade marks. Patent agents may act before a patents county court in the UK. At the time of the Patents Act, 1992, the use of the term “attorney” was considered for patent agents here. It was decided to permit the use of the restricted term “European patent attorney” in section 126 of that Act. As trade mark agents do not have a right of audience before a court in this jurisdiction the title “Trade Mark Attorney” should not be incorporated in legislation.

On Deputy McDowell's amendment to the amendment, I am well disposed towards the new proposal to permit the use of the term “Community Trade Mark Attorney”. The title indicates the qualification of trade marks agents who are registered to act before the Community trade mark office in Spain. That title should assist the profession in securing international business and generating employment opportunities. Consequently I am prepared to accept the amended amendment.

Amendment to amendment agreed to.

Amendment No. 12 as amended, agreed to.

Acting Chairman (Mr. Kirk): Information on Seamus Kirk Zoom on Seamus Kirk We now come to amendment No. 13 in the name [664] of Deputy Ned O'Keeffe. Amendment No. 14 is consequential. It is proposed therefore that Nos. 13 and 14 be taken together, by agreement.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe I move amendment No. 13:

In page 46, between lines 32 and 33, to insert the following:

“(e) to possess in the course of a business machinery, tools, printing or other equipment with a view to doing or intending to do any of the things mentioned in paragraphs (a) to (c),”.

This amendment proposes that it be an offence to be in possession of machinery and other equipment with the intention of using it for counterfeiting. The amendment allows for a procedure whereby any such goods being used or intended to be used for counterfeiting should be forfeited. If such a provision is not inserted it would be possible for a counterfeiter to reoffend. That is a very serious crime and therefore the amendment is worthy of acceptance.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I support Deputy O'Keeffe's amendment. To be in possession of equipment for the purpose of counterfeiting should be an offence and such equipment should be liable to confiscation and forfeiture. I see no reason that it should be left in the hands of the counterfeiter. I urge the Minister to accept the amendment.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte When Deputy O'Keeffe put down these amendments he was not aware of the contents of my amendment No. 6. I refer him and Deputy McDowell to the definition of the term “articles” in section 20.

Section 90 provides for the unauthorised use or application of a registered trade mark to be an offence. Section 13 defines the acts which constitute infringement. Infringement occurs when a person uses a sign which is identical or similar to a registered trade mark in connection with goods or services which [665] are identical or similar to those for which the mark is registered. Where the trade mark is well known infringement extends to use in connection with non-similar goods or services.

I refer Deputies O'Keeffe and McDowell to section 20 which defines infringing goods, material or articles. As defined in section 20 (5), “infringing articles” include articles which are used to produce counterfeit goods. The seizure provisions included in the Bill, following the carrying of amendment No. 6, will allow infringing articles to be brought before the court and dealt with as the court sees fit. The amendment tabled as a new subparagraph (e) in section 90 (1) relies heavily on proof of intent to commit an offence. The seizure provision should be more effective in that infringing articles, as well as goods and materials, may be seized and brought before the court to be dealt with as the court see fit.

I am of the view, therefore, that the purpose of Deputy O'Keeffe's amendment is met by the rigorous new sections inserted. I am not disposed to accepting amendments Nos. 13 or 14 as I am advised it would be extremely difficult to prove that machinery or tools were to be used to commit an offence under section 90. The definition of “articles” under section 20 and the provision to allow “infringing articles” to be brought before the court and dealt with as the court sees fit deals very severely with the phenomenon Deputy O'Keeffe is trying to address.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe The Minister stated that the content of my amendment is covered in sections 13 and 21 but he should copperfasten the position by inserting subparagraph (e) in section 90 (1). Given that those engaged in counterfeiting must use special machinery, I do not understand why the Minister will not provide in the Bill for the confiscation of such machinery.

Acting Chairman: I remind Members we are on Report Stage. I will permit a [666] brief response from the Minister of State.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I draw Deputy O'Keeffe's attention to section 20 (5) which states:

“infringing articles”, in relation to a registered trade mark, mean articles—

(a) which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and

(b) which are in the possession, custody or control of a person who knows or has reason to believe that they have been or are to be used to produce infringing goods or material.

I note the arguments advanced by Deputy O'Keeffe, but they are well catered for in the new sections.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe Provision is not included for the confiscation of such machinery.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell The Minister should reconsider this issue before he goes to the Seanad. The matters which are infringing articles under section 20 (5) are quite limited. Deputy O'Keeffe is making a different point, that if one comes across a counterfeiting operation with large machinery which has been set up for the purpose of such an operation, it is ridiculous to leave such equipment in the hands of a counterfeiter and not to seize it.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe Such equipment could be used again.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell Glass cutting machinery found in the possession of a counterfeiter would not fall within the infringing articles definition because it would not be specially adapted to infringe.

