HL Deb 14 April 1986 vol 473 cc477-92

7.6 p.m.

Lord Lucas of Chilworth

My Lords, I beg to move that the House do now resolve itself into Committee on this Bill.

Moved, That the House do now resolve itself into Committee.—(Lord Lucas of Chilworth.)

On Question, Motion agreed to.

House in Committee accordingly.

[The LORD HAYTER in the Chair.]

The Deputy Chairman of Committees (Lord Hayter)

I must announce that the published Marshalled List of Amendments has not been printed in accordance with the instruction of 6th March. Accordingly, photocopies of the correct list have been placed in the Printed Paper Office. But to avoid confusion the original numbering of the amendments has been retained in the Marshalled List which we shall consider.

Clause 1 agreed to.

Schedule 1 [Computerisation]:

Lord Lloyd of Kilgerran moved Amendment No. 4: Page 4, line 11, leave out ("names, addresses and descriptions") and insert ("names and addresses").

The noble Lord said: This is a small but important amendment which will save a lot of time for practitioners and industrialists concerned with trade marks. The schedule is concerned with computerisation. The main object is to enable the registrar, the Comptroller-General of Patents, Designs and Trade Marks, to keep a register other than in documentary form. Therefore he can use a computer and those associated arrangements in information technology.

Hitherto it has always been the practice that anybody who applies for a trade mark should give his name and address and description. That has raised a number of difficulties. I shall not weary your Lordships with the difficulties. It seemed to me that "descriptions" could be omitted. Therefore, all that is necessary now is for an applicant to give his name and address. That will save a certain amount of time, expense and secretarial work generally. I beg to move.

Lord Lucas of Chilworth

I am most obliged to the noble Lord, Lord Lloyd of Kilgerran, for explaining the purpose of his Amendment No. 4. I think that I am right in saying that he was at the same time speaking to Amendment No. 5. His explanation is eminently satisfactory. We have no hesitation in accepting both these amendments, and thank the noble Lord for putting them forward.

Lord Lloyd of Kilgerran

I am very much obliged to the noble Lord the Minister. I omitted to ask the leave of the Committee to speak also to Amendment No. 5, which raises exactly the same point in a different circumstance.

On Question, amendment agreed to.

Lord Lloyd of Kilgerran moved Amendment No. 5: Page 4, line 14, leave out ("names, addresses and descriptions") and insert ("names and addresses").

On Question, amendment agreed to.

Lord Lloyd of Kilgerran moved Amendment No. 6:

Page 4, line 21, at end insert— ("( ) A computer containing the register shall be maintained at the premises of the Company of Cutlers in Hallamshire, Sheffield.").

The noble Lord said: The amendment draws attention to the fact that the Company of Cutlers has for over 360 years been concerned with very valuable marks in the steel and associated industries, known as Sheffield marks. "Sheffield" is a registered trade mark and it is the only town whose name is registered as a trade mark in this country. This is not the place to deplore any action that the Government propose to take in future in regard to the arrangements for dealing with Sheffield marks under the care of the Company of Cutlers in Hallamshire as it has been going on for so many centuries. However, I wish to suggest that in the circumstances a computer containing the register should be maintained at the premises of the Company of Cutlers in Hallamshire.

No doubt the Government will be dealing in a later Bill with the question of the methods of administering marks under the Company of Cutlers' regime. They will be considering installing computers, and various nationwide terminals will be searched to give facilities in this regard and will be under consideration by the Government. Quite clearly Sheffield is geographically and historically an ideal position for setting up at least one computer containing the register.

It has been the function of the Company of Cutlers to look after these trade marks and to receive the applications. However, that is not the point with which we are concerned at present. We are concerned with whether or not the Government will give some consideration to the installation of a control computer containing the register in Sheffield. Unemployment is very high in that area and to remove that function from the Company of Cutlers will, I am advised, cause quite unnecessarily a loss of jobs in that area. However, the installation of a computer in Sheffield would be from a geographical and a historical point of view a good idea. I beg to move.

Lord Lucas of Chilworth

In responding to the noble Lord, Lord Lloyd of Kilgerran, it may be helpful for me to remind the Committee that when I spoke during the Second Reading debate on the Bill I indicated that one reason the provisions relating to the registers were being amended was to free the Patent Office of the requirement to keep the registers at a particular place and thus a computerised register could be kept wherever was most convenient to the Patent Office. Therefore, it would clearly not be appropriate to replace that with an obligation to maintain a computer in Sheffield.

We recently announced that the Patent Office is to become a statutory non-departmental body subject to commercial constraints. The question of whether there should be regionally based registers and, if so, where they should be located, should be a matter for the board of management of the hived-off Patent Office. It would not be right in advance of that change of responsibility to saddle the office with a statutory obligation either to maintain a computer in Sheffield or, if that is what is envisaged, to adapt its system to allow access from remote terminals. Incidentally, it has been estimated that such an adaptation may cost many hundreds of thousands of pounds.

