Trade Marks Bill [H.L.]

HL Deb 14 March 1994 vol 553 cc69-94

6.45 p.m.

Baroness Trumpington

My Lords, I have it in command from Her Majesty the Queen to acquaint the House that Her Majesty, having been informed of the purport of the Trade Marks Bill, has consented to place Her prerogative and interest, so far as they are affected by the Bill, at the Disposal of Parliament, for the purposes of the Bill.

Read a third time.

Clause 3 [Absolute grounds for refusal of registration]:

The Earl of Harrowby moved Amendment No. 1: Page 2, line 19, at end insert: ("Provided also that a certification trade mark should not be refused by virtue of paragraph (c) above.").

The noble Earl said: My Lords, there are three amendments in my name and the rest are consequential. The last amendment concerns a matter of drafting. The second one is a matter of principle but the first one is a matter of substance.

Noble Lords will be aware that a certification trade mark is not the same as a trade mark or a collective trade mark. A certification trade mark is something which has not been known or practised entirely, but by the majority of other members of the community.

In Clause 3(1) (c) certain elements of the bans on the usage of the ordinary trade mark do not apply in logic to certification trade marks. At Report stage the Minister stated: My noble friend mentioned certification marks. Certification marks such as, for example, "Sheffield", "Stilton" and the "Woolmark" would all qualify for registration under the Bill in the same way as they did under the present Trade Mark Act". —[Official Report, 24/2/94; col. 730.] With great respect to my noble friend, I do not think that that statement is correct. If he looks carefully at the clause that we are discussing he will find that where there is a reference to "kind" in Clause 3(1) (c) the word "Woolmark", for example, would be banned.

The Minister stated that we have to comply with the Community regulations, but the Community regulations have no experience of and do not recognise certification marks. Therefore, in my submission we are totally in order in excluding certification marks from the banning that they would affect under the clause.

I suggest to the Minister that his two arguments are incorrect and it is not desirable to outlaw certification marks under this clause when they can be useful. If the Woolmark was an issue in front of the registrar at present it would be banned as the Bill stands. I do not believe that that is a desirable or necessary situation. What I am suggesting is in no way in conflict with Community law. I beg to move.

The Minister of State, Department of Trade and Industry (Lord Strathclyde)

My Lords, I am grateful for the way in which my noble friend introduced his amendment. I know that he has been particularly concerned about the position of certification marks under the Bill. I do not think that there is any difference of opinion between ourselves about the desirability of what my noble friend intends. There is disagreement about what the Bill says. I would like to repeat my assurance that there is nothing in this clause, or in subsection (1) (c), which will make it difficult to register a certification mark.

At Report my noble friend observed that if the Woolmark, a very well-known and widely used certification mark, were to come up afresh, it would be banned under the terms of the Bill. I can assure him that that is not the case. There is nothing in the Bill which would prevent the registration of the Woolmark as a certification mark. In any event Clause 3(1) represents a directive obligation which must apply to all applications for registration and we cannot change it.

Amendment No. 16 would delete the first sub-paragraph of paragraph 3 of Schedule 2, which again takes up a directive provision. In this case it is an optional provision which allows us to register certification marks—such as Stilton or Sheffield—which designate the geographic origin of the goods. Given that my noble friend's Amendment No. 1 is unacceptable because the directive does not allow it, this one is equally unacceptable because it deletes the only exception which the directive allows when it comes to registering certification marks which are geographic words.

I know that my noble friend has spent a great deal of time examining this issue. I can only tell him that the resources of the department have been concentrated on making sure that the departmental view is the correct one. I hope, therefore, that on this further assurance my noble friend will be able to withdraw his amendment and take some comfort in doing so.

The Earl of Harrowby

My Lords, I am very grateful for my noble friend's remarks. I cannot, however, see the logic of his argument in that the phrase "the kind" under Clause 3(1) (c) seems to me exactly what the Woolmark is. Nevertheless, the Minister has enormous resources behind him in his department, and I have only my own amateurish brain-power. I hope that in another place the argument will be examined. Of course, I accept my noble friend's word; I also accept his judgment. I am not convinced, but I withdraw the amendment.

Amendment, by leave, withdrawn.

Lord Strathclyde moved Amendment No. 2: After Clause 6, insert the following new clause: Raising of relative grounds in case of honest concurrent use (".—(1) This section applies where on an application for the registration of a trade mark it appears to the registrar—

1. (a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2) or (3) obtain, or
2. (b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,

but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use of the trade mark for which registration is sought. (2) In that case the registrar 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 United Kingdom, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 12(2) of the Trade Marks Act 1938. (4) Nothing in this section affects—

1. (a) the refusal of registration on the grounds mentioned in section 3 (absolute grounds for refusal), or
2. (b) the making of an application for a declaration of invalidity under section 43(2) (application on relative grounds where no consent to registration).

(5) This section does not apply when there is an order in force under section 7 below.").

The noble Lord said: My Lords, in Committee the noble Lord, Lord Peston, moved an amendment which would have had the effect that a mark is not to be refused registration where honest concurrent use has been made of it, notwithstanding that there is already an identical or similar mark on the register. That would have preserved the effect of Section 12(2) of the existing law. I said that I was doubtful if that could be reconciled with the directive, since it provides that a mark shall be excluded from the register where it conflicts with an earlier mark. I promised, however, to give the matter further consideration.

The amendment before the House provides a procedural mechanism whereby the burden of raising objections on relative grounds falls to the owner of the earlier mark rather than on the registrar. It will mean that, where the registrar raises an objection based on an earlier mark, he will not maintain the objection if the applicant is able to satisfy him that his mark has been the subject of honest concurrent use. Instead, he will accept the application, and advertise it.

So far, that is the same as the position under the existing law. Under the new law, however, if there is opposition from the owner of the earlier mark, the registrar will have to decide whether the grounds for refusal are made out. If they are based on subsection (1) of Clause 5—that is, the marks are identical, and so are the goods or services concerned—then the application will have to be refused. The fact of honest concurrent use will not be sufficient to defeat the opposition. If, however, the opposition is based on subsection (2) of Clause 5, it is necessary to show a likelihood of confusion on the part of the public. In such a case the fact that the two marks have been concurrently used may well make it more difficult to establish that such a likelihood exists. Likewise, if the ground of opposition is that the later mark would take undue advantage of the earlier mark's reputation, the fact that the two have co-existed in the market place may have a bearing on the outcome.

If there is no opposition, the mark applied for will in due course be registered. The owner of an earlier mark will still be able to challenge the registration. After five years however, the provisions on acquiescence will take over, and such a challenge will no longer be possible.

While this provision may not fully preserve the effect of the honest concurrent use provisions of the existing law, it is as far as we feel able to go, given the terms of the directive. The Government believe that it will nonetheless be of value to trade mark owners, particularly bearing in mind the remarks that I have made about how it may be expected to operate in practice. I beg to move.

Lord Peston

My Lords, I thank the Minister for the efforts that he has made on this matter. I know that it has been very difficult to reconcile the existing law with the directive. He has worked extremely hard, together with his colleagues, to go as far as he can. The point, as I understand it, is that there is no examination system in the rest of the European Union. Therefore de facto the problem does not arise there in the same way as it does here.

