HL Deb 15 April 1986 vol 473 cc611-9

7.53 p.m.

Lord Lucas of Chilworth

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

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

On Question, Motion agreed to.

House in Committee accordingly.

[The LORD STRABOLGI in the Chair.]

Schedule 2 [Service marks etc.]:

Lord Lloyd of Kilgerran had given notice of his intention to move Amendment No. 11:

Page 10, line 6, at end insert— ("(6) in the Trade Marks Act 1938, section 38 and Schedule 2 (Sheffield marks).").

The noble Lord said: With the leave of the Committee I should like also to say a few words about Amendment No. 19. The object of Amendment No. 11 was to try to bring to the Government's notice, very forcefully, the point that the famous trade mark "Sheffield" should not only be a registered trade mark but should be a service mark. In support of that submission I have a letter from the Drop Forging Research Association of Sheffield. The director says: We would make the strongest possible representations to ensure that Sheffield, through the Cutlers Company, retains rights of observation of service rules as well as trade marks".

In an early part of the Committee stage yesterday there was a little confusion about what amendments should be taken together. As I had only just received the official form indicating the order in which the amendments would be taken, I confused the Minister to some extent, since he had expected that I would be dealing then with this amendment and Amendment No. 19. In those circumstances the Minister made a very helpful observation on the general question of the position of Sheffield as a service mark. Having been given that explanation I do not propose to move Amendment No. 11 or Amendment No. 19, but I reserve my position on the possibility of raising the matter strongly on Report. The famous Sheffield trade mark should also have the status of a service mark.

[Amendment No. 11 not moved.]

Lord Lloyd of Kilgerran moved Amendment No. 12: Page 10, line 44, leave out ("registered") and insert ("filed").

The noble Lord said: This amendment is concerned with substituting the word "filed" for "registered" in line 44, page 10 of the Bill, in relation to trade marks. The argument in favour of what seems to be a small amendment is somewhat complicated, and I apologise for that. However, it is an important matter because it relates to when damages for infringement shall emanate. The practice and procedure for applying for international convention is governed by what remain of the Patents and Designs Acts 1907 and 1946. Those Acts are being incorporated in the Bill. However, there is an anomaly, which has been recognised for a long time in the present procedure, which is suffered by the owners of trade marks registered and claiming a convention date.

As a great deal of time has been taken on other matters it may be that I can simplify my submission by saying, if it is not breaching a confidence, that I have spoken to the solicitor in the Minister's office who said that some sympathy, in principle, was felt for the amendment. In those circumstances I do not know whether it would be helpful to the Minister if I were to proceed with my argument in favour of the amendment. I should not like to embarrass him, but if what I have said is true—I see that the Minister is good enough to nod his head in agreement—it would save time if I limited my submission to what I have already said. I am sure that what I have said will be supplemented adequately by the Minister. I beg to move.

Lord Lucas of Chilworth

I am most grateful to the noble Lord, Lord Lloyd of Kilgerran. There is no dispute between the Government and the noble Lord as to what Section 39A(2), which is being inserted in the Trade Marks Act 1938, is intended to mean. The earlier Act has some rather unfortunate wording and as the whole measure is before your Lordships for consideration it would be appropriate for me to make it clear that the interpretation which the noble Lord, Lord Lloyd, seeks is the correct one.

However, in the Government's view the amendment cannot be accepted as it stands. It refers to a mark being filed. In fact, it should refer to the application being filed. I do not want to spend the Committee's time discussing some minor drafting defects, and I am sure the noble Lord himself will accept that. May I just say, therefore, that the Government accept the amendment in principle. We shall discuss with the noble Lord how best we can achieve what we both want so that at Report stage in a short while we shall be able to put before your Lordships' House an agreed amendment.

With that undertaking, I feel sure that the noble Lord will probably withdraw his amendment.

Lord Lloyd of Kilgerran

I am very much obliged to the noble Lord the Minister for taking that course. On the basis of such assurances I beg leave to withdraw this amendment.

Amendment, by leave, withdrawn.

8 p.m.

Lord Lucas of Chilworth moved Amendment No. 13: Page 11, line 1, after ("mark") insert ("under this section").

The noble Lord said: With the leave of the Committee I should also like, in moving Amendment No. 13, to speak to Amendment No. 14.