The noble Lord has indicated that the computer envisaged by this amendment would be in an independent unit maintained by the Company of Cutlers, presumably at is own expense. That is a matter for the Company of Cutlers. It does not need legislation to allow it to do that.

I should perhaps add quite briefly that the Mathys Report of British Trade Mark Law and Practice recommended in 1974 that provisions of the Trade Marks Act 1938 which relate to the Sheffield register and the Company of Cutlers should be repealed at a suitable opportunity. The Government fully understand the dismay with which this is viewed by the Company of Cutlers which naturally takes proper and considerable pride in its long association with the registration of trade marks. However, the report noted in 1974 that those provisions were more of historical rather than industrial interest and the Government have therefore decided to do this in legislation which will be necessary in order to hive off the Patent Office. It should be emphasised that the current position of the Sheffield register is not affected by the Bill before your Lordships this evening.

With that explanation I have to say that the Government must resist the amendment. Notwith-standing the affection with which the Company of Cutlers is held in Sheffield and the point that the noble Lord made with regard to the current employment position in Sheffield which is not unknown to us, I hope that the explanation which I have given will enable him to withdraw the amendment.

7.15 p.m.

Lord Bruce of Donington

I have listened carefully to the short explanation given by the noble Lord, Lord Lloyd of Kilgerran, and to the Minister's reply. I must say that I remain to be convinced that the Government ought to resist the amendment. It may well be that over the whole sphere of activities commercialism should finally prevail and the dictates of making profit out of these operations should hold sway over all other considerations. However, I am not always sure that that is the best guide.

The noble Lord was kind enough to pay tribute to the expertise that is exercised by the Company of Cutlers and that, I think, is probably well earned. However, there is a tradition in the Company of Cutlers with which I am not familiar but which I am quite sure exists, and I think that the Government should think more than once before they do anything to damage what may to some seem to be a relic of the past—a past which in many cases has been quite magnificent and which has performed enormous service. Therefore, personally speaking—and I cannot commit my colleagues on this because I have not discussed it with them—I am in general sympathy with the amendment and I shall be required to be convinced a great deal more before I oppose it.

Lord Mottistone

Surely the great thing about a computer is that it does not matter where it is located; if you operate one, it is the terminal equipment that matters. It is understandable that the cutlers want to keep the link which they had previously, but it can be only a tenuous link now that we have moved on from quill pens and large registers, which no doubt was the position when they started. Even the cutlers, if they were given a particular task in this area, may not want to have the computer in Sheffield; it may be more convenient for them to have it somewhere else in the country. It seems to me that this particular amendment is not wholly suited for the type of purpose which the noble Lord, Lord Lloyd of Kilgerran, has advanced. There may be some other way of retaining a link apart from trying to locate the computer in a particular place. That does not seem to me to be appropriate, whatever courses we may consider for retaining the longstanding historical connections of the Company of Cutlers.

Lord Lucas of Chilworth

This might be the appropriate time for me to flesh out a little the point which I was trying to make. I am obliged to my noble friend Lord Mottistone, who so succinctly put his finger on the major point; namely, that in this modern technological age flexibility is the prime concern. It may be of interest to the Committee to know that the repeal of the Sheffield marks provision was originally put on the cards prior to the 1938 Act.

Of course we understand that the move we are making may be a disappointment to the Cutlers Company. Their association with the registration of trade marks is a long one. It goes back to 1624. But, as I have indicated, the Mathys Committee in 1974 considered whether this position served a useful purpose, and concluded at that time that it did not.

The number of applications a year that the Cutlers Company now receive has not exceeded 20 for some considerable time. In several recent years it has in fact been in single figures. The fee income to the Cutlers Company is therefore extremely small. An application fee is only £54, so 10 or 15 applications are not going materially to affect the fortunes of the company.

Those are two of the principal reasons. Of course the ending of a long tradition is always a matter for regret. The present link between the Cutlers Company and the Patent Office cannot, however, be justified on practical grounds. With that additional information, I hope that the noble Lord will feel able to withdraw the amendment.

Lord Lloyd of Kilgerran

I am grateful to the noble Lord, Lord Bruce of Donington, for his approach to this matter, which is wholly in line with the approach I made in my submissions. I am grateful to the noble Lord, Lord Mottistone, for bringing forward a practical suggestion that possibly instead of having the computer in Sheffield, as I am asked to put to the Committee, there may be some other way of creating a link which preserves to some extent this prestigious arrangement associated with a prestigious trade mark.