I presume that our position—the noble Lord did not state it, but I take it that he would agree—is that in due course we shall be giving up examination anyway; then, our position will be exactly the same as it is in the rest of the Union. In the meantime, it seems to me, although I accept that the noble Lord has done the best that he can, that the law in this country will still be slightly tougher than it is in the rest of Europe on this matter. It may well be that honourable gentlemen in the other place will find that this is a topic that interests them. I simply want to say how pleased I am at what the noble Lord has done. I strongly welcome the amendment that he has introduced.

On Question, amendment agreed to.

Clause 7 [Power to require that relative grounds be raised in opposition proceedings].

Lord Strathclyde moved Amendments Nos. 3 and 4: Page 4, line 37, after ("that") insert ("in any case"). Page 4, line 38, leave out ("any of the grounds") and insert ("a ground").

On Question, amendments agreed to.

Clause 9 [Infringement of registered trade mark].

Baroness Hamwee moved Amendment No. 5: Page 6, line 32, leave out ("But") and insert ("Provided that").

The noble Baroness said: My Lords, my noble friend Lord Airedale may have been taken by surprise by the House resuming a little earlier than expected. Perhaps I may move the amendment in his name and explain why he put it down.

During an earlier stage of the Bill I whispered to my noble friend that I wondered whether it was appropriate for a sentence which is in subsection (6) of Clause 9 to start with the word "But". My noble friend appears to have taken that on as something of a challenge. He remarked that it is not only a sentence but indeed a paragraph which starts with the word "But". Not wishing to set a bad example in legislation that is passed by this House and recommended to another place, my noble friend feels that we should use more conventional language and not the rather more informal language that is now coming into everyday use. I beg to move.

Lord Strathclyde

My Lords, the noble Baroness, Lady Hamwee, moved her noble friend's amendment in a most excellent way. Perhaps I can so reply on behalf of the Government. The point here is that there are 141 occurrences of the word "But" beginning a sentence in current statutes, most of those being a subsection. These range from Chapter 46 of the Commons Act 1235 and Section 17 of the Ecclesiastical Licenses Act 1533, right up to the present. There are, I understand, an average of 12 examples each year. Therefore the use of the word "But" in the second sentence of Clause 9(6) is neither novel nor unusual.

I understand perfectly well why the noble Baroness and the noble Lord have taken an interest in the matter. I am delighted that they have done so. I believe that our use of "But" has a respectable legal and grammatical pedigree, and that "provided that" would, in this context, be wrong. In the circumstances I am unable to accept the amendment and perhaps the noble Baroness, or the noble Lord, will feel able to withdraw it.

Lord Clinton-Davis

But, my Lords, is it desirable?

Baroness Hamwee

And, my Lords, I think it is sad that we have example No. 142. But I thank the Minister for his explanation and his officials for the hard work that they must have put in. I hope that computers were of some use in tracking down previous examples. I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

7 p.m.

Clause 12 [Registration subject to disclaimer or limitation]:

Baroness Hamwee moved Amendment No. 6: Page 7, line 35, at end insert: ("( ) Where a trade. mark contains an element which is not distinctive, and where the inclusion of such element in a registered trade mark could give rise to doubts as to the scope of protection of the registered trade mark, the registrar may require as a condition of registration of the trade mark that the applicant makes a disclaimer in accordance with section 12(1).").

The noble Baroness said: My Lords, this amendment deals with the issue of a compulsory disclaimer, which your Lordships may feel, as I did when the matter was first brought to my attention, is something of a contradiction in terms. However, it is an important point. Under the current law, the registrar has the power to enter a compulsory disclaimer to make it clear that part of a registration is non-distinctive and that no rights attach to that part of the registration. This Bill does not provide that power.

The view of the Institute of Trade Mark Agents, which brought the matter to my attention, is that the absence of the provision will lead to uncertainty of the rights given by the registration and possible additional expense and indeed unnecessary litigation. The retention of a compulsory disclaimer—that is, a disclaimer required by the registrar—will keep the law in the United Kingdom in line with the Community trade mark regulations. Given that the rest of the European Union will be affected by compulsory disclaimers as directed by the Community Trade Mark Office, it seems sensible to have the same provision in this country. If the Bill is not amended, some trade marks which are enforceable through the British courts will be subject to compulsory disclaimers and others will not. The Trade Marks Act 1938, Section 14, gives the registrar the power to decide whether a proprietor should have to disclaim any right to the exclusive use of part of a mark as a condition of its registration. Disclaimers imposed by the registrar mean that it is possible to determine by a simple inspection of the register the scope of a given registration. That allows third parties to carry out a search to know whether they can adopt a certain mark without fear of infringing a registered proprietor's rights. That is an advantage to small potential users and applicants for whom the expense of challenging the scope of a registration would be very great. We have said on a number of occasions during the course of the Bill that we must bear in mind the interests of the consumer.

An applicant is unlikely voluntarily to enter on the public record an admission that part or parts of the mark lack distinctiveness or otherwise would fall within the public domain. If compulsory disclaimers do not continue with this Bill, large companies may attempt to obtain a substantial number of registrations which, on the face of it, would give them the right to stop third parties from using expressions which are common in the English language or indeed ordinary English words. That might mean that large organisations will assert rights against third parties to which in fact they are not entitled. With a system of disclaimers imposed by the registrar on the other hand, there are bound to be a number of situations in which a smaller company will not know whether a threat of infringement has any substance.

The point may be made that disclaimers are misleading in that they suggest that no rights exist in the disclaimed matter when in fact there are common law rights. But that is a defect which I am advised can be remedied by appropriate rewording of the standard form of disclaimer. Let me give your Lordships one example: the mark "Kodak Colourprint". The word "Colourprint" would be disclaimed to show the public that no legal rights are given by that word.

I hope that that somewhat technical provision will commend itself to your Lordships as having some real importance. I beg to move.

Lord Strathclyde

My Lords, as the noble Baroness has acknowledged, we discussed during Committee whether the registrar should be able to require an applicant to disclaim any exclusive use of an element in a trade mark which he does not consider distinctive. That is a provision which exists in the Trade Mark Act 1938, which this Bill replaces.

The consensus is that such a provision is out of date and the majority of those consulted through the White Paper, and later on the Bill, welcomed the end of compulsory disclaimers. Experience under the present law shows that, not only can negotiations between an applicant and the registrar be protracted, and therefore add significantly to the fees charged by trade mark agents (about which the noble Baroness expressed concern during the debate that we had on Second Reading), but also the results are often overtaken by events. What might be considered non-distinctive today can become distinctive through use. The House will be interested to know that the Australian Government, having consulted users about their registration system, have also just issued a draft trade marks Bill. Like the Bill before your Lordships today, it provides only for voluntary disclaimers, repealing the registrar's ability to require disclaimers. I think that illustrates that what we are doing is in line not only with what our users want but with what is happening internationally.

Therefore, I do not believe that it is in the interest of the users of the trade mark registry to change the Bill. In the Government's view, it is clear that registration does not confer any exclusive rights in matter forming only part of the registered trade mark.

That is an important statement and indeed the definitive statement. On the basis of the explanation that I have given, I hope that the noble Baroness will withdraw her amendment.

Baroness Hamwee

My Lords, before the noble Lord sits down, perhaps I might ask him two questions arising from the explanation that he has just given. He referred to the consensus as part of the consultation process among different sectors of industry and the trade mark community. I wonder who in that community made up that consensus. In other words, are we talking about those who are likely to be applicants for trade marks who might well have an interest in there not being a provision for compulsory disclaimer, or the professionals?