Acting Chairman: I must remind Deputies that this is Report Stage and there is provision for recommittal if Members wish to pursue the matter.

[667]Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell The amendment should be recommitted.

Bill recommitted in respect of amendment No. 13.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe I move amendment No. 13:

In page 46, between lines 32 and 33, to insert the following:

“(e) to possess in the course of a business machinery, tools, printing or other equipment with a view to doing or intending to do any of the things mentioned in paragraphs (a) to (c),”.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell If I established a backstreet factory using glass cutting machinery, unless Deputy O'Keeffe's amendment is accepted it would not be an offence for me to have such machinery with the intent of carrying out counterfeiting operations. If it became abundantly clear to the court that I had that machinery for the purpose of a counterfeiting operation, it would not fall within the category of an infringing article under section 20 (5) because it is not especially adapted for that purpose; it is merely glass cutting machinery and I could have it for a variety of purposes. It is not especially adapted for making copies of a sign identical to, say, the Waterford mark. Deputy O'Keeffe is right to seek to extend the penal provisions for possessing equipment for the purpose of a counterfeiting operation and making such equipment liable to confiscation where there is a conviction. That makes a good deal of sense.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I have a few problems with this. If one did come across such glass cutting equipment in a backstreet factory, I am advised it would be very difficult to prove intent. I also draw Deputy McDowell's attention to paragraph (3) of my amendment No. 6 which has been accepted. It states:

On proof to the District Court that any goods, materials or articles [668] brought before the court under subsection (1) or (2) are infringing goods, material or articles, the court may—

It goes on to outline what the court may do. One power open to the court is to order them to be destroyed or forfeited to such person as the court thinks fit. I have no objection to taking further advice on the matter before the Bill goes back to the Seanad, but my advice is that that amendment goes as far as possible. Having met members of the anti-counterfeiting group, I got the impression that they would be well pleased if I were to introduce the search and seizure facilities now included in the Bill.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe There is nothing to stop counterfeiters reoffending if they are allowed retain their equipment. The goods may be confiscated but a Counterfeiter may continue to operate using counterfeiting machinery. Counterfeiting may be a very lucrative business involving millions of pounds, as is the case in other parts of the world. Such businesses may be operating here. If counterfeiters are allowed retain counterfeiting machinery, they may reoffend. The only way to put them out of business is to confiscate counterfeiting machinery. There is merit in my amendment. I will not press it because it will not be carried, but I ask the Minister to accept the spirit of it.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I would need to reflect further on this but I am somewhat reluctant to accept that this principle should be enshrined in legislation. We are not talking about criminal but trade marks law and that the likelihood of reoffending ought to be a principle that we should enshrine in legislation such as this. I would be concerned about that. The new powers are quite draconian and to go further would probably be an over-reaction.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe If a counterfeiting operation were discovered and the [669] counterfeiter has taken over a legitimate business, the legitimate business person involved would be in real trouble but the counterfeiter would not have to pay any fine. Prevention is better than cure. The only way to prevent counterfeiters reoffending is to confiscate their equipment.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I refer the Deputy to the three subclauses of paragraph 3 of amendment No. 6. The court may order such infringing goods, material or articles to be destroyed or forfeited as the court thinks fit.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell There has to be an infringement article.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte The definition of articles under section 20 would seem to include this if a case is established.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe Section 90 appears to deal with the matter of offences.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte We dealt with that on amendment No. 6, the advice of the draftsman being that that was the appropriate place to insert it.

Acting Chairman: Did I detect Deputy O'Keeffe indicating earlier that he was withdrawing his amendment?

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe Yes, despite the fact that I could push it to a vote.

Amendment, by leave, withdrawn.

Acting Chairman: Amendment No. 14 falls automatically.

Amendments Nos. 14 and 15 not moved.

Bill recommitted in respect of amendments Nos. 16 to 18, inclusive.

Acting Chairman: Amendment No. 16 in the name of the Minister. Since amendments Nos. 17 and 18 are [670] related perhaps all three can be discussed together by agreement. Agreed.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 16:

In page 47, line 11, to delete “ten years or to a fine not exceeding £200,000” and substitute “five years or to a fine not exceeding £100,000”.

Resulting from acceptance of my amendment No. 6, I propose to reduce the penalties provided for in section 90 (4) (b) from ten years to five years and from £200,000 to £100,000. Deputies Byrne and Crawford asked me to review the level of penalties provided for in this subsection.