The noble Lord the Minister has been helpful in reminding me that there will be an opportunity for consideration of regionally-based registers in due course. Therefore, I do not think I should be tempted at this hour of the evening to go into the decision or recommendation of the Mathys report of over 11 years ago. That is a discussion that we can have more appropriately when the Bill comes along which, as the noble Lord the Minister said, is to hive off the Patent Office. I have heard what the Minister has said, and in these circumstances I reserve the right to bring back the matter later if I am so advised. I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

Lord Lloyd of Kilgerran moved Amendment No. 7: Page 5, leave out lines 1 to 4.

The noble Lord said: I beg leave to move Amendment No. 7, and I ask leave of the Committee to speak to Amendment No 21. This raises an important matter. The importance of the matter has been recognised by the advisers to the noble Lord the Minister, and I should like to say how grateful I am for the assistance given to me particularly by Mr. Susman in this connection in discussing with me beforehand the kind of reply that might be given on many of these amendments.

As the Bill stands at the moment, Section 46 is to be deleted. That would be entirely wrong. Section 46 is the section which says: In all legal proceedings relating to a registered trade mark (including applications under section 32 of this Act) the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof".

That section enables the registration to be prima facie evidence of its validity as well as the ownership. In deleting Section 46 the Government have not, in the Bill as it stands at present, adequate wording to make that position of Section 46 perfectly clear. If Section 46 is omitted, then in order for a proprietor of a trade mark to establish the validity of the original registration, it would be necessary for more expense to be incurred.

In this connection there has been correspondence with the department arising from a friend of mine at the patent Bar, Mr. Morcom. It is his argument that I am putting forward to the Committee at the present time. I understand that the Government will sympathise with the approach I have made, and I believe that they will agree that Section 46 should be retained, and the passage at the top of page 5, subparagraph (8), deleted, leaving Section 46 in to explain the position in regard to registration and validity. I beg to move.

Lord Lucas of Chilworth

May I thank the noble Lord, Lord Lloyd of Kilgerran, for the remarks he made in connection with officials in my department? I am most grateful to him. I apologise to the noble Lord that I was not in the country at the time to discuss this matter with him.

As the noble Lord said, the new Section 1(8) of the Trade Marks Act 1938 provides that the register itself shall be prima facie evidence of anything required or authorised to be registered. The wording was adopted because it is used in similar provisions being re-enacted in the Designs and Patents Act. The new Section 1(8) is intended to have the same effect in practice as the existing Section 46, although cast in rather different terms.

Several members of the trade marks Bar have expressed the view, as indeed has the noble Lord, that new Section 1(8) is not in fact equivalent to existing Section 46. The Government have reconsidered the question and believe these criticisms to be well founded. Therefore, I am in the happy position of advising the noble Lord and the Committee that we are happy to accept these amendments. I should like to thank the noble Lord for bringing this matter to our attention.

Lord Lloyd of Kilgerran

I am grateful to the noble Lord the Minister.

On Question, amendment agreed to.

On Question, Whether Schedule 1, as amended, shall be the first schedule to the Bill?

7.30 p.m.

Lord Northfield

I want to say a few words on the schedule. As the noble Lord the Minister knows, there was on the Marshalled List until late last week another amendment to Schedule 1. As a result of (shall we say?) misunderstandings at any rate, the amendment was taken off the Marshalled List. I shall be proposing, unless the Minister says a few helpful words this evening, to return to this matter at Report stage.

The matter concerns the effect of the licences of right provision found in the 1977 Act on the pharmaceutical industry. I am not going to develop my case in the absence of the amendment. I shall simply say, in case it tempts the Minister to say something helpful this evening, that this was an amendment which, as he knows, was pushed through the other place without any debate or explanation in the late stages of the 1977 Act.

When it came here, nobody spotted its effects, and nobody explained it here. It is only in the past couple of years or so that the mischief of the amendment, now part of the Act, is being felt. It is a mischief of some considerable importance. It was a side door to return to compulsory licensing which this Chamber, on my own movement in 1977, had deleted anyway. It was a half-way house back again. We did not understand what the amendment meant when it reached us here.

There are no guidelines for the comptroller in exercising the powers of licence of right. There is none in any competitor country. The effect of the present Act is that any copyist can demand a licence of right in the last four years of any patents filed between 1967 and 1978. This is causing an enormous mischief. It is now in the courts; it is before the comptroller; it is in the House of Lords and this House has sent it to the European Court. I shall not develop this further, but the fact is that the Government are sympathetic to getting rid of it. The question is: how soon? I submit that there is no time like the present. There is no reason why this Bill should not be quickly adapted to make this amendment the law concerning patents. If the noble Lord can help us now it might be helpful at this point and it would have some influence on what we do at Report stage.