Secondly, the noble Lord, quoting the Australian example, said that to have no such provision would mean that we are in line with other international provisions. Perhaps the Minister will confirm that the rest of the European Union does have the compulsory disclaimer provision and that we have made great efforts to keep this Bill in line with the rest of Europe.

Lord Strathclyde

My Lords, we are trying to harmonise under the terms of the directive, but nothing here goes against what the terms of the directive have set up for the European harmonisation. Other countries may well have disclaimer systems within their own individual systems. We have consulted as widely as possible with all sides of the relevant interests in this area to see whether or not there could be some form of consensus. We consulted professionals and those in industry on the Standing Advisory Committee. We tried to make sure that we would not include anything in this Bill that hitherto had been in the Trade Mark Act 1938 which would be difficult to work under present conditions. I believe that we have done that.

Clearly, in reaching a consensus, there may well be those who believe that our changes have gone too far. I suspect that that is the point that the noble Baroness makes. But I hope that she at least agrees with the case that I have made and that possibly we have made the right decision in this Bill and it should now be approved.

Baroness Hamwee

My Lords, I am grateful to the Minister for his explanation and for the amplification that he has given. I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

Clause 22 [Trusts and equities]:

Lord Strathclyde moved Amendment No. 7: Page 12, line 1, leave out from ("equities") to ("a") in line 2 and insert ("(in Scotland, rights) in respect or).

The noble Lord said: My Lords, in moving Amendment No. 7, I shall speak also to Amendment No. 8. The House may recall that I moved an amendment at Report to clarify the wording of this clause so that its effect in Scotland is the same as that in the rest of the United Kingdom. That amendment took account of the fact that the term "equities" is not used in Scottish law. However, on further reflection we feel that the present amendment better clarifies further the position regarding the enforcement of rights in respect of a registered trade mark in Scotland. I beg to move.

On Question, amendment agreed to.

Lord Strathclyde moved Amendment No. 8: Page 12, line 3, leave out ("or in relation to").

On Question, amendment agreed to.

Clause 24 [Licensing of registered trade mark]:

Lord Peston moved Amendment No. 9: Page 12, line 36, at end insert: ("( ) Use by a licensee in accordance with the terms of a subsisting licence in relation to goods or services for which the trade mark is registered shall be deemed for the purposes of this Act and at common law to be use by the proprietor in relation to those goods or services, and references to the goods or services of the proprietor shall be construed accordingly.").

The noble Lord said: My Lords, Amendment No. 9 is identical to an amendment which I tabled in Committee. It concerns the question of whether the use by a licensee is considered to accrue to the benefit of the proprietor.

I do not intend to repeat any of the arguments that arise on the matter. The noble Lord, Lord Strathclyde, welcomed the discussion and said that he would take the matter away and consider it further. I gather that he may not be able to accept the amendment but he may be able to make a few remarks of a clarifying and reassuring nature. That is the reason I retabled the amendment. I beg to move.

Lord Strathclyde

My Lords, in Committee I said that I was satisfied that it was quite clear that use by the licensee was use with the proprietor's consent, and that that applied regardless of the type of licence involved —exclusive, sub-licence or whatever. However, I agreed to consider the matter and I have done so.

The noble Lord's anxiety was that because these provisions were drafted differently from those in Section 28 of the 1938 Act, they would have a different effect on the reputation of the mark. He felt that the reputation of the mark would become fragmented because of its use by the licensee. Having considered the matter further, I am satisfied that that will not be the case. The different style of drafting stems solely from the fact that the whole concept surrounding the registrar of trade marks involvement with licensing is now different. In 1938 licensing of trade marks was relatively new, but now it is an everyday event. However, the basic idea remains; all use of the mark by the proprietor or with his consent is genuine use, and I am satisfied that there is no need to spell that out in Clause 24.

The all-embracing statement in Clause 42(1) (a) applies throughout the Bill, but appears where it really matters when dealing with revocation. That is, after all, the time when what constitutes use is important. I know the noble Lord is concerned about common law rights, but I would remind him that those are not affected by the Bill (as can be seen from Clause 2(2)); and accordingly, with that explanation and reassurance, I hope he is able to withdraw his amendment.

Lord Peston

My Lords, I thank the noble Lord for that statement and beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

Clause 42 [Revocation of registration]:

Baroness Hamwee moved Amendment No. 10: Page 20, line 10, after ("person") insert ("with a bona fide interest").

The noble Baroness said: My Lords, Amendment No. 10 relates to Clause 42 of the Bill which deals with the revocation of a registration. It is to stress to your Lordships that an application for revocation should be limited to a person under subsection (4) who has a bona fide interest in the matter and not merely "any" person.

It may be that without that qualification—that the applicant for revocation has a bona fide interest—a large number of applications for cancellation would be filed on a speculative basis, putting proprietors to a good deal of cost and inconvenience. Indeed, it is not beyond the bounds of imagination that a competitor may arrange for cancellation attacks against the whole or a large part of a trade mark portfolio of an applicant.

The clause will provide for proceedings in the registry being brought by a nominee with the identity of the real party being kept secret. That could also cause problems unless the applicant for revocation has such an interest. Indeed, the use of the application for revocation could be used to force the settlement of a real and more genuine issue. On the other hand, an application for registration under Clause 28(3) requires a bona fide intention for the mark to be used if it is not currently being used. I believe that that provision should be replicated in the clause dealing with revocation. I beg to move.

7.15 p.m.

Lord Strathclyde

My Lords, I thank the noble Baroness for her comments. The amendment covers a point which is new to the debate on the Bill but which I believe I can deal with in this way. As I have mentioned on a number of occasions, and most recently in reply to the previous amendment moved by the noble Baroness, a wide spectrum of user interest groups were consulted through the White Paper and the Bill on all aspects of the trade mark system. The majority of those supported the provisions set out in subsection (4) of Clause 42 which will enable any person to make an application to the court or the registrar for the revocation of a trade mark. Under the Trade Mark Act 1938 only persons aggrieved could do so. On that basis the amendment would be restrictive. In particular, anyone should be free to seek revocation of a trade mark which has become the common name in the trade for the goods or services for which it is registered. There is no such restriction in the regulation on the Community trade mark. Therefore, having explained the point in that regard, it is probably better to leave the clause as it stands rather than to add the words "bona fide" as suggested by the noble Baroness.

Baroness Hamwee

My Lords, again I am grateful to the Minister for his explanation. I am aware that the wording in the current Act is of a person aggrieved. It is because the words "bona fide" were used elsewhere in the Bill that I used them here.

The matter may be worth a little further consideration as the Bill continues its progress. The fact that the matter did not arise in consultation, good as that consultation was, does not necessarily mean that it is not worthy of consideration. I know that the Minister takes these points seriously; he has shown that throughout the course of the Bill in your Lordships' House. In the hope that having made the point it will lodge in the minds of those who have the responsibility to take the Bill forward, I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

Lord Reay moved Amendment No. 11: After Clause 56, insert the following new clause: ("Unfair competition: Article 10 bis —(1) Where any goods of the proprietor of a trade mark bearing the trade mark are associated in the course of trade with any label, packaging or container having an overall appearance of a distinctive character it shall be an act of unfair competition actionable as such for any person in the course of trade to supply or offer to supply any such goods with or in any label packaging or container which is similar in overall appearance, whether by reason of name, shape, colour, design or any combination thereof or otherwise, to the overall appearance of that of the proprietor's goods if the use of the label, packaging or container either—

1. (a) is likely to cause confusion, which includes a likelihood of association with the proprietor or the proprietor's goods; or
2. (b) without due cause takes unfair advantage of, or detrimental to, the distinctive character or repute of the appearance of the proprietor's goods or trade mark.