The new provisions on seizure I have introduced today allow the court to order counterfeit goods, material or articles, to be delivered up, destroyed, forfeited or otherwise as it thinks fit. This will entail a severe financial penalty in direct proportion to the scale of the counterfeiting involved. Given the sanctions now provided under the seizure provision in amendment No. 6, the penalties in this subsection need not be as severe.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe We had much discussion on this matter on Committee Stage when, to be fair, Deputy Byrne was confused between criminal law and business law. It goes without saying that greater irregularities and fraudulent methods can arise in the later case than in criminal law. In the course of our Committee Stage discussions great play was made of the penalties being imposed in section 90. I note that the Minister has halved the penalties to be imposed whenever a person is found guilty on indictment under this section.

I urge the Minister to withdraw his amendment in favour of mine. Bearing in mind that £200,000 in business is a small amount of money such a penalty is merited. It is a pity we became so confused between criminal and business law.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell Yet again I find [671] myself in agreement with Deputy Ned O'Keeffe on this matter. In reducing the maximum penalty the Minister fails to have regard to the fact that the maximum penalty for many offences has nothing to do with what a court will apply in most cases. The maximum penalty is what a court can impose in a very serious case involving a repeat offender. For instance, the maximum penalty for many offences under the Larceny Act is ten years. Very few are ever meted out that sentence, yet there are certain people for whom it would be appropriate. Under the Minister's amendment a penalty of five years is being provided. There should be a power of arrest for members of the Garda Síochána because, as the Bill now stands, somebody who is caught in flagrante delicto can skip the jurisdiction since there is no power of arrest. For example, whenever somebody is caught in circumstances in which it is likely they will flee the jurisdiction, say, somebody engaging in a counterfeiting operation in a Border region or something of that nature, there should be a power of arrest. If there were a power of arrest, section 4 of the Criminal Justice Act, 1984 would come into effect and there would be a power of detention for the purpose of questioning. That should be available here and it is a mistake not to provide it. If a garda comes across a group of people standing around in a factory producing a load of cut glass, with Waterford boxes beside them, and they give their names and addresses to the garda, the garda has to walk away while they walk out the back door of the factory, out of the jurisdiction. It makes a mockery of our law. There should be power of arrest to ensure that cannot occur. Subsection (5) — contained in Deputy O'Keeffe's amendment — should be inserted in the Seanad to prevent people literally walking away from the scene of a crime, never to be heard of again.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe We have found the [672] Minister very amenable in our discussions with him on this type of legislation. Since these amendments were not tabled lightly by me but rather on the advice available I hope he can see his way to accepting them. Am I correct in saying that the Minister's amendment proposes halving the penalties specified in mine?

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte Yes.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe Whenever a person is convicted, on indictment, of a second or subsequent offence, those large quantities of counterfeit goods should be forfeited. The criminals of the counterfeiting world, in which there is much activity, are different from the criminals to whom Deputy Byrne referred. It is my belief that activities in the counterfeiting world are increasing to the extent that we must examine it overall, particularly in the interests of those who engage in legitimate business.

My amendment No. 18 proposes the insertion of an additional subsection. As drafted, section 90 specifies that where a person is found in possession of counterfeit goods, he is not deemed to have committed an offence in respect of each particular article or material. Therefore, it is not possible to issue a summons or to charge a person in respect of each and every individual counterfeit article or material or even in respect of each and every trade mark infringed. If thousands of counterfeit items are found in a warehouse, there may be only one summons issued in respect of all those items. While the Minister may not consider it feasible to issue a summons in respect of each item, at least there should be a provision whereby a summons can be issued for each trade mark infringed. If a warehouse is found to contain counterfeits of several different brands, a summons should be issued in respect of each brand so that each individual mark is protected.

The same would apply in the case of a casual trading stall. If a trader is found to be in possession of, say, 1,000 [673] counterfeit goods or material, he is not deemed to have committed 1,000 offences under the Bill. In practice, only one summons will be issued.

I urge the Minister to accept my amendment, thereby ensuring that a summons is issued in respect of each mark applicable to goods or material referred to in section 90 (1) and (2).

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte It appears that neither Deputy O'Keeffe nor Deputy Michael McDowell acknowledges the extent of the powers included in my amendment No. 6. These are quite extensive and have been designed to get after the big operator, the origin of the problem, rather than whoever may be engaged in offering the product of that operation for sale in a small way.