There is one point on which I hope the Minister will be able to say something at Report stage, if not now. Some of the mischief could be undone now by the powers under Section 123 in the 1977 Act. I believe that under that section the Minister can give guidance to the comptroller for the exercise of his powers in this respect. If the Government intend to repeal this, or will promise to do so, it would be helpful if in the meantime they gave some guidelines to the comptroller to help to undo much of the mischief.

I have done my duty by raising the matter. I am sorry that through misunderstanding the amendment was withdrawn from the Marshalled List. I should have fought it tooth and nail this evening if it had not been withdrawn. I give notice that I shall want to return to it at some length at Report stage unless the Minister can give such assurances tonight that I shall not need to do so.

Lord Lloyd of Kilgerran

The noble Lord, Lord Northfield, has emphasised several times that the amendment was withdrawn as a result of a misunderstanding. I think I should dilute the view that that gives to the Committee, because I deliberately put down the amendment and deliberately had it withdrawn, for a very simple reason. I had been informed by a colleague from the other place that all these matters were under discussion with the Minister. It did not seem to me appropriate that matters of such great importance as licences of right should come within the ambit of a small Bill such as this, narrow in its consequences and its functions. That was my reason. There was no misunderstanding. It was a deliberate action on my part, and if I have disappointed the noble Lord, Lord Northfield, I am very sorry.

Lord Northfield

I think the misunderstanding was that the noble Lord, Lord Lloyd, thought that I would not be here this evening, and therefore he thought he had better withdraw it in case I was not here to move it in his absence. I am saying that that was the basic misunderstanding. I bear no grudge towards my noble friend and I am more anxious to hear what the Minister has to say.

Lord Lloyd of Kilgerran

I should supplement that by saying that there was some difficulty in knowing where either the noble Lord, Lord Northfield, or I would be when, through the usual channels, it was arranged when this Bill would be taken. There was much co-operation with regard to fixing a time suitable to both of us. Happily, it has been convenient.

Lord Bruce of Donington

The amendment that has been withdrawn attracted my attention when it appeared on the Marshalled List. I have taken the opportunity to investigate some of the issues that lay behind it. My noble friend will forgive me if I say that I am naturally suspicious if somebody refers to a mischief and if it is said that the Government are considering sympathetically rectifying such mischief. My political instincts suddenly become acute.

It is only fair to say that certain issues are raised by the amendment that has been withdrawn. Perhaps I may particularise on them a little without enlarging the scope of the debate. They are matters relating to the pharmaceutical industry and concern the pharmaceutical giants and, in the past, in relation to a very limited area, some smaller competitors who have been able to produce at a far lower price with consequential reductions, it is said (and I still have to verify this) to the expenditure on the National Health Service. From my point of view, I should like to investigate the matter further before I pass an opinion on it.

My intervention therefore is to say to my noble friend, to the noble Lord, Lord Lloyd of Kilgerran, and to the Government that I give notice that if this matter is raised at a later stage we may take a perhaps more active part in this debate than the non-controversial terms in which it is generally expressed justify for the purpose of this Committee.

Lord Lucas of Chilworth

It is not for me to come between the noble Lord, Lord Northfield, and any of his colleagues. I resist the temptation tonight. I have some sympathy with what underlies the remarks of the noble Lord, Lord Northfield—he was kind enough to discuss this with me a week or so ago—and I shall study carefully what he said about this matter in 1977 as well as this evening. On the other hand, the noble Lord, Lord Lloyd of Kilgerran, had this about right. The noble Lord, Lord Bruce of Donington, expresses instincts which suggest to me that we might enter into a controversial area.

Let me tell the Committee how we see the position at present. My right honourable friend the Secretary of State for Trade and Industry said last autumn to representatives of the industry that he would consider a repeal if they could demonstrate that there had been a significant erosion in this useful patent life since the existing legislation was passed in 1977. The Government are satisfied that the industry has demonstrated this. We are therefore prepared to introduce legislation having this effect.

However, this Bill is not the place for such a measure. As the noble Lord, Lord Lloyd, said, this Bill has a very limited scope and is, or has been up to now, non-controversial. Allowance has been made for it in the parliamentary timetable on this basis. We do not feel that the subject that the noble Lord, Lord Northfield, has raised is germane to the limited purposes of this Bill; and, as the noble Lord, Lord Bruce, indicates, there might be some controversy over it. Its inclusion therefore might cause problems for the progress of this Bill. The noble Lord, Lord Lloyd, recognises that. Perhaps the noble Lord, Lord Northfield, will not recognise it. He shakes his head in acknowledgment.

We announced that we intend to implement the legislation providing for service marks registration on 1st October this year. That is contingent on the passage of this Bill. Undue delay could therefore prejudice that date being met.