Paragraph 2 of Schedule 2 to the Bill inserts a new section, Section 39A, in the Trade Marks Act 1938. This is a re-enactment of Sections 91 and 91 A of the Patents and Designs Act 1907, which are themselves repealed by Schedule 3 to the Bill. This section is concerned with priority rights, and subsection (1) provides that a person who has already made an application for protection of a trade mark in a relevant country shall be entitled to have the marks registered in the United Kingdom in priority to other applicants, provided that his application in the United Kingdom is made within six months of his overseas application.

Amendments Nos. 13 and 14 affect subsection (3), which provides that the registration of a mark shall not be invalidated by use within the period of six months following an overseas application. However, subsection (3) does not at present say "six months", but instead directs the reader to subsection (1) by referring to "the period specified in this section". In doing this, it repeats the wording of Section 91(3) of the 1907 Act, which referred only indirectly to the duration of the period because it dealt also with patents and designs, for which the periods are not the same length. Since the present provision deals only with trade marks it is simpler to make subsection (3) self-sufficient and actually specify the length of the period, and this is what Amendment No. 14 does.

Amendment No. 13 makes clear that the protection against invalidity given by subsection (3) has effect only when registration takes place under this section; that is to say, when it follows an application made within six months of an overseas application. I beg to move.

On Question, amendment agreed to.

Lord Lucas of Chilworth moved Amendment No. 14: Page 11, line 3, leave out ("specified in this section as that") and insert ("of 6 months").

The noble Lord said: I have already spoken to Amendment No. 14 with Amendment No. 13, and I now beg to move it.

On Question, amendment agreed to.

Lord Lloyd of Kilgerran moved Amendment No. 15:

Page 11, line 41, at end insert— (".—(1) In section 20(1) of that Act (duration and renewal of registration) for the word "seven" there shall be substituted the word "ten". (2) In section 20(2) of that Act for the word "fourteen" there shall be substituted the word "ten".").

The noble Lord said: This amendment relates to the period of registration of a trade mark and the object of the amendment is to alter a period of seven years to a period of ten years in Section 20(1) of the Act, and in Section 20(2) to alter the word "fourteen" to "ten", in an attempt to harmonise the trade mark law with that of the EC.

At present the periods of seven years for the period of registration of a trade mark and ten years and fourteen years as far as the renewal is concerned are out of step, as it were, or out of line, with most of the industrialised world and all our partners within the EC. For instance, instead of seven years, Benelux, Denmark and West Germany have ten years; Italy has 20 years for the first period of registration of the trade mark; Japan has ten years; Spain has 20 years, and the United States has 20 years.

It is submitted, therefore, that a change to a ten-year period in this country would not only bring us more into line with other Community countries and make the UK more European-looking, but would also involve the Patent Office in no overall loss of revenue. The suggested method of approaching this problem is the introduction in Part III of the Bill of the amendments to Section 20 of the 1938 Act and to substitute the words "ten" for "seven" in Section 20(1) and "ten" for "fourteen" in subsection (2). I beg to move.

Lord Lucas of Chilworth

Let me say at the outset that there is no objection in principle to the changes which the noble Lord's amendment seeks to achieve. But I have to say to him that it would not he practicable to implement them at short notice. One has to assume that the noble Lord might envisage that if the amendment were accepted proprietors would pay lower renewal fees and presumably higher initial regisration fees than at present. While it might be a relatively straightforward matter to adjust, so that the Patent Office's income measured over a long period remained the same, such adjustment would produce considerable fluctuations in income in the short term.

The Patent Office is at present required to balance its books annually, and when the office becomes a non-departmental body it will, of course, have the need to continue to match income to costs. While the noble Lord said, in moving his amendment, that overall there would be loss of revenue, certainly we would envisage such severe fluctuations over a ten-year period unless dramatic changes were made in the fee structure that the need would not be satisfied. We would really have to do a rather more detailed study on the likely effect on the cash flow position of the office before the change contemplated could be agreed.

I hesitate again to remind the Committee, but when we discussed this matter at Second Reading we were at some pains to show, and I think most noble Lords accepted, that we were moving a very small, carefully structured Bill, very largely restricted in its scope and certainly non-controversial. Acceptance of the amendment would broaden the scope and that might very well create problems for its progress in another place. Then, of course, we could—I only say it as a possibility—prejudice the introduction of service mark registration on 1st October this year, which is the aim of this Bill and which is in fact the desire of almost everybody concerned in this matter.