I cannot recall Deputy Michael McDowell's point about powers of arrest or the danger of someone skipping the jurisdiction having been raised on Second or Committee Stage.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell That was my fault. It was not raised.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte It may well have been considered by my officials but, truthfully, I can say it has not been considered by me and I will examine the matter in the course of my preparations for our Seanad discussions.

In amendment No. 18, Deputy Ned O'Keeffe proposes that where different marks are infringed, six separate offences are committed. This approach is flawed as it would result in a retailer being fined six times the amount which a wholesaler dealing in much larger quantities of a single mark would face. The search and seizure powers being given to the Garda Síochána will facilitate trade mark proprietors in combating larger scale counterfeiting operations. Such operations may concentrate on a single brand — an example given on Committee Stage was that of a counterfeiter who might label, glass with a well known brand lable, costing the owners of the trade mark millions of [674] pounds in lost sales. Contrast this with the market stallholder who peddles cheap clothing with six labels which are not genuine; the buyers of such garments will be less inclined to think the goods are genuine and the seller will make an illegal gain on the sale of those goods. However, the profiteering of the racketeer in counterfeit glass will be far more than that of the stall holder but the Deputy's amendment will provide a potential penalty for the stall holder six times higher than the potential penalty for the glass racketeer.

In a nutshell, and leaving out the question of the possibility of skipping the jurisdiction amendment No. 6 goes a long way towards stamping out this activity.

Amendment put and declared carried.

Amendment reported.

Amendments Nos. 17 and 18 not moved.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe I move amendment No. 19:

In page 47, between lines 12 and 13, to insert the following:

“(6) (a) If a member of the Garda Síochána or a customs officer or such other person as may be empowered by law has reasonable grounds to believe that a person has committed an offence under subsection (1) or (2) of this section and is in possession of goods, materials or articles which infringe a registered Trade Mark and any goods, materials or articles used in connection with the creation, printing, production, manufacture, sale or supply of infringing goods, materials or articles or capable of being so used the member of the Garda Síochána or the customs officer or such other person as may be empowered by law may seize such goods, materials or articles.

(b) All goods, materials or [675] articles which infringe a registered Trade Mark and any goods, materials or articles used in connection with the creation, printing, production, manufacture, sale or supply of infringing goods, materials or articles which come into the possession of or are seized by a member of the Garda Síochána, a customs officer or such other person as may be empowered by law, must be brought before either the District Court or the Circuit Court and if the court is reasonably satisfied that such goods, materials or articles are infringing a registered Trade Mark under this Act or if reasonably satisfied that such goods, materials or articles are, were or could be used in connection with the creation, printing, production, manufacture, sale or supply of infringing goods, materials or articles they shall be destroyed or delivered up to the owner of the registered Trade Mark in question or otherwise dealt with as the court thinks fit.”.

Amendment put and declared lost.

NEW SECTION.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I move amendment No. 20:

In page 49, after line 49, to insert the following:

“101. —Stamp duty shall not be chargeable on any instrument relating to the assignment or other transmission of a Trade Mark either registered, un-registered or the subject of an application for registration and regardless of whether such assignment or transmission is in connection with the goodwill of a business or separately.”.

As the House will be aware, instruments relating to the assignment or other transmission of a trade mark are not [676] subject to stamp duty in the United Kingdom and that should also be incorporated in Irish Statute. Will the Minister take into account the good reasons that stamp duty should not be payable on instruments of assignment or transmission of trade marks which are in respect of either Irish marks or foreign marks executed in this country? An instrument purporting to transfer a trade mark or other property is chargeable to stamp duty in the following circumstances: (1) if it is executed in the State; (2) if it relates wherever it is executed to property situated in the State; or (3) it relates to any matter or thing to be done in the State. This is all provided for in the relatively recent restatement of the law relating to stamp duties in section 94 of the Finance Act, 1991.

The most immediate difficulty will arise in relation to the proposed Community trade marks and international registrations under the Madrid Protocol designating Ireland. Such trade marks will not be properly situated in the State and so will only be chargeable to duty under grounds (1) or (3), that it was executed in the State or related to anything to be done in the State. Accordingly, a French company transferring its Community trade mark agency to an Italian company by instrument executed in Paris necessitates the French company paying Irish stamp duty within 30 days of such execution, otherwise the document will be unenforceable in Ireland and the company would be liable to severe penalties in certain circumstances. A Community trade mark is unitary in its character and by definition covers the entire Community. Stamp duty provisions such as those in Ireland would require anyone transferring a Community trade mark to take legal and tax advice in relation to all 15 member states, which is an absurd notion and defeats the purpose of a Community trade mark and the Single Market.