There are a couple of other reasons; there are more than a couple, but two spring to mind. There is an important policy point to be decided; namely, what transitional arrangements should be made. That is a point that I suspect the noble Lord, Lord Bruce, would like to raise. I cannot tell him, because we have not provided for that in this Bill. The Bill before the Committee would be prejudiced. I ask the noble Lord, Lord Northfield, to consider carefully and read tomorrow what we are saying in Committee this evening. I am sure that he will.

I should like him to know that the Government are prepared to legislate on this subject in the next relevant Bill. It has been announced that legislation will be introduced in due course to implement the decision which has been announced already to make the Patent Office a statutory non-departmental body and for other matters connected with intellectual property. The Government consider that this would be a suitable vehicle and are prepared to undertake to include in it provisions to repeal the provisions relating to licences of right for 1949 Act patents for pharmaceutical products. With that I hope that the Committee this evening and the House when it resumes its consideration of the Bill at report stage will leave the matter until a much more appropriate time when we can consider it. This is a matter of significant importance, but it is not without its difficulties and controversies.

Lord Bruce of Donington

May I ask the noble Lord whether it is the Government's intention to produce a White Paper on this aspect of the matter so that there may be some discussion about it before the Bill itself comes out?

Lord Lucas of Chilworth

I am informed that in another place an announcement is being made today, I think, in Answer to a Written Question, that a White Paper is to be published tomorrow. I think this may help noble Lords.

Lord Northfield

I am grateful to everyone who has spoken and particularly to the Minister both for talking to me last week and for his kind remarks this evening. I shall, of course, consider what to do before Report stage but, if I may say so, during a very long time in Parliament I have heard Ministers year in and year out saying that now is not the time to rock a particular boat. We have often rocked the boat, or so Ministers thought, and it had no effect whatsoever. A Bill has steamed on its way and the apparent difficulties have been quickly overcome once Parliament has been very tough and stated its desire. So I cannot accept that this will in some way delay this Bill. It is a very short amendment that is needed and in my view it would not take long to debate.

But there is a further point. I think that there is a danger in leaving it any longer—and one of the main companies involved in this copying trade are not really developers of drugs; they are simply copyists who import the material from abroad and take advantage of the forumula which has been worked out by research here or by the company owning the patent. One of the difficulties is that there are now filed applications for 30 of these licences on major drugs—at least a dozen of the most important drugs in everyday use in medicine today. What is having to happen, because there are no guidelines in the Act, is that all this is now having to be dragged through the courts. It is court-made law; it is having to go to the European courts to see how they feel about it all. At the end of the day, when all this money has been spent apparently in the next year, in the next 18 months or two years—for goodness knows when the Government will legislate—the Government will come along and say, "It all should not have happened; we should have repealed it. We have always been intending to repeal it".

Why then should we go through all this time of high and escalating legal costs, confusion and deterrence to the industry, putting the British pharmaceutical industry at a disadvantage compared with other competitive countries: for no other country has this situation. Why should we go through all that, if, in any case, the Government want to repeal it? Is it not better to seize the opportunity of a short amendment to the Title to this Bill, a very short amendment and a very short new clause? That is my position and I stand by it for the moment, though with great pleasure and many thanks I shall consider what the noble Lord has said this evening.

Schedule 1, as amended, agreed to.

Clause 2 agreed to.

7.45 p.m.

Lord Lloyd of Kilgerran moved Amendment No. 1:

After Clause 2, insert the following new clause:

("Communications with trade mark agents.

.—(1) Any communication with a trade mark agent concerning intellectual property rights shall be privileged from disclosure in the same manner as a communication concerning such rights with a solicitor of the Supreme Court.

(2) In sub-paragraph (1) above a reference to a trade mark agent shall be a reference to an ordinary member of the Institute of Trade Mark Agents or a list of Trade Mark Agents controlled by the Registrar of Trade Marks.").

The noble Lord said: In order to revert to the atmosphere of non-controversiality may I say I feel that it is rather a record that, of five amendments that I have produced this evening, four have been accepted by the Government?

Noble Lords

Hear, hear!

Lord Lloyd of Kilgerran

I am very much obliged for the great applause for our achievement from these Benches. But I think my luck is coming to an end on the next amendment. This is a very important amendment; it is quite a simple thing. It is to give patent agents and trade mark agents the same kind of privilege as solicitors have now in proceedings and in matters of consideration of problems arising from intellectual property. Privilege means that the documents, the letters passing between the parties, cannot be disclosed, cannot be discovered, as we say. You can resist discovery of documents; that is to say, the official way of extracting documents from the other side in a contest can be resisted if you use a solicitor.

In these modern days patent agents and trade mark agents have a very important function, particularly in regard to the creation of wealth. I am not exaggerating. Patent agents and trade mark agents are very close to industry. They understand what is happening and internationally they are respected for their knowledge. Many of them are very well experienced in engineering and in science and, therefore, it seems (to use the words of a learned judge in a recent decision, Mr. Justice Nourse) to be perverse that patent agents and trade mark agents should not have the same protection from discovery of their documents as have solicitors.