Perhaps, then, I could say, in conclusion, that although it may be appropriate to make the change, I think it would perhaps have to be at a later date, for example when the full financial studies have been made, perhaps in the context of the harmonisation of European laws. With that, I would advise the Committee to resist this amendment and, perhaps, to be a little less strident, I would request the noble Lord opposite if he would be kind enough to withdraw it.

Lord Lloyd of Kilgerran

I am grateful to the noble Lord the Minister for the explanation he has given, and I agree with him that, of course, this Bill has a relatively narrow compass and that possibly, therefore, to make an amendment of this kind to the main Act is not suitable for the text of this Bill.

I am not sure that I can agree with everything the noble Lord says, but in view of the sympathetic approach that he has made it may be more appropriate if this is a matter which was raised on a different Bill. Before deciding upon that, I would very much like to study what the noble Lord has said and reserve the right to raise the matter, if I think it appropriate, at a later stage of this Bill. In these circumstances, I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

Lord Lucas of Chilworth moved Amendment No. 16: Page 13, line 20, leave out ("extends") and insert ("shall extend").

The noble Lord said: In moving Amendment No. 16 which stands in my name, I should also like to speak to Amendment No. 17 and, oddly enough, to Amendment No. 3. This arises as a result of the writing-up of the original Marshalled List to which the Chairman of Committees drew attention last night.

I want, first, to speak to Amendment No. 3, since Nos. 16 and 17 are there solely to achieve consistency and to pave the way for No. 3. This amendment replaces the Isle of Man extension provision of the Bill. I foreshadowed this change during the Second Reading debate on 3rd February 1986 at col. 923 of Hansard, when I said that discussions were still proceeding with the Government of the Isle of Man as to the form that this extension should take. I am pleased to inform the Committee that agreement has now been reached that the extension should take the form which is the subject of this amendment.

The complicated form of the extension stems from the fact that this Bill is essentially an amending measure and that the various Acts which it amends differ as to their extension provisions. For example, the Trade Marks Act 1938 merely states that it extends to the Isle of Man, while the Patents Act 1977 extends with scope for modification by Order in Council. Some of the other measures do not extend at all.

Broadly speaking, the effect of the amendment is that those provisions relating to trade marks and service marks, including those relating to the trade marks register, are extended automatically with scope for exceptions, adaptations or modifications, while the provisions relating to the patents and designs registers are extendable by Order in Council. The Government of the Isle of Man have given an assurance that they will seek to have an appropriate extending order made concurrently with the coming into force of these provisions.

Amendments Nos. 16 and 17 relate to the Trade Marks (Amendment) Act 1984. That Act contains a provision extending it automatically to the Isle of Man. Paragraph 7 of Schedule 2 to this Bill amends that provision to make the extension subject to any modifications in an Order in Council and both these amendments put the extension provision of the 1984 Act into the same form as Clause 4(4) of the present Bill; that is, on the assumption that the Committee accepts Amendment No. 3. I beg to move.

Lord Lloyd of Kilgerran

I listened carefully to what the noble Lord said, and I congratulate him and his colleagues on getting agreement with the people on the Isle of Man. Perhaps I ought to declare an interest in that 'I still am the honourary treasurer of the AngloManx group in this Palace; so I agree with the amendments being made.

On Question, amendment agreed to.

Lord Lucas of Chilworth moved Amendment No. 17: Page 13, line 21, after ("any") insert ("exceptions, adaptations or").

On Question, amendment agreed to.

Lord Lloyd of Kilgerran moved Amendment No. 18

Page 13, line 25, at end insert—

(" "Certification Trade Marks

. Paragraph 18 shall be omitted.")

The noble Lord said: This amendment attempts to ensure that the word "Sheffield" can also be used as a certification mark. To get a certification mark, a man can go along to the Comptroller-General of Patents and say "My mark is associated in a certain way with particular goods" and he can ask for rules to be drawn up as to how the mark can be used in the course of trade. In other words, in complying with these rules he certifies under the Act that the mark will be used in that way.

