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§ Mr. Stephen Dorrell (Loughborough)I beg to move amendment No. 1, in page 3, line 42, leave out from beginning to first 'in' in line 3 on page 4 and insert
', for paragraphs (a) and (b) there shall be substituted the following paragraphs—(a) in relation to services to which the proprietor of the mark or a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark; or(b) in relation to services the provision of which is connected in the course of business with the proprietor or a registered user of the mark, where the proprietor or registered user has at any time expressly or impliedly consented to the use of the mark; or(c).'.
§ Mr. Deputy Speaker (Mr. Harold Walker)With this it will be convenient to discuss amendment No. 2, in page 4, line 14, leave out from 'services.";' to end of line 28
§ Mr. DorrellThe Amendment Paper is peppered with a series of drafting amendments. None of them is of particular moment, the most substantial being amendment No. 1, standing in my name. The House is perhaps owed an explanation of how a relatively simple Bill should come before the House on Report with such a large slate of drafting amendments. Those hon. Members who have followed each stage of the Bill will be aware that it was completely redrafted in Committee. I shall seek on Third Reading to explain the reasons for that.
I am indebted to my hon. Friend the Member for Wolverhampton, South-West (Mr. Budgen) and others for tabling a motion which, apparently against the interests of the Bill's sponsors, will provide the House with the opportunity to conduct a full debate on the Bill's principles on the Floor of the House. It would perhaps be right for me to deal with the details of how we arrive at this stage on Third Reading.
This amendment relates to schedule 1, which amends the provisions of the Trade Marks Act 1938, to allow the provisions of that Act to apply to service marks.
Section 4 of the Trade Marks Act 1938 deals with the right given by the registration of a trade mark. Schedule 1 of my Bill deals with registration of service marks. Section 4(3) of the Trade Marks Act 1938 applies to cases where no infringement arises as the result of the use of a trade mark. Schedule 1 of my Bill applies to the use of service marks. The purpose of amendment No. 1 is to rewrite the conditions under which no infringement arises as a result of the use of a service mark. My Bill tackles that problem by rewriting section 4(3) of the principal Act.
The parliamentary draftsman has reconsidered how we can best define the conditions in which no infringement arises and has come up with the alternative formulation which appeals to me because of its simplicity. Amendment No. 1 restates the conditions in which no infringement arises by saying that an infringement does not arise where 565 the person using the service mark is either the proprietor or registered user of that mark or has consent to the use from the proprietor or the registered user. It is a much simpler formulation of the object of that part of the schedule.
Amendment No. 2 is consequential on amendment No. 1. I commend both amendments to the House.
§ Mr. Peter Bottomley (Eltham)Although my hon. Friend the Member for Loughborough (Mr. Dorrell) has promised a full explanation on Third Reading, I should be grateful if he would consider whether he should describe the significant difference between trade and service marks. If he has the leave of the House, he could perhaps explain that in relation to this amendment because it is germane to the Bill and our understanding of the further amendments. I hope that he will be prepared to do that, because undoubtedly some hon. Members are not fully in the picture as to the effect of the amendment and the distinction on which I have sought his guidance.
§ Mr. DorrellBy leave of the House, Mr. Deputy Speaker——
§ Mr. Deputy SpeakerOrder. The hon. Member does not need the leave of the House if he is replying to the debate.
§ Mr. DorrellThe simplest definition of the difference between a service and a trade mark requires an examination to some extent of the history of how we reached the present state of legislation. The House will be aware that any producer of goods has the right to register the trade mark under which he intends to sell those goods so that he can promote the name and apply it to the quality of the goods. It is a well-established principle of manufacturing that, if one makes something and wants to promote it in the market place, a trade mark should be attached to it. It is an attempt to support the sales effort for that product.
Similar protection has never existed for the service industries. The object of the Bill is to provide service industries with the same protection that has been available for many years to the producers of goods, who derive that protection from the common law which reaches back into the 18th century. The matter was first codified in statute during the last century and the principal legislation that the Bill sets out to amend is the codifying Act of 1938.
At common law and in the various stages of the evolution of statute law, there has been no protection for trade marks as applied to the provision of services as distinct from the provision of goods.
Section 4 of the Trade Marks Act 1938, which is amended in respect of service marks, deals wih the conditions in which the use of a trade mark is or is not an infringement of the rights of the proprietor of a registered trade mark. It is fundamental to the existence of a trade or service mark that one must be able to protect it, and the circumstances in which the use is protected must be clearly defined.
Section 4 of the principal legislation defines when a trade mark can be used and protects the rights of the person who has paid to register the trade mark and who has almost certainly paid to promote it, and defines how he can defend the right to use what is his investment.
§ Amendment agreed to.