(2) In an action for unfair competition under this section all such relief by way of damages, injunctions, accounts or other wise is available to the plaintiff (in Scotland, pursuer) as is available in respect of infringement of a registered trade mark or other property right.").

The noble Lord said: My Lords, Amendment No.11 is identical to the amendment on "look-alikes" which I tabled at Report stage and which I withdrew after my noble friend the Minister made some encouraging noises.

The amendment seeks to deal with the growing incidence of large retailers offering for sale their own brand products in packaging deliberately designed to resemble that of a famous brand and thereby taking advantage of the consumer loyalty established and maintained for those brands at great expense by their manufacturers.

This is a manifestly unfair form of competition for which no adequate remedy is provided either by current British law or by the Bill as it stands, although remedies commonly exist in the laws of other countries. I spelt out the difficulty at Report stage and do riot wish to repeat the arguments now. The amendment is based on the Paris Convention for the Protection of Industrial Property, Article 10 his, which relates to unfair competition. The Bill has been used to give effect to other articles of the convention and its Long Title explains that that is one of its purposes.

The Bill therefore provides a perfect opportunity to fill the gap which exists in our competition law. The amendment is supported by a group of major consumer goods manufacturers, most of them household names and to one of which I am an adviser. I should perhaps repeat that declaration of interest.

At Report stage, as noble Lords present then will remember, the amendment enjoyed overwhelming support from this side of the House. Of my noble friends who spoke, no fewer than seven supported the amendment while only one spoke against it. My noble friend the Minister acknowledged the strength both of the case and of the support for the amendment, but he said that the Government would find it difficult to support the introduction of a new cause of action of unfair competition, such as this amendment would provide, unless there was a clear majority in favour of it. He said, fairly enough, that there are two sides to the issue and that before taking any action the Government must seek the view of industry generally.

I have tabled the amendment again, although I believe it has defects, in order that my noble friend should have an opportunity to explain to the House what steps he has since taken to seek the views of industry and what effect, if any, those views have had on government thinking. In particular, I should like to know whether the Government now agree that action is essential to deal with the abuses covered by the amendment and whether they have come round to the view that this Bill provides a suitable opportunity to do so. I beg to move.

Baroness O'Cathain

My Lords, I want to speak against the amendment. In doing so I declare two interests; first, as a non-executive director of Tesco, and secondly, as a consumer. This amendment smacks of restrictive practice. It is an attempt to limit competition. Even more importantly, it is an attempt to limit consumer choice and to deprive the consumer of products which are competitively priced. It is an attack on own labels. Own labels are seen by the consumer as good value where the definition of good value is a balance between quality and price. The amendment is wide and all embracing.

In the time available to me I should like to make five short points. First, on the containers and packaging, there are only a limited number of package types. Those are dictated by shelves, by fridge space, by fridge size, by weight, and sometimes, indeed, by the European Union. The European Union has dictated the packaging for washing powders. There is E5 or E10. What about carrying all these different types of packages? In effect the modern supermarket has something like 30,000 different lines. There cannot be 30,000 different types of packaging. That is not possible.

Secondly, if someone develops a package which has evolved due to consumer complaint, can the consumer only benefit from the new packaging if he or she buys from that particular manufacturer? I cite here the case of an ordinary milk carton. I do not know about other noble Lords but for years I have struggled with milk cartons. I have broken nails, I have had milk on the floor and I have actually managed to get milk on the ceiling. Marks & Spencer has now developed a package and I go down on my knees and thank the company for it. It has a ring-pull plastic top which comes out as a spout and means that there is no spillage. You can close it again and the milk does not go off in the fridge. Marks & Spencer stores are not open on all the days of the week, as we know from the Sunday Trading Bill. They are not universal—would that they were. Does it mean that when I want to save my nails, save my floor and save my ceiling I have to go to Marks & Spencer only or else do without milk?

Thirdly, does the current situation confuse the consumer? For example, a yellow washing up liquid bottle is known by the consumer as containing washing up liquid which has a lemon fragrance. The consumer is not confused if there is Fairy in a yellow washing up liquid bottle or some own brand in a yellow washing up liquid bottle. I think that the amendment is slightly patronising in suggesting that the consumer is not intelligent enough. The normal consumer has her head about her, if she is female; I am not so sure about the other side. Perhaps that is making a cheap point.

Fourthly, this is seen to be hurting the manufacturers, as the noble Lord, Lord Reay, said. I look at the bottom line and at profits. I look at the percentage of turnover of the major supermarkets. I am not talking about Tesco. The figure is something in the range of between 4 and 8 per cent. The profits of Procter Gamble are in the range of 11 and 13 per cent. I do not think they are being hurt. Incidentally, we talk about competition. Procter & Gamble and Unilever have between them some 80 per cent. of the detergent market in this country. The other 20 per cent. is own label.

Fifthly, the Consumers' Association has come out strongly against the amendment. Noble Lords on all sides of the House admire the Consumers' Association for the work it has done over many years.

Finally, I should like to make an observation. A government who have strongly supported deregulation and less legislation cannot support the introduction of new legislation which is unnecessary and frankly militates against the consumer.

Baroness Hamwee

My Lords, I am pleased again to have the opportunity of supporting the noble Lord, Lord Reay. I was able to put my name to this amendment at the previous stage of the Bill and have done so again. Perhaps I should declare an interest as a confused consumer; a female confused consumer indeed.

The noble Baroness, Lady O'Cathain, referred to the amendment as being an attack on own labels. That is precisely what it is not. It is an attempt to defend the packaging, the labels and the work of the brand manufacturers whose packaging is copied almost precisely, but not absolutely precisely, by those who wish to take advantage of their work. The noble Baroness said that the choice of packaging was dictated by a number of factors. One must accept that there are standard sizes. EC legislation provides for that and so on. However, it is surely not necessary that the same colour of container or the same shape of container is applied to two products, one of which is a brand product and the other of which is an own supermarket product. This concerns not only the colour but the combination of colours—a bottle of one colour with a cap of another colour.

The noble Baroness referred to milk containers. I suggest to your Lordships that that is a quite different matter. Square containers with particular forms of opening, however good or bad they may be, are square containers. They have on the material with which they are made full details of their contents. One does not confuse the contents of one container of a particular shape and with a particular spout with another.

One of the disbenefits of your Lordships' procedure is that one cannot use visual aids. I wish that we could. Perhaps I may describe, for instance, two bottles of shampoo. One bottle called Head and Shoulders has a shape reminiscent of shoulders. The other bottle which has the term "Head" in its name but does not refer to shoulders is very similar but not quite identical. It is the same colour and the label contains almost the same combination of colours. I suggest that it is not necessary for that bottle to imitate so nearly the shape and the devices of the original bottle.