Section 61 of the UK Trade Mark Act provides that stamp duty shall not be chargeable on an instrument relating to [677] a Community trade mark or international trade mark or on an application for any such mark by reason only of the fact that such a mark has legal effect in the United Kingdom. It would appear the effect of that provision is that it negates the third ground that it relates to any matter or thing to be done in the relevant jurisdiction. It appears that it is a general policy in the United Kingdom to remove stamp duty from the financial sector.

It is obvious that we could have a measure which restricts the rule against stamp duty to Community or international trade marks. There is a clear problem for us arising from the present state of affairs, that if the provision is not adopted persons conducting business in the State would be at an unfair disadvantage with respect to their colleagues elsewhere in the European Union. Since the Community trade mark is part of a harmonisation measure designed to give further effect to the Single Market throughout the European Union, currency stamp duty provisions in this country, unless changed, will give rise to a distortion of the Single Market in breach of the State's obligation as a member of the European Union. Not only are Irish businesses affected, it can effect trade between companies situated in other member states. I believe the Irish Legislature should match the English Legislature and should go further to the extent set out in amendment No. 20.

One of the other by-products of the present law is that activities will take place in relation to trade marks outside this jurisdiction rather than inside it and that will involve retention by trade mark proprietors and proposed assignees of trade mark agents other than Irish trade mark agents to do some of this work for them. I strongly suggest that the national interest lies in excluding all these documents from stamp duty. Working out the value of a trade mark can be very difficult. If the stamp duty branch of the Revenue Commissioners is confronted with a purported assignment of a “Waterford” or “Coca Cola”[678] trade mark for £1,000 or £10,000 how are they to work out the real value of the instrument? It is almost impossible to work out the value of such a trade mark. In a recent High Court case involving infringement, the High Court judge ruled that for compensation purposes the value of the trade mark was the cost of registering it. This will create a situation where Irish trade mark agents carrying on their business have to deal with another nuisance, more bureaucracy. This will not generate large sums for the Exchequer. If large sums were involved the relevant assignments would take place outside the jurisdiction and people would probably take the risk of avoiding any duty here. One is dealing with intangible things whose value is difficult to ascertain.

The Minister indicated this was not a matter for his Department but it is a matter for the department in England which sponsored the trade mark Bill there. They provided in their Bill, on which this Bill is closely modelled, that stamp duty would not be payable. It is about time we took a pro-enterprise, practical, realistic approach to making sure that, in so far as possible, assignments of trade marks take place within this jurisdiction. That brings in money to Irish trade mark agents and income to the country and does not send it abroad artificially. This generates profits, VAT, employment and corporation tax.

For all those reasons the State should match the UK in respect of Community trade marks and international marks and deal with all assignments of trade marks. Putting stamp duty on them is a waste of time and is not a significant earner from the point of view of the Exchequer. While I am all in favour of broadening the tax base, we could impose stamp duty on a number of things if we wished, for example, on hotel receipts — as some European countries do. There is much to be said for being practical and trying to make Irish trade mark law modern, efficient, pro-enterprise and pro-employment and for giving trade mark agents, and [679] Ireland as a commercial base, exactly the same advantages as other parliaments within the European Union are giving their countries.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe I support everything that has been said by Deputy McDowell. On Committee Stage we had a long discussion on stamp duty on which I tabled an amendment. I do not want to repeat what I said on that occasion because it is already on the record. It is very difficult to value a trade mark. The high level of stamp duty imposed will prohibit people from registering here. Much lower rates of stamp duty can be found in other European Union countries such as Spain. The registration head office is in Alicante. It will be more attractive to register in countries where the rates are lower. This takes work away from our trade marks people and those involved in the legal and registering sides.

It is important to create a pro-enterprise society rather than to adopt a negative approach. One of our problems is that we are not a pro-enterprise economy because of a number of obstacles that have been put in the way. Some mechanism should be put in place for the purpose of valuing a trade mark and assessing the stamp duty thereon. When the stamp duty value is put on it, it is unattractive to register here. People will go to the countries to which I have referred, especially Spain, which has a much lower rate than ours.

I found it impossible to extract from the Minister for Finance, through the Revenue Commissioners, the amount of money paid in stamp duty on trade marks. I do not know whether the amount is small or great. Much effort must be put in by the Department of Finance and the Revenue Commissioners in compiling the register and chasing those who register for moneys. I urge the Minister to consider a standard low rate of stamp duty which would encourage registration here from countries within the European Union.