I am always very reluctant to speak about a case in which I have been involved but I can tell it in general terms. I was appearing for a very small company in the electronic field. We thought we had a very good case and we wrote to the trade mark agent about it. The trade mark agent then replied and asked his clients certain things, entered into a lot of correspondence, and then it went to court. We asked for discovery. The trade mark agent had to disclose all the correspondence. One of the letters he disclosed was a personal letter to the managing director of the company, a very large company, to say, "You have got a very poor case here. They are bound to win if it comes to court. If you let me have £500, I will frighten the pants off this small firm".

Naturally, when that document came up we took every advantage of it and got a very good settlement for the small firm against the large one. That was a bit of luck for my clients. But it is wholly wrong when a trade mark agent is being asked to advise that he has to say to the client, "Do not go on any further. If there is going to be any trouble, we must bring in a solicitor". Therefore, it increases the costs of already very expensive litigation and considerations in intellectual property unless patent agents and trade mark agents have full protection by way of discovery.

I must also point out that trade mark agents and patent agents have audience before certain courts. I shall not waste your Lordships' time by indicating which courts; but they are able to present cases to certain courts. In a recent case this matter as to the legal professional privilege of trade mark agents was raised before Mr. Justice Nourse and it is reported in Reports of Patent Cases, 1983, page 131, as follows: At various stages in the dispute, the defendents were represented not by their solicitors but by their trade mark agents who acted in the same way as solicitors would have acted if they had been instructed". The learned judge, Mr. Justice Nourse, pointed out that for many years it had been the practice of both patent agents and trade mark agents to conduct proceedings in the Patent Office and the Trade Marks Registry without the intervention of solicitors. Then he goes on to say: It is with very great reluctance that I come to the conclusion that there is no professional privilege for the trade mark agents in this case". The circumstances which caused his reluctance were that he relied upon two cases—one of 1881 and another of 1886—where the circumstances of trade and commercial dealing were so completely different. He went on, and I quote, I see great force in that submission". The submission was that the trade mark agents should have protection from discovery. He went on: It seems odd and perverse, that if a trade mark agent was entitled to advise a client in relation to legal matters and to conduct certain legal proceedings on his behalf, the same privilege should not apply as would certainly apply in a case where the advice was being given and the proceedings were being conducted by a solicitor". This is a probing amendment and I do not propose to force it to a Division, but it is a matter to which due consideration should be given by the Government. In speaking to this amendment, I would ask the leave of the Committee to speak also to Amendment No. 2, and perhaps I should say that both these amendments are somewhat similar.

Amendment No. 1 is limited to the position of a trade mark agent. Amendment No. 2 refers to both patent agents and trade mark agents. I should say to the noble Lord the Minister that I think that second amendment, which deals with both patent agents and trade mark agents, is defective in one respect. There is no reference in that amendment as it stands to the position of patent agents in regard to discovery as now set out in the evidence Act of 1968 and in the Patents Act of 1977. Therefore I would put the point to the Minister that better wording should be considered for a future occasion; but it is a matter of very considerable importance. I therefore move this amendment in the hope of getting a sympathetic answer from the Minister. I beg to move.

Lord Bruce of Donington

I view with some sympathy the arguments that have been put forward by the noble Lord, Lord Lloyd of Kilgerran. In general, I would support what he said, for two reasons. First, I believe that his arguments stand on their own feet as being meritorious and deserving of the serious consideration of your Lordships' Committee. Secondly, I must confess that I support it in order to protect my own position when your Lordships come to discuss the Financial Services Bill and such Bills as I believe the Government intend to bring in, covering the more rigorous prosecution of fraud.

In many ways, and within those two contexts, the role of accountants is analogous to that of the patent agent and the trade mark agent. We in the accountancy profession have to advise clients on highly confidential matters—every whit as confidential as those communications that pass between a solicitor and his client. Indeed I have only to speak of the whole field of taxation, where I think it is common knowledge that, although legal cases are processed through the courts by solicitors and by members of the Bar, the whole essence of a given tax case of any complexity is mainly a matter for the accountant; and detailed, highly confidential documents must pass between the accountant and his client.

In order to protect myself, therefore, so that the noble Lord may not say when these Bills come before your Lordships, and on the basis that he will be in charge of them, "You didn't agree in principle with the privilege when it came through on the Patents, Designs and Marks Bill", I think I ought to lay down a marker now. However, I would emphasise that irrespective of the likely future position of my own profession when it comes to those other Bills, I entirely support what the noble Lord has said this evening. Were he minded to press the matter further on Report, I might consider asking my colleagues to marshal their forces in his support.