566§ Amendment made: No. 2, in page 4, line 14 leave out from `services.';' to end of line 28.—[Mr. Dorrell]
§ Mr. DorrellI beg to move amendment No. 3, in page 4, line 46, at end insert—
§ Section 8
§ 4A. In section 8(b) (registration not to restrict use of descriptions of character or quality of goods) the words from "or in" to "thirty-seven" shall be omitted.'.
§ All of the remaining amendments on the Amendment Paper are simple and most of them are consequential on drafting problems that have arisen as a result of amendments made in Committee.
§ Amendment No. 3 reflects the fact that section 37 of the Trade Marks Act 1938 has been deleted by schedule 1 in respect of service marks, but nevertheless reference is still made to section 37 in the schedule. Clearly, it is nonsense for the Bill to refer to a section of the principal legislation which another section of the Bill has deleted.
§ I commend this tidying-up amendment to the House. It eliminates a reference to a part of the Act which, as the result of another part of the Bill, will not apply to service marks.
§ Amendment agreed to.
§ Mr. DorrellI beg to move amendment No. 4, in page 5, line 24, after 'goods', insert
'or a description of goods'.
§ Mr. Deputy SpeakerWith this it will be convenient to take the following amendments: No. 7, in page 7 line 33, after 'goods', insert
'or descriptions of services and goods'.
§ No. 8, in page 8, line 29 after 'with', insert 'those services or'.
§
No. 11, in schedule 2, page 11, line 18, after 'services', insert
'or a description of services'.
§
No. 12, in page 11, line 25, after 'services', insert
'or descriptions of goods and services'.
§
No. 13, in page 11, line 32 after 'services', insert
'or description of goods and services'.
§
No. 14, in page 12, line 9, after 'services', insert
'or descriptions of goods and services'.
§ Mr. DorrellAs I have said, the Bill establishes a statutory framework for the protection of service marks. To understand the problem which lies behind every one of the amendments it is necessary for me to detain the House to explain the statutory method by which the principal objective of the Bill is to be achieved.
When the Bill was originally proposed to the House, the intention was to extend to service marks the protection that has always been available to trade marks. The original draft set about seeking to achieve that objective by removing completely the distinction between a trade mark and a service mark.
When the House accepted the principle of extending protection to service marks on Second Reading, the Bill was referred to the parliamentary draftsman so that he could examine in detail its technical provisions. He started by considering ways in which he could tidy up the inadequacies of the original drafting so that there was no distinction between the concept of a trade mark and a service mark. The further he progressed in that effort the more convinced he became that that was an impractical way of trying to achieve the result desired by the House. He therefore redrafted the schedules to achieve the same result by another means. Instead of removing the 567 distinction between trade marks and service marks, he set out instead to establish a parallel system for the registration of service marks alongside the registration of trade marks. The purpose of the amendments is to deal with some of the technical drafting problems which arose as a result of that approach. If there are two parallel systems, it is essential that there is a proper cross-over between the two systems. It is essential that the owner of a service mark should be able to protect his rights against owners or would be owners of trade marks. Similarly, it is essential that owners of trade marks should be able to defend their rights against owners or would-be owners of service marks.
The principle by which the parliamentary draftsman set to achieve this objective was by establishing parallel systems with proper cross-over defences at each and every point in the two systems. When he came to reconsider the draft which was accepted in Committee that established the principle, he discovered that the cross-overs were not properly achieved at the points defined in the amendments. he therefore suggested to me, and I am suggesting to the House, that the principle accepted in Committee should be perfected by the introduction of the amendments, which complete the link between goods and services in the operation of the Bill.
§ Amendment agreed to.
10.15 am§ Mr. DorrellI beg to move amendment No. 5, in page 6, line 27, leave out `(i)'.
§ Mr. Deputy SpeakerWith this it will be convenient to take amendment No. 6.
§ Mr. DorrellAmendment No. 5 is consequential to an amendment that was made in Committee. Amendment No. 6 reflects the fact that the proviso in subsection (1) of the relevant section no longer contains separate paragraphs in (a) and (b). Both amendments are drafting amendments and consequential to amendments tabled in Committee.
§ Amendment agreed to.
§
Amendment made: No. 6, in page 6, line 29, at end insert 'and the words
paragraph (a) of" and the words after "established" shall be omitted'.—[Mr. Dorrell.]
§
Amendments made: No. 7, in page 7, line 33, after `goods', insert
`or descriptions of services and goods'.
§
No. 8, in page 8, line 29, after 'with', insert
`those services or'.—[Mr. Dorrell.]
§ Mr. DorrellI beg to move amendment No. 9, in page 8, line 32, leave out -on application"' and insert
`the end of paragraph (b)'.The purpose of the amendment is to correct the interposed modifications to schedule 1. It is a drafting amendment that deals with the technical inadequacies in the draft accepted in Committee. Many of the amendments are to that effect. The amendments reflect the result of the hurried drafting that was necessary to get them ready for the Bill's consideration in Committee.
§ Amendment agreed to.