It may be that the Government have decided that they will abolish the register in the Cutlers Company, but I strongly suggest to them that there is a great deal of support in industry for preventing the Sheffield mark from being used improperly by other people who have no connection with Sheffield or Sheffield products. It should be possible for a person who wants to use the mark in a specific way, in the course of trade under Section 38 of the Trade Marks Act, to be able to get that authority properly by application to the Comptroller-General of Patents. Again, it may be that this is not the kind of amendment that should be introduced into such a Bill, but I should like to hear what the noble Lord has to say about the word "Sheffield" being capable of being registered as a certification mark should the comptroller-general pass the rules under which it is to be used. I beg to move.

8.15 p.m.

Lord Lucas of Chilworth

I studied this amendment carefully and, additionally, I listened carefully to what the noble Lord said, but I have to say to him, first—and I do this with the greatest courtesy—that the amendment is not sufficient to achieve the intended purpose. I do not refer here at all to any defect in drafting because we know that we can always cover that. The Bill as it stands will have no effect whatsoever on existing certification trade marks, but it is not possible to make sense of the relevant provisions, and in particular subsection (1) of Section 37 of the 1938 Act, merely by substituting "services" for "goods".

That subsection sets the scene for certification trade marks by stating that they are marks adapted to distinguish goods certified in respect of origin, material, mode of manufacture, quality, accuracy or some other characteristic from goods not so certified. In order to provide for certification service marks, it would be necessary to specify what features would be taken to characterise services as qualifying for certification. It is not apparent what these features might be, bearing in mind that they should be features that can be reasonably and objectively assessed.

Secondly, registration of a certification mark is a more complicated process than that of an ordinary trade mark, because, as well as the usual examination for distinctiveness and so on to which I have referred, regulations governing the use of the mark must be deposited. These regulations must, in their turn, be approved by the Department of Trade and Industry which, in its turn, has to consider whether they are satisfactory, whether the applicant is competent to certify the goods concerned and so on. It may well be appropriate to consider at some future date whether such provision should be made, for example, in the context of harmonisation of trade marks law within the European Community. But we feel that it would be most inappropriate at this time, and for those reasons I urge the noble Lord to withdraw his amendment.

Lord Lloyd of Kilgerran

I am grateful to the Minister for his full and fair explanation of the attitude of the Government. It is a highly technical matter. The sections of the old Trade Marks Act 1938 are in many respects abstruse and need clarification. I will take the course, in view of the assurances and the explanation given, of asking leave to withdraw this amendment on the understanding that I can raise it either later on this Bill or on some other occasion.

Amendment, by leave, withdrawn.

Lord Lloyd of Kilgerran had given notice of his intention to move Amendment No. 19: Page 13, leave out lines 26 and 27.

The noble Lord said: This is the last amendment which I have to move and—

Lord Lucas of Chilworth

With great respect to the noble Lord I am reminded by my noble friend that he said earlier that he was not going to move Amendment No. 19. If the noble Lord will perhaps deal with it formally, we can get on to Amendment No. 20, which is the last of his amendments.

Lord Lloyd of Kilgerran

I am terribly sorry; I apologise to the Committee. It is entirely my fault. I misunderstood the Deputy Chairman of Committees. I thought he had called Amendment No. 20. He called Amendment No. 19, but I misheard him. I have already spoken to that amendment.

[Amendment No. 19 not moved.]

Lord Lloyd of Kilgerran moved Amendment No. 20:

Page 14, line 14, at end insert— ("9. In paragraph 25(3) of Schedule 1 to that Act (modification of Trade Marks Act 1938 in application to service marks) after the last word "services" there shall be inserted the words "or otherwise in relation to services".").

The noble Lord said: I believe I have come to the last of my amendments. It is an interesting amendment and involves the scope of the monopoly which will be given to a service mark. As the Bill is now drafted the scope of the monopoly given to the service mark relates to its use on or in relation to services. If a man has a shop and he puts on the fascia board the service mark, that would be use in relation to services because it describes the shop and the services which are being given from that shop, though given under different service marks. Therefore the use on the fascia board at the present time would not be an infringement of the service mark equivalent to the words on the fascia board.

This is a small amendment which extends the monopoly—I still continue to use the word "monopoly". The scope of the service mark shall be extended to be a use "otherwise in relation to services" as constituting an infringement. After discussions with the noble Lord's officials I believe there is a certain amount of sympathy for this amendment which, in attempting to be brief in my exposition at this late hour, I hope I have not made too difficult to understand. I beg to move.