Lord Lucas of Chilworth

I was fairly happy when the noble Lord, Lord Lloyd, in moving the amendment, opined that his luck might have run out; but I am not quite so confident in the light of the remarks made by the noble Lord, Lord Bruce of Donington. I shall in fact have to resist this amendment for these reasons, notwithstanding that I recognise the importance of members of the profession to which the noble Lord referred, particularly in commercial and industrial matters.

The Government have been aware for some time of the concern felt in the professions on the subject of privilege. As the noble Lord kows, I think, we are consulting both the standing advisory committees. Also, the Bar and the Law Society are represented on the committees. So at this moment we are still considering the question and we would resist the matter being dealt with in this Bill. Apart from the fact that a decision on whether to legislate would be premature, as I explained to the noble Lord, Lord Northfield, the amendments would extend the scope of the Bill. They are also likely to be extremely controversial.

Privilege of communication is not conferred lightly, and its extension to patent agents is exceptional. The profession of patent agent is subject to supervision, as is that of a barrister or solicitor, whereas that of a trade mark agent is not. Also, the patent agent is not subject to the same supervision when doing non-patent work. I believe one must think more than once before extending the privilege to an unsupervised profession. There might well be notice given that there are indeed other professions which may claim the same privilege, and I take very much to heart what the noble Lord, Lord Bruce of Donington, said about legislation in the future. However, my job is of course to deal with legislation tonight.

The noble Lord, Lord Lloyd, indirectly referred to the 1982 High Court case in which the learned judge used the phrase that he found it "a little odd and possibly perverse" that if a trade mark agent is entitled to advise a client in regard to certain legal matters and to conduct certain legal proceedings on his behalf, the same privilege should not apply, and so on. The noble Lord will no doubt recall that in 1984 in the Court of Appeal, the higher court, in the Wilder pump case, it was decided that the court found it not at all odd or perverse. They indeed found it impossible to say that there was any public interest in extending it.

I do not want to repeat the argument about putting this Bill in jeopardy in another place. I would prefer to be very much more direct. While I and my colleagues will reflect carefully on what has been said by both noble Lords, I have to say that I can hold out little hope for a change of heart during the passage of this Bill.

8 p.m.

Lord Lloyd of Kilgerran

I am very much obliged to the noble Lord the Minister for his careful reply to my submissions. May I, if it is not contravening any Standing Orders, ask the noble Lord, Lord Bruce of Donington, in view of his support of my position on privilege for trade mark agents and patent agents, if at any time in the future he feels he has to raise the question of privilege in regard to accountants, he should remind me that he has supported me on this occasion.

I am fully aware of the problems which this question of privilege raises. However, there was an observation made by the noble Lord the Minister which I must contradict. I did not get the exact words, but the impression was given that the Institute of Trade Mark Agents is not an institute which has control over its members adequately. That is wholly wrong, to my knowledge. It has very considerable control over its members, and it runs examinations so that they can reach certain standards before they are qualified. This, of course, also applies to patent agents, and therefore I think that possibly I may have misunderstood the noble Lord when he was putting a little difficulty in the way that does not really exist in practice. Nevertheless, in view of what has been said I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

[Amendment No. 2 not moved.]

Schedule 2 [Service Marks etc]:

Lord Lloyd of Kilgerran moved Amendment No. 8: Page 9, line 6, after ("mark") insert ("or a mark").

The noble Lord said: This is a very minor matter. It is to insert after the words "trade mark" the words "or a mark". The word "mark" by itself is defined in the Trade Marks Act in Section 68, and it is used in Section 38 and other sections, such as Section 9(1), and also in Part III of this schedule to the Bill. It seemed to me, therefore, that where you are dealing with a trade mark it sometimes applies also to a mark being used, so it was just a minor matter to make it more consistent with the whole of the rest of the legislation that where the words "trade mark" are used in this particular case there should be added that the same conditions should apply to "a mark" as defined under the Trade Marks Act 1938.

Lord Lucas of Chilworth

I assume that the noble Lord, Lord Lloyd of Kilgerran, is speaking at one and the same time to Amendments Nos. 11 and 19 of this grouping.

Lord Lloyd of Kilgerran

I was not on this occasion. I see that a note has been circulated that Amendments Nos. 8, 11 and 19 should be taken together, but both No. 11 and No. 19 raise quite different points.

Lord Lucas of Chilworth

In that case I would have wished that the noble Lord could have advised me when we sent our traditional, conventional note out with regard to groupings. However, I will do the best I can. Perhaps before moving to this particular amendment I may make a comment on the matter that we were discussing with regard to the Institute of Trade Mark Agents during the passage of the last amendment, because the noble Lord made a specific point. It is true, of course, as he pointed out, that the Institute of Trade Mark Agents has articles, and so on, and has control over membership, but in fact that control is not statutory. The responsibility to which I was referring was a statutory responsibility.