We have been told that it is perfectly fair for consumers to have the advantage of a certain type of packaging becoming known. We have also been told that, if retailers had to alter the appearance of their products, prices would rise. But the packaging does alter. That is what makes it so suspect. A manufacturer alters his packaging, as happens as a matter of normal commercial practice as styles change and so on, and five minutes later the own brand packaging has changed as well. The noble Baroness told us that the Consumers' Association is against the amendment. Unhappily, it has not succeeded in disseminating its views perhaps quite as well on that point as some of the other interest groups which have been concerned with the issue. I would have been glad to have heard from them, but I have not: so I have not heard the detail of their argument.

Twice within the past few days I have had the experience of discussing this issue with journalists. In neither case have I been able to get very far because it has sparked so much recognition in them. They have told me of their own experiences and confusion and immediately identified very closely with the issue and the problem.

Finally, in supporting this amendment, if retailers cannot win customers and keep them by their own quality and price —it is very often the case that own-brand retailers have prices which are slightly lower than those of the brand manufacturers—and cannot use those advantages, I, do not believe that they should use someone else's "get-up" in order to win over customers. I do not believe it is a coincidence that the packaging of the various sets of items is so similar. I believe that it is a case of deliberately riding on the back of a manufacturer's reputation.

7.30 p.m.

Baroness Hooper

My Lords, we have discussed this issue at previous stages of the Bill and at each point I have made a plea on behalf of consumers in order to ensure that there should be no constraint on consumer choice if any amendment of this type were agreed to. Nevertheless, some of the examples quoted today by the noble Baroness, Lady Hamwee, and quoted right and left in your Lordships' House on Report by a number of confused Peers, mean that some of them are unnecessarily close.

I rise at this moment in the spirit of inquiry. My noble friend Lord Reay said that manufacturers in this situation had no legal recourse. I assume he means no statutory legal recourse because, as I understand it, they do of course have a right of recourse to the courts in passing off in common law.

Lord Strathclyde

My Lords, yet again it has been a useful and interesting debate, and this is the third time that we have had it. I am delighted that my noble friend Lord Reay has given me the opportunity of at least explaining where the Government are in examining the whole issue.

As I explained on Report, the amendment aims to prevent someone from using packaging, or a label, or a container with an overall appearance which resembles packaging, which is associated with a trade mark belonging to a competitor. The trade mark does not even have to be registered; it could be an unregistered mark which the trader, caught by this new offence, is totally unaware of.

I also explained that, even if the directive does not prevent us from introducing unfair competition as a general cause of action, I do not think that we could do this under the Bill since it is all about trade marks. Therefore, as I said earlier, the Government could not support the introduction of a new cause of action of unfair competition without careful study and full consultation.

Following Report stage, my department initiated the process of seeking views from the Standing Advisory Committee on Industrial Property which is made up of organisations representative of the patent, trade mark and legal professions, industry and commerce, consumers, the academic world, and those specialising in licensing intellectual property rights. For example, papers received from the British Producers and Brand Owners' Group, who support the amendment, and from bodies opposed to the amendment have already been circulated to the member organisations of the standing advisory committee. Other submissions, or comments on such submissions, will be circulated to the committee as and when they are received. The House may recall that the committee was consulted on both the White Paper and the Bill.

Even if the consultation shows general support for a change, I cannot promise that we will be able to solve the problem in this Bill. As I said earlier., there are considerable difficulties in formulating a suitable provision and one which would be consistent with the directive. Indeed, our mini-debate today shows just how much disagreement there is with both my noble friend Lady Hooper and the noble Baroness, Lady O'Cathain, speaking for the consumer. It is important that we have a definitive view either from the Consumers' Association or from the National Consumer Council over the role that they feel the consumer should have in making his or her own purchasing decisions when they go to the supermarket.

Perhaps after Report stage, when so many noble Lords from all around the House expressed their concern and confusion whenever they went shopping, the only sadness which I have about the whole debate is that we did not have the benefit of the wisdom of the noble Lord, Lord Peston, who I know, as a new man, takes a great deal of interest in the quality of his supermarket shopping. On this issue I ask my noble friend Lord Reay if he can leave it not only to another day but also to another place in order to deal with what is an extremely complicated issue, fraught with all kinds of problems, which the Government are taking very seriously having committed themselves to consulting widely.

Lord Reay

My Lords, I thank my noble friend very much indeed for that statement which I shall study carefully. Plainly, the Government are taking seriously their statement that they will consult widely. I am grateful for what my noble friend said. Perhaps I may take up a point which the noble Baroness, Lady O'Cathain, raised. She represented the amendment as being an attack on own-brand products. I wish to follow the noble Baroness, Lady Hamwee, in saying that the amendment is not an attack on own-brand products; it is directed at own-brands dressed up to look like other brands which themselves have well established reputations. Like the noble Baroness, Lady Hamwee, I am not convinced that this is a coincidence. On the contrary, I am certain that it is a deliberate and unfair attempt to trade off the back of the reputation of famous brands.

My noble friend Lady Hooper asked what I meant when I referred to the fact that the current law is inadequate in providing a remedy. My reason for saying that is that passing off has not been found to provide a satisfactory remedy because manufacturers are required to produce evidence of confusion among customers and it is extremely difficult to collect such evidence. Those endeavouring to do so are ejected from premises. Judges are extremely difficult to persuade that there has been such confusion. As a result, the chances of success in bringing an action are small.

I am happy to agree with my noble friend that this matter has to be left for another day and another place but, unlike him, not for another Bill. I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

Clause 73 [Power of Secretary of State to make rules]:

The Earl of Harrowby moved Amendment No. 12: Page 30, line 38, leave out ("may") and insert ("shall").

The noble Earl said: My Lords, in moving this amendment, perhaps I may also speak to Amendment No. 13. Those Members of your Lordships' House who were Members of the Committee will recollect my raising the subject of principle of open-ended cheques. Clause 74(1) states: There shall be paid in respect of applications and registration and other matters under this Act such fees as may be prescribed". I have had lengthy correspondence and discussions with my noble friend's officers and so forth. It has been explained to me that "prescribed" means something specific and not what I understand the word to mean. That is fine, but there is still an open-ended cheque. The reason for that is because, when my noble friend says that there are conventions, they lie in the prescription which is that, The Secretary of State may make rules as stated in Clause 73(1). "May" is the operative word; he does not have to. It is still an open-ended cheque until he has to make rules about pay. I do not doubt for a moment that he will or that he will be sensible, but the circumstances may not be the same in 20 or 50 years' time. It is now almost 50 years since the previous legislation on trade marks was enacted. A lot can happen in that time.

I do not believe that we should leave on the statute book open-ended options for any individual, however responsible, by which that person can charge whatever he likes without some form of legislative curtailment. I think that it is wrong that the Bill leaves totally optional that which an unnamed person can do. That is why I am moving an amendment to ensure that the Secretary of State "shall" make rules—the rules will then have to be made—and that they "shall" be as prescribed, not "may" be as prescribed. I beg to move.

Lord Airedale

My Lords, I notice that subsection (1) states: The Secretary of State may make rules". Subsection (3) states: Rules under this Act shall be made by statutory instrument". One would think that subsection (2), sandwiched between them, would state that "rules" may, in particular, be made", in certain circumstances and for certain purposes, but, in fact, it states: Provision may, in particular, be made, for certain purposes. If subsection (2) is meant to be operated by rules—I imagine that it is—it would be clearer if the legislation actually stated that instead of, "Provision may … be made". There might be confusion, so I offer that suggestion.