[680]Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I am open to being corrected but I do not know that Deputy McDowell's assertion that no stamp duty is payable in the United Kingdom is correct. My understanding is that stamp duty is still payable, but my information may well be out of date. The guide prepared to the UK Trade Marks Act, 1994, may be out of date but the section on stamp duty states:

For the time being it continues to be necessary to pay stamp duty on assignment documents. No change is made by the new Act in this respect though documents relating solely to Community trade marks or to the Madrid Protocol International Registrations or to applications for them are exempted from stamp duty by section 61 of the Act. It is anticipated that stamp duty will be abolished for intellectual property assignments in the near future, as part of a general removal of stamp duty in the financial sector. In the meantime documents on which duty is payable should be presented for stamping within one month of execution or of receipt in this country, if executed abroad.

Deputy McDowell and Deputy O'Keeffe are essentially making the argument that this is a bureaucratic obstruction. If we go down the road, as in Britain, where it is envisaged that stamp duty will be abolished for intellectual property assignments and there will be a general removal of stamp duty in the financial sector, it seems to me — I am not speaking for the Minister for Finance — that that has revenue raising implications. It would have to be seriously considered what impediment in a measurable way is constituted by the fact that stamp duty is payable here on the assignment of trade marks. That would have to be measured in a practical way in the light of the potential loss.

I repeat the point I made on Committee Stage that this is a matter for the Minister for Finance, not for me. The concerns expressed by the profession, which both Deputies have repeated, centre on the treatment of Community [681] trade marks and international trade marks under the Madrid Protocol. I note the points that have been made. I wish to inform Deputy McDowell that officials in my Department facilitated a meeting between the Association of Patent and Trade Mark Agents and the Department of Finance on 22 February. At this meeting the association sought clarification on the liability to stamp duty on transfers of ownership of such trade marks. The Department of Finance is considering the case put by the association and the matter rests there.

In regard to whether the structural arrangements in place in the UK should apply here, or whether my Department, as distinct from the Department of Finance, should be responsible for this issue, I understand Deputy McDowell is saying that regardless of whether we are responsible technically we should make an input in terms of the implications for enterprise. I take that point. We have facilitated this meeting with the Department of Finance. The association has had an opportunity to make its case. My understanding is that the Department of Finance will consider it sympathetically and for that reason I am not accepting the amendment.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I will table an amendment to the Finance Bill and I will not press this amendment now. However, I would ask that the Minister's Department make supportive noises in relation to the Finance Bill so that this measure can become part of our financial law.

Amendment, by leave, withdrawn.

Acting Chairman (Mr. Kirk): Information on Seamus Kirk Zoom on Seamus Kirk Recommittal is necessary in respect of amendments Nos. 21 and 22 as they do not arise out of Committee Stage proceedings. Amendment No. 22 is consequential on amendment No. 21. I suggest, therefore, that amendments Nos. 21 and 22 be taken together by agreement. Agreed.

Bill recommitted in respect of amendments nos. 21 and 22.

[682]Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 21:

In page 59, lines 7 to 9, to delete all words from and including “section 33” in line 7 down to and including line 9 and substitute “any application for registration after commencement shall be made under section 27.”.

The purpose of these amendments is no more than to correct typographical errors in paragraph 6. Some dissatisfaction remained about the clarity of the text. Amendment No. 21 improves the text by making clear in subparagraph (4) that applications to register a title, where the acquisition of a right to that title predated commencement, shall be made under section 27 of the new Act.

Amendment No. 22 covers subparagraph (5) and deletes a reference to subparagraph (4) which is not now necessary.

Amendment agreed to.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 22:

In page 59, line 11, to delete “or (4)”.

Amendment agreed to.

Amendments 21 and 22 reported.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 23:

In page 60, line 7, after “accordance” to insert “with”.

This is a drafting amendment. It covers the second textual error identified by the Bills Office following Committee Stage. The addition of the word “with” after the words “in accordance” is necessary.

Amendment agreed to.

Bill recommitted in respect of amendment No. 24.

[683]Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I move amendment No. 24:

In page 60, lines 13 and 14, to delete “as if made immediately after commencement” and substitute “as if it were made at commencement and as if the date of filing were the date of commencement”.

In subparagraph (4) the treatment of an application shall be the same as under paragraph (15) of the Third Schedule. The amendment proposes to align the text of subparagraph 9 (4) with the corresponding wording of subparagraph 15 (1).

Amendment agreed to.