The amendment that the noble Lord seeks to move in No. 8 is a little complicated, and is complicated a little more by virtue of Nos. 11 and 19. What I should like to say here is that at present Sheffield marks as trade marks for what are referred to as metal goods are dealt with, along with trade marks generally, in the Trade Marks Act 1938. The amending Act, the Trade Marks (Amendment) Act 1984, as it stands at present unamended by this Bill, will modify the 1938 Act so that it may also apply to service marks.

In most respects the 1984 Act does this by providing (in paragraph 1 of Schedule 1 to that Act) that, at each place in the 1938 Act at which one comes across a reference to goods, it is to be read as also applying to services. This, superficially, is how the provisions of the 1938 Act relating to Sheffield marks are to be read. This really does not make any sense at all, since the provisions refer to metal goods and to goods made of metal. The present position is, therefore, that no clear provision is made for Sheffield service marks.

Normally there are two ways in which one might deal with the matter. Either a form of wording could be found which created a service mark equivalent to Sheffield trade marks, or else these provisions could be specifically omitted from the 1938 Act in its application to service marks. The Government decided on the latter course for two reasons: first, it is our view that there is really no service mark analogy to a Sheffield mark, which is by its nature for goods; secondly, the Government have decided to implement the recommendation of the Mathys Report that the Sheffield Register should be discontinued. I referred to this in our discussions earlier this evening. Even if that decision were not implemented it would not be appropriate to expand the scope of the Sheffield Register.

Accordingly, therefore, the present Bill deals with this by amending Schedule 1 to the 1984 Act so that Section 38 and Schedule 2 to the 1938 Act are omitted when that Act is applied to service marks. Therefore, while there will continue for the present to be provision for Sheffield trade marks for metal goods, there will be no Sheffield service marks.

The proposed amendment, and indeed the other two as far as I can see, while purporting to provide for Sheffield service marks, do not in any way indicate how it would be decided to what services they applied. It might be as well if I re-emphasised here that the present position of the Sheffield Register is not affected by the Bill before the Committee tonight.

It is for those reasons that I invite the noble Lord to withdraw his amendments. I am, of course, quite prepared to consider the wider issues of the points he has made. Perhaps with that assurance he might feel able to withdraw so that perhaps we could discuss this and the matters which are relevant to Amendments No. 11 and 19 in the wider context before, perhaps, the next stage.

Lord Lloyd of Kilgerran

I apologise if I embarrassed the Minister in any way by taking Amendment No. 8 by itself. I only had the privilege of seeing the document which groups the amendments within about 10 minutes of coming into the Chamber. The Minister's reply will be helpful in shortening my speech on Amendment No. 11. In those circumstances, I beg leave to withdraw Amendment No. 8.

Amendment, by leave, withdrawn.

Lord Lucas of Chilworth moved Amendments Nos. 9 and 10:

Page 9, line 16, at end insert— ("(aa) in the Printer's Imprint Act 1961, subsection (1) of section 1 (relaxation of requirements as to printer's imprint etc.);")

Page 9, line 40, at end insert— ("(gg) in the Supreme Court Act 1981, paragraph 1 of schedule 1 (causes and matters assigned to Chancery Division);").

The noble Lord said: Paragraph 1 of Schedule 2 specifies provisions which contain references to a trade mark and provides that each of those references shall include a reference to a service mark. Amendment No. 9 is concerned with printers' imprints. Under certain circumstances, a printer commits an offence if he does not include on matter printed by him his imprint—a statement of his name and his address.

The Printer's Imprint Act 1961 relaxed the requirements of an earlier measure, the Newspaper, Printers and Reading Rooms Repeal Act 1869. Section 1(1)(b) of the 1961 Act provides that nothing in the 1869 Act shall require a printer to include his imprint if the matter printed comprises a picture representing only a geometrical, floral or other design or a registered trade mark or any combination thereof.

As the law stands, the printer would not have that protection if the mark were, instead of a trade mark, a registered service mark. Amendment No. 9 accordingly causes the reference to include such a mark.

Amendment No. 10 is concerned with the distribution of business in the High Court. Paragraph 1 of Schedule 1 of the Supreme Court Act 1981 specifies subjects which are assigned to the Chancery Division. Subparagraph (i) specifies patents, trade marks, registered designs and copyright. Amendment No. 10 would result in matters and causes relating to service marks also being assigned to the Chancery Division. I beg to move.

On Question, amendments agreed to.

Lord Brabazon of Tara

I beg to move that the House do now resume. I think that we have gone as far as we can this evening with this Committee stage and we should return to it tomorrow.

Moved accordingly, and, on Question, Motion agreed to.

House resumed.