Lord Strathclyde

My Lords, that was a nice suggestion from the noble Lord, Lord Airedale; but I do not think that there is any confusion. I do not think that anybody will be confused by the wording as drafted.

It is standard drafting practice for a statute to empower the making of rules, rather than to require them to be made. That is a point that I make to my noble friend. That was, for example, the case in Section 40 of the Trade Marks Act 1938, which this Bill replaces. Therefore, we are not going into uncharted waters with this provision.

Moreover, the fact that the Bill authorises something to be prescribed does not mean that this has to be prescribed. In the case of Clause 74, for example, it may be decided that there are no circumstances in which a single fee should cover two or more matters. Perhaps I should stress that the fact that a provision says that the Secretary of State "may" prescribe something by rules does not mean that he can prescribe it by some other route if he is so minded. He can either prescribe it by rules, or not at all. This in particular applies to the fees to be changed by the Patent Office in this Bill. As I explained to the House at Report, the reference to such fees having to be prescribed means that they must be determined by statutory instrument. This means that the fees have to be approved by a Minister before he makes the rules, and the instrument then has to be laid before Parliament, where it can be prayed against in either House. I know that my noble friend's anxiety is that we could see a spiralling of costs, but that could occur only when an order had been laid, and a noble Lord is entitled to pray against an order.

The Earl of Harrowby

My Lords, I thank the Minister for his reply. I hope that this matter will receive some attention in its next stage in another place. That is the main reason I tabled the amendment. I do not believe that the present position is satisfactory. I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

[Amendment No. 13 not moved.]

7.45 p.m.

Clause 87 [Delivery up of offending goods, material or articles]:

Lord Clinton-Davis moved Amendment No. 14: Page 36, line 37, leave out subsection (1) and insert: ("( ) Where infringing goods, material or articles are seized from any person, application may be made to the Court by the party which made the seizure for an Order that the goods, material or articles in question be delivered up to such person as the Court may direct, whether or not the person from whom the infringing goods, material or articles were seized is prosecuted or convicted of an offence under section 86.").

The noble Lord said: My Lords, I have given notice to the Minister's Private Office and his officials about the purpose of this amendment, which stands in the name of my noble friend Lord Haskel. I shall await the Minister's reply with interest.

The essential purpose of the amendment is to deal with a mischief that can and does create considerable and unnecessary prejudice to trade mark owners. As I understand it, the present law is that if a person is convicted of an offence under Section 58 paragraph (b) of the Trade Marks Act, the court may order the goods or materials which are seized by the authorities to be delivered up to such persons as the court may direct. However, where goods are seized and no prosecution ensues—or no successful prosecution ensues—no application for delivery up can be entertained by the court under Section 58 paragraph (b). Furthermore, if the person in receipt of the goods refuses to disclaim them, the prosecuting authorities are obliged to return the goods to that person with the consequential risk that they may find their way back on to the market unless the trade mark owner obtains a High Court injunction to prevent that from happening, which of course puts him to considerable time, effort and money. Meanwhile—perhaps even more seriously—further injury may be sustained by the public.

I am in a position - I shall not be tempted by it—to illustrate the point by reference to a number of factual cases which have been drawn to my attention in which authorities have seized goods which were suspected to be counterfeit. Although the trade mark owner, following inspection, confirmed that view and confirmed the view that the goods were undeniably and noticeably inferior, prosecutions either have not taken place, have been withdrawn or have been unsuccessful. In those circumstances, no application could be entertained by the court that the goods in question should be destroyed or that the infringing trade mark should be obliterated before the goods are returned to the person from whom they were seized with the ensuing prejudice to the trade mark owner and potential prejudice to the public.

In the case of which I am thinking, the trade mark owner was unable to secure a disclaimer from the persons from whom the goods were seized. Therefore, the only remedy available was to sue such persons. The difficulty there is that frequently, by the very nature of their operations, such persons are people of straw—uncontactable or untraceable. The only interest that the trade mark owner would have in those circumstances would lie in seeking to eliminate the goods from the market by destroying them.

There is a substantial case to be made for this amendment. I do not know whether we have dealt with the matter sufficiently within the terms of the amendment; but I invite the Minister to comment on the principle. I hope that the Minister will be nice to me because I am relinquishing my virginity so far as concerns the Bill, and I know that the Minister is always charming, pleasant and helpful. Perhaps he will be so on this occasion. I beg to move.

Lord Strathclyde

My Lords, the noble Lord, Lord Clinton-Davis, relinquishes his virginity most capably. I am delighted at the way in which he has offered us this amendment and welcome him to our deliberations on the Bill. If he had spent more time on it, he would have discovered that its passage through this House has been extremely smooth. I hope that we shall not have a hiccup with this amendment.

On the face of it, the amendment seems a case of finding somebody guilty although they have been found not guilty by a court. On taking a second look at it, I can understand the point that the noble Lord was making. As a government, we are well aware of the damage that is caused to the economy by counterfeit goods. However, if a person prosecuted for trade mark counterfeit is acquitted, the court cannot simply go ahead and treat the goods in the same way as if that person had been convicted. It may be that the defendant has not argued that the goods are genuine. He may even have admitted that they were fake, but has convinced the court that he is not guilty of an offence concerning them. In such a case, it is still possible for the trade mark owner to bring a civil action under Clause 15 where it is not necessary to point the finger at a particular offender and where the burden of proof will not be the same as in a criminal charge. In such an action he can ask the court to order that the goods be delivered up to him, for example, for destruction.

The noble Lord, Lord Clinton-Davis, raised questions which go to the root of our policy on counterfeiting. They may require further re-examination and therefore I cannot accept the amendment that he has put before the House. However, I offer him the commitment that between now and the Bill being introduced in another place we shall examine the matter carefully. If there is a loophole and a way of closing it, we shall seek to do so. I hope that on that basis the noble Lord will withdraw his amendment.

Lord Clinton-Davis

My Lords, my expectations of the Minister have been wholly fulfilled. He is charming, nice and flexible on some occasions and tonight is no exception. I am grateful for his commitment and cannot expect him to go further. I beg leave to withdraw the amendment and shall write to the Minister giving further details than I have been able to expound tonight.

Amendment, by leave, withdrawn.

Clause 97 [Offences committed by partnerships and bodies corporate]:

The Earl of Harrowby moved Amendment No. 15: Page 41, line 25, leave out ("proceeded against and").

The noble Earl said: My Lords, the amendment has received considerable discussion on previous occasions and I am grateful to my noble friend for writing to me about it. The trouble arises as a result of the drafting; that is the English. In excuse it is said to be standard phraseology. The fact that a phrase has been used previously does not excuse bad English in legislation. The provision reads: is also guilty of the offence and liable to be proceeded against and punished accordingly". I am not a lawyer but I do not understand how one can be proceeded against if one has already been found guilty.

My noble friend wrote to me using the phrase "double liability". I do not know whether that is legal terminology. I suspect that it is not and that it is something that has come out of his great intelligence. Nevertheless, I strongly object to using a phrase which does not make sense, which is bad English and being told that it has been used previously. For that reason I table the amendment, which I hope will receive attention from those who are more able to make a case of this nature. I beg to move.