Amendment reported.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I move amendment No. 25:

In page 61, to delete lines 2 to 5 and substitute the following:

“13. For the purposes of proceedings under section 50 (grounds for invalidity of registration) as it applies in relation to an existing registered mark, the provisions of this Act shall be deemed to have been in force at all material times:

Provided that no objection to the validity of the registration of an existing registered mark may be taken on the grounds specified in subsection (3) of section 10 of this Act (relative grounds for refusal of registration: conflict with earlier mark registered for different goods or services).”.

The purpose of the amendment is to alter the transitional provisions of the Bill so that it will apply to existing registered trade marks on the basis that the new Act shall be deemed always to have been in force for one purpose, the grounds for invalidity of registration. I will not make a song and dance about it, but the Minister has a straightforward choice. He can opt to allow the grounds for invalidity in the 1963 Act to govern [684] trade marks indefinitely or he can decide that the grounds on which invalidity may be argued will be as set out in the new Bill and will apply to all trade marks as if the Bill had always applied to them.

I understand there has been some talk about constitutional property rights in this regard. However, the Constitution does not state that one's property rights cannot be changed against one's wishes. It guarantees that property rights, in common with citizens' other rights, should be protected from unjust attack. There is a good and valid reason for changing the grounds of invalidity retrospectively and this is to have one code applying to all such cases from now on and not to have people indefinitely considering the applicability of the 1963 Act. There are good reasons for introducing uniformity in terms of the grounds for invalidity of registration and to apply the new rules.

It might be that a person will be prejudiced, but so what? Trade mark rights are not incapable of being altered by Statute. There is no constitutional law which states, when one has acquired a property right under the Trade Marks Act, that the right cannot be qualified, varied, reduced, affected or prejudiced if the State considers it has a good reason to do so. There is every good reason to introduce a single law of invalidity in respect of existing and future marks. They should all be decided by reference to the same canons of validity.

The association argued this point strongly with the Minister's office and counter arguments have been addressed to it based on alleged similarities between what is contained in the Bill and what is in the Patents Act. However, there are different grounds for approaching different matters. Trade marks continue in perpetuity, provided they are renewed, while patents do not. They are a one off property right which eventually dies. The argument based on paragraph (12) of the Schedule to the Patents Act is not coercive.

If the existing paragraph (13) was [685] retained, one must ask what validity means. Is it intended to relate only to matters which would be a ground for invalidity under section 50 of the Bill, but not to matters which could provide a ground for revocation under section 49? I strongly urge that the old Act should cease to have effect. The intelligent thing to do is to accept the amendment.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte The question at issue is what should be the basis on which the validity of registered marks can be challenged after the commencement of the new legislation. “Existing registered marks” is the expression used in the Bill to refer to those marks which are already registered on commencement and which will be deemed to be transferred to the register. This is established by the provisions of section 64 of the Bill. Paragraph (13) of the Third Schedule to the Bill provides that, in the case of these marks, the validity of their registration could only be challenged on the basis of the old law, the law applying immediately before commencement.

Deputy McDowell's amendment proposes instead that a challenge to the validity of such a mark would, with one exception, be based on the grounds set out in section 50 of the Bill. This section sets up a mechanism for having a trade mark registration declared invalid and specified the grounds on which this can be done. I accept there are certain attractions in the proposal put forward in the amendment. For example, on administrative grounds, it is obviously a more attractive proposition that any future challenge to the validity of a trade mark registration should be on the basis of the new legislation. The scenario where some of the marks could be challenged under one law while others could only be challenged under a different law is not desirable. In addition, it is my wish that, as far as possible, the 1963 Act would cease to operate on the commencement of the new Act.

Paragraph (13) of the Third Schedule, as it stands, will have the effect of continuing certain provisions of the Act in [686] force for the foreseeable future. Nonetheless, on the basis of the advice available to me from the Office of the Attorney General, the course proposed in the current text of paragraph (13) is proper. The issue revolves around the question of the rights which are conferred on a trade mark owner when his mark is registered. There are personal property rights and any provision which could be regarded as an attack on these rights would be open to constitutional challenge.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell An unjust attack.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte Existing registered marks are currently afforded under certain rights and protections. If we are now to provide that these registrations may be challenged on what may be regarded as a completely new set of grounds, and in doing so making them more vulnerable to challenge, there is a danger that we may be diminishing the rights of the owners of those marks.

The amendment acknowledges the potential danger which exists. In the proviso, it proposes to exclude section 10 (3) from the grounds on which a challenge could be mounted under section 50. If section 10 (3) had not been excluded, section 50 would have widended considerably the scope for challenge to an existing trade mark. As a further example of the dangers, I mention the provisions of section 21 of the 1963 Act. Under that section, the validity of a mark registered in Part A of the register is generally incontestable after a period of seven years. There is no corresponding provision in the Bill and so an existing Part A registration would lose the protection of section 21 if its validity could now be challenged on the grounds set out in section 50.