Lord Lucas of Chilworth

I am quite happy to be even more than sympathetic to the noble Lord and to say without further ado that the Government are very happy to accept this amendment. I thank the noble Lord very much for drawing our attention to it.

Lord Lloyd of Kilgerran

With the leave of the Committee, I feel that as this is my last amendment I should like to say this. Without intending to raise any acrid atmosphere of party controversy I shall be leaving the Committee stage as I went in— with winners. I started the debate with the Government agreeing to four of my amendments. I leave the debate with the Government agreeing to two amendments. Though this is a small debate in a small compass it deals with matters relating to industry, intellectual property and the creation of goodwill. It redounds to the credit of the procedures of the House and reflects the spirit of co-operation between both sides of the Chamber which can be created in certain circumstances.

The Government took the opportunity of putting in seven amendments to improve the Bill. I likewise put in a number of amendments to that end. I should like again to thank the Minister for the fair, courteous and helpful way in which he has dealt with them and for the assistance he has provided through his officials.

On Question, amendment agreed to.

Schedule 2, as amended, agreed to.

Clause 3 agreed to.

Schedule 3 [Repeals]:

The Deputy Chairman of Committees (Lord Strabolgi)

Amendment No. 21, Lord Lloyd of Kilgerran.

Lord Lloyd of Kilgerran

I spoke to Amendment No. 21 when I dealt with Amendment No. 4. It was agreed to by the Minister.

The Deputy Chairman of Committees

I am still bound to call it and then, with respect, the noble Lord must move it. The noble Lord can speak to later and subsequent amendments, but he cannot move them at that stage. Therefore I am calling Amendment No. 21.

Lord Lloyd of Kilgerran moved Amendment No. 21: Page 15, line 6, column 3, leave out ("Section 46.").

The noble Lord said: I spoke to this amendment in connection with Amendment No. 4. I beg to move.

On Question, amendment agreed to.

Schedule 3, as amended, agreed to.

Clause 4 [Short title, extent and commencement]:

Lord Lucas of Chilworth moved Amendment No. 3:

Page 3, line 3, leave out subsection (4) and insert— ("(4) The following provisions of this Act shall extend to the Isle of Man, subject to any exceptions, adaptations or modifications contained in an Order made by Her Majesty in Council—

  1. (a) section 1 so far as it relates to paragraph 1 of Schedule 1;
  2. (b) section 2(1);
  3. (c) section 2(3) so far as it relates to paragraphs 1 (2)(d)(i) and (ii), 2(2)(b), 3 to 5, 7 and 8 of Schedule 2;
  4. (d) section 3(1) so far as it relates to the Trade Marks Act 1938;
  5. (e) section 3(2); and
  6. (f) this section.

(4A) Her Majesty may by Order in Council make provision for extending to the Isle of Man, with such exceptions, adaptations or modifications as may be specified in the Order, sections 1 and 3(1) above so far as they relate to the Registered Designs Act 1949 and the Patents Act 1977.").

The noble Lord said: I spoke to Amendment No. 3 earlier this evening. I should like to thank the noble Lord, Lord Lloyd of Kilgerran, for his help. As he suggests, he has come out something of a winner during the past two evenings. I should like, however, to leave the Committee with one thought. It relates to the point we raised yesterday when I gave certain assurances and which is still lying about—the right of licence. This was the point raised by the noble Lord, Lord Lloyd of Kilgerran, on schedule stand part. I want to reiterate that the Government remain committed—

Lord Lloyd of Kilgerran

It was the noble Lord, Lord Northfield.

Lord Lucas of Chilworth

It was the noble Lord, Lord Northfield, who raised the point. It was the noble Lord himself who spoke to it. The noble Lord recognised that the Government had accepted in principle the argument he had put forward. He had himself accepted the undertaking, which I had given prior to the Committee and during the discussion we had, that the Government would take the earliest opportunity to introduce legislation to meet the point which he and the noble Lord, Lord Northfield, were making earlier. I want to leave the Committee this evening with that clear understanding and assurance. If I have done that, I thank the Committee. I beg to move Amendment No. 3 to which I have already spoken.

On Question, amendment agreed to.

Clause 4, as amended, agreed to.

House resumed: Bill reported with the amendments.

Lord Brabazon of Tara

My Lords, I beg to move that the House do now adjourn during pleasure until 8.50 p.m.

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

[The Sitting was suspended from 8.30 until 8.50 p.m.]