Lord Airedale

My Lords, I support the amendment. I join the noble Earl in trying to avoid the perpetuation of a piece of nonsense. To say, is also guilty of the offence and liable to be proceeded against", is nonsense, because if he is guilty of the offence he will have been proceeded against. The Bill puts the cart before the horse. It is like the King's messenger in Alice in Wonderland who was going to be hanged tomorrow. Alice said, "What has he done?". She was told, "Well, the offence isn't until next week". Alice said, "Supposing that he does not commit the offence?". "Well", she is told, "that will be all the best, silly child".

Lord Strathclyde

My Lords, this is the third occasion on which my noble friend has raised the issue and therefore I safely assume that I have not convinced him of the correctness of the Government's case. Perhaps the slight problem is that the phrase is a standard formulation which appears in other statutes which have to deal with offences committed by partnerships. No doubt it would be possible to express it differently; perhaps in a more logical way. However, in seeking to clarify we could perpetuate or even create further confusion. It might be argued that if we had adopted a wording different from what is found in other measures Parliament must have intended it to have a different effect from those other measures. We are not intending that at all.

I believe that the provision is clear. In my defence I say that the phrase is clearly understood by those who have to use it. Partnerships, lawyers and the courts can all understand what has been said in the past and therefore will clearly understand what is said in this particular cause. If the partnership is guilty so is each of the partners, unless shown to have been ignorant of the offence or to have tried to prevent it. The partner is therefore liable to be punished accordingly. However, before he can be so punished he must be proceeded against.

I do not wish to continue the debate unduly. I accept, as does my noble friend, that essentially this is a matter of drafting. Perhaps on that basis we can agree to differ and he will withdraw his amendment.

The Earl of Harrowby

My Lords, I thank my noble friend and I agree to differ. I am grateful to him for the trouble that he has taken and for giving the time that I have demanded from him. I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

Schedule 2 [Certification marks]:

The Earl of Harrowby had given notice of his intention to move Amendment No. 16:

Page 48, leave out lines 2 to 4.

The noble Earl said: My Lords, again I thank the Minister. I hope that the comments that I made in respect of the previous amendment will not be regarded as ungracious. They were not meant to be because I have great admiration for my noble friend. I shall not move the amendment.

[Amendment No. 16 not moved.]

Lord Strathclyde moved Amendment No. 17: Page 49, line 35, leave out from beginning to end of line 8 on page 50.

The noble Lord said: My Lords, these amendments deal with infringement concerning certification trade marks. The House will recall that at Report we completely re-cast the clauses of the Bill which deal with the licensing of trade marks. This included those provisions of Schedule 2 which would have placed an authorised user of a certification mark in the same position as a licensee under an ordinary trade mark. In particular, it would have allowed such an authorised user to take infringement proceedings.

This is not the case under the present law and, on reflection, the Government have decided that it would not be appropriate to make such a change. This is because, given the nature of the certification marks, it is the proprietor who should be responsible for protecting it and not an authorised user. For example, the duty to protect the 'Woolmark' must be on the shoulders of the International Wool Secretariat and not an individual producer of woollen garments (who would also add his own trade mark to the label). A licensee, on the other hand, is in a totally different position since he may be the only user of the mark; the proprietor may not be using it himself.

It is not possible for a licensee to take advantage of the provisions of the Bill, which give him his rights and remedies in relation to infringement unless he has recorded the fact that he has a licence on the trade marks register. This is reasonable when it comes to licensees, since they have always been entered on the trade marks register and anyone can go and look to see who they are. However, when it comes to authorised users of certification trade marks, these are not recorded on the trade marks register. Only the proprietor of the certification trade mark knows who they are. It is not therefore appropriate to place them in the same position when it comes to taking action for infringement.

Nevertheless, the provisions of paragraph 14 of Schedule 2, which allow the court to take account of any loss suffered by authorised users of certification marks when, for example, assessing damages in an infringement action, will remain after this amendment. I beg to move.

On Question, amendment agreed to.

Schedule 3 [Transitional provisions]:

Lord Strathclyde moved Amendment No. 18: Page 52, line 1, leave out from ("Act") to ("applies") in line 2 and insert ("(court to take into account loss suffered by authorised users, &c.)").

On Question amendment agreed to.

An amendment (privilege) made.

8 p.m.

Lord Strathclyde

My Lords, I beg to move that this Bill do now pass. As noble Lords will have realised, the Trade Marks Bill is technical and complex. It was also the first Bill for a number of years that your Lordships agreed should be considered by a Public Bill Committee off the Floor of your Lordships' House. That was a wise decision and I believe that the result has fully demonstrated the value of such a procedure in considering a Bill of this nature.

Voltaire said: No problem can stand the assault of sustained thinking". The spirit of co-operation and the positive contributions during discussion of the Bill in the Committee bore that out. Although not all noble Lords' interests could be accommodated, there were lively discussions on a range of issues and a number of proposals made for amendment to the Bill. I should like to thank the noble Lord, Lord Peston, and the noble Baroness, Lady Hamwee, for their thoughtful approach and suggestions for ways in which the Bill might be improved or clarified.

The Trade Marks Bill, though, as I have said, both technical and complex, is of considerable importance to industry and commerce which wish to register and protect their trade marks. The Bill implements an EC directive and in doing so will make it easier for a trade mark to qualify for registration and provide wider infringement rights. It will also enable the United Kingdom to ratify the Madrid Protocol and deregulate procedures. All of those will make it simpler and cheaper for industry and commerce to protect their marks in the United Kingdom and overseas. The wider infringement rights will also ensure that business does not have to resort to expensive common law action for passing off to protect trade marks. At the same time the Bill will also strengthen the measures available to deal with counterfeiting.

As a result of your Lordships' deliberations, a number of improvements have been made to the Bill. Within the framework of the EC directive and in line with the aims of the Bill, we have been able to take account of a number of points and amend the Bill for the positive benefit of users of the trade mark registration system. Some examples of these are: recasting the provisions on counterfeiting to ensure that the innocent infringer is not caught by the criminal offence of making or selling goods bearing, without permission, someone else's trade mark; revision of the licensing provisions of the Bill to ensure that they fully reflect what happens in the market place and the needs of business; providing for the acceptance by the registrar of applications for registration of trade marks which conflict with existing registrations but where the applicant can show honest concurrent use of their mark; and the amended definition of "use" which broadens the protection given to a registered mark so that non-graphic use of a trade mark may be actionable for infringement.

The Trade Marks Bill is an example of the Government's commitment to help industry and commerce compete for business at home and overseas. The Bill will help companies to exploit their goods and services based upon valid, secure and protected trade mark registrations on the same basis as their competitors. Administrative procedures will be simpler and costs reduced thus helping to foster support and innovation.

I thank the Bill team for the enormous amount of work that it has done within the department to make sure that we could deal with all the points raised. I thank the authorities of your Lordships' House which made Committee stage and, indeed, all stages, simple. I commend the Bill to the House.

Moved, That the Bill do now pass.—(Lord Strathclyde.)