The vast majority of existing registrations are in Part A of the register. Uncertainty surrounds the extent to which a provision, as proposed in the amendment, would in one way or another diminish the protection given to a mark owner by existing law and, for that reason, it leaves the provision open [687] to challenge. For these reasons, I am advised the safest course to adopt is to allow the current paragraph (13) to stand. I cannot accept the amendment for the reasons outlined. I will examine the matter again before the Bill is taken in the Seanad as it is a complicated issue.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell Will the Minister reconsider the matter and ask the Attorney General to again examine it before the Bill is taken in the Seanad?

Amendment, by leave, withdrawn.

Mr. M. McDowell: Information on Michael McDowell Zoom on Michael McDowell I move amendment No. 26:

In page 61, after line 26, to insert the following:

“16. Section 38 of this Act (claim to priority of Convention application) applies to an application for registration under the Act made or deemed to be made at or after commencement notwithstanding that the Convention application was made before commencement; provided that an application in respect of a trade mark which would not have complied with the definition of a ‘trade mark’ in section 2 of the Act of 1963, shall not be accorded a date for the purposes of section 38 (2) earlier than the date of commencement.”.

There is a failure in current transitional provisions to deal with the issue of convention priority. Under the Paris Convention, to which most countries, including Ireland, adhere, an application for registration may claim the date of a foreign application as the date from which to claim rights in Ireland, provided the Irish application is filed within six months of the first application abroad.

However, such a right should not be allowed if it results in rights arising prior [688] to the new law and in circumstances where those rights do not exist under the new law. For example, under paragraph (15) of the transitional provisions, all applications in respect of service marks made before commencement are to have effect as if the date of filing were the date of the commencement of the new law. Without the amendment, all service mark applications will not be treated equally. A foreign applicant who had the good fortune to claim priority within six months of the commencement date will have rights earlier than applicants who had the misfortune to file in 1993, 1994 and 1995. It also prejudices Irish industry because such a priority claim could not be possible. The proposal is the same as what was done in the UK when service marks were introduced in 1984. The purpose is to make provision for convention priority.

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I have a certain amount of sympathy for the argument but other factors must be taken into account in formulating our approach to this matter. In the first place, the right of a trade mark owner to claim the priority of an earlier application in another jurisdiction is an important principle in the registration of trade marks internationally. It arises from the provision of the Paris Convention and is designed to allow a trade mark owner who has applied to register his mark in one jurisdiction to prevent a competitor who may seek to pre-empt him in another jurisdiction by filing for registration of a similar mark. I am not convinced it would be appropriate to depart from this principle in the cases to which the amendment relates.

Second, I point to the Community trade mark regime, due to come into operation from 1 April 1996. The filing of applications for Community trade marks has been permitted since 1 January 1996. The Deputy will be aware that all applications filed before 1 April will receive a filing date of 1 April. Thus, the situation on that date with regard to the Community trade marks will be similar to that in Ireland on the [689] commencement of the new Act. There will be several thousand applications, all with the same filing date. I will take the opportunity of the Seanad debate to outline a more detailed response to the amendment which, regrettably, I cannot accept.

Amendment, by leave, withdrawn.

Question proposed: “That the Bill as amended do now pass.”

Mr. Rabbitte: Information on Pat Rabbitte Zoom on Pat Rabbitte I thank Deputies O'Keeffe and McDowell for their work and co-operation. In particular, I acknowledge Deputy McDowell's role in the genesis of the Bill.

Mr. E. O'Keeffe: Information on Ned O'Keeffe Zoom on Ned O'Keeffe I thank the Minister for his co-operation and help. However, I am disappointed he did not accept my amendments. Section 19 is an important part of the Bill in countering the huge problem of counterfeiting. Huge profits are being made by criminals at the expense of Irish companies which provide legitimate employment in the manufacture of clothing and other products under licence for particular brands. We should be seen to provide every protection to companies under threat from counterfeiting and we must do everything in our power to combat it. As pointed out previously, there is no difference between this type of crime and stealing directly from a company. It should be stamped out completely to ensure that legitimate traders, who are trying to provide jobs for Irish people, are not affected by this trade on the black market. I ask the Minister to reconsider this huge area which is open to exploitation in the future.

Question put and agreed to.

[690]Sitting suspended at 1.35 p.m. and resumed at 2.30 p.m.


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