Lord Peston

My Lords, it is a pleasant albeit rare occasion when I can say that I agree with every word that the Minister has just said. I thank all noble Lords who have taken part in all stages of this Bill. I believe that we have seen your Lordships' House at its very best. I must congratulate the Minister and his officials for all that they have done. It has been an excellent performance and much appreciated. I thank my own advisers, especially Mrs. Lane who is a senior lecturer in law at Queen Mary and Westfield College.

This Bill has been a model of how our business should be conducted. I hope that other Bills will be tackled in that way. I would go further. It would improve our efficiency if interested Peers could sit in the form of a committee to take technical advice jointly rather than what has been done; namely, the same people have told each of us separately the same things and then we all get together and retail it across the Floor of the House. It would be much better if we could take the evidence jointly; but that is for the future.

For the present, as the noble Lord, Lord Strathclyde, said, I believe that we have made a useful though minor contribution to the efficiency of British industry. I look forward to the enactment of the Bill into our law with very little delay.

Lord Reay

My Lords, like my noble friend, I believe that committing the Bill to a Public Bill Committee off the Floor of the House has worked well. I believe that it was a good choice of Bill for such an experiment. I am sure that time on the Floor of the House has been saved.

At all stages, the passage of the Bill has been characterised by a constructive and co-operative attitude, both from the leadership of the parties opposite and from the Government. I pay tribute to all of them. The Government have been very responsive. They have met satisfactorily a large number of the anxieties expressed to them and I wish to convey the appreciation of the CBI in particular for the way in which the Government have listened to the views of industry.

At all times my noble friend and his officials have remained accessible. I thank them for their open-mindedness and helpfulness, which has ensured that the Bill leaves this House better than when it came here.

The views of the CBI have not always prevailed. The CBI is not the enthusiast for comparative advertising which, rather surprisingly, the Government have emerged to be. The Government have leapt into an area which the European directive did not oblige them to leap into. They chose to enter that, following the impulse of their own philosophy. I believe that they should have waited until the European directive on comparative advertising—now once again imminent—had first been agreed. They have jumped the gun and may well pay a penalty for having done so.

I keenly await the outcome of the look-alike issue, where I hope that the just cause prevails. Otherwise, I support the Bill. It is a constructive and overdue measure which updates antiquated law and which fulfils some of our Community obligations. I wish it well.

Baroness Hamwee

My Lords, I thank the Minister for the way in which he has helped to guide the rest of us—perhaps I should not apply my own position to the rest of your Lordships—through a very complicated Bill. Some of your Lordships may have felt, as I did, that we have had an opportunity to concentrate on particular issues which have interested and concerned us, and we have had the confidence that the technicalities in the background have been dealt with competently.

I must confess that, to that extent, I have found it a slightly frustrating experience in that after every stage of the Bill I have wondered whether I have missed some wrinkle which should have been ironed out. Your Lordships have said that the Bill protects the interests of industry, manufacturers, and so on. I hope that we have also made it a better Bill for the consumer.

In addition to the experience of taking the Bill through a Public Bill Committee, it has benefited also from the considerable amount of preparatory work that was done—the consultation with the committee—to which noble Lords have referred at a number of stages. I take this opportunity to mention one matter which, on a future occasion, may be dealt with even more helpfully; that is, the question of seeing the precise wording of a draft Bill at a very early stage.

I understand the question of parliamentary privilege but it seems to have been overcome as regards the proposed Sunday trading legislation, where the draft Bill was annexed to the White Paper. It would have been even more helpful had the precise draft Bill been made available at a similarly early stage for all those who have given so much of their time from outside the House to improve the Bill during its passage.

I thank the Minister. He has had many difficult and sometimes, I suspect, rather surprising points bowled at him and he has dealt with them clearly and helpfully.

Baroness Hooper

My Lords, as my noble friend said, the Bill is an important one. As one who pressed the Government—though perhaps in a small way—to bring forward legislation in order to up date our trade mark law to comply with the European directive, and indeed to implement the Madrid Protocol, I am very happy to be present at this stage of the proceedings. We now have a Bill which benefits manufacturers, consumers and practitioners in the field.

I should also like to thank the Government for having produced the legislation and for the wide consultation that went on before it was produced which enabled it to pass through your Lordships' House so smoothly, albeit with a few small additions and amendments. I should also like to express my thanks to my noble friend the Minister and his team for the way in which they dealt with all our queries and amendments. They did so in such a competent and cheerful manner, both behind the scenes as well as on the Floor of the House.

Lord Lucas of Chilworth

My Lords, I very much regret that I am the only one of your Lordships who is likely to strike a moderate note of discord. I told my noble friend the Minister that I would strike such a note. However, that does not in any way detract from my thanks to him for the manner in which he conducted the Government's business, and indeed attended to those questions which I raised with him both outside the Chamber as well as during the Committee stage. The amendment that I tabled was dealt with on Report by my noble friend Lady Hooper in my unavoidable absence.

Retailers have been left outside the scope of the Bill. While my noble friend the Minister had some sympathy for the cause of retailers to register "retail services" in the terms of the Bill, I do not believe that his enthusiasm was shared by officials in the Patent Office. It is all very well to talk about interpreting or translating the Community directive; but it is in the interests of our retailers that we find a way to deal with a European Community directive that benefits us and which does not put our retailers at a disadvantage. That is the note of discord—indeed, the mark of disappointment—that I have so far as concerns the Bill.

Nevertheless, I believe that we have made great progress since the matter was last dealt with about 50 years ago. It has been much fun to deal with the Bill off the Floor of the House. That process was most useful for dealing with such a specialist Bill. I hope that the other place will deal with the Bill as sympathetically and with as much dispatch as we have and that we will find it on the statute book before many weeks have passed.

Lord Brightman

My Lords, perhaps I may be allowed to take up a few minutes of your Lordships' time in order to commend the draftsman of the Bill. I wish to commend him for including Clause 100. The clause is an index of "defined expressions". If noble Lords look at the clause, they will see that the left-hand column contains 47 words and expressions which have a special definition in the Bill. The right-hand column tells the reader exactly which section to refer to in order to see what the word or expression means.

Clause 100 is an immense time saver. It saves the reader of a Bill having to find out, laboriously pouring over the different clauses, whether a particular word or expression is defined and where to find its meaning. That practice was first applied in 1975. I do not believe that there was an earlier use of an index of defined expressions. There have been approximately 1,000 Acts of Parliament since that date, but only about 20 of them have included an index of defined expressions. Of course, such an index is not of any use in a very short Bill; but, in a long Bill—such as the Companies Act 1985 which did not have such an index—it is extremely useful. In fact, the practice was found so useful that when the Companies Act 1989 came to amend the Companies Act 1985, an index of defined expressions was introduced into the latter.

I have discussed such a device—if I may call it that— with several noble Lords. I am authorised by the noble Lord, Lord Renton, to say that he entirely agrees with the inclusion of such a clause into this type of Bill. So also said my noble and learned friend Lord Simon of Glaisdale. Moreover, I also took up the matter with the noble Lord, Lord Allen of Abbeydale. He wrote to me to say that he finds such an index to be very helpful and that he hopes the practice will spread, at any rate, for longer Bills.

As I said, the draftsman should be commended. I hope that his attention will be drawn by the Minister to my commendation, and perhaps that of other noble Lords.

Baroness O'Cathain

My Lords, I should just like to say that I entirely agree with the noble and learned Lord.

Lord McGregor of Durris

My Lords, I should like to add my layman's voice to the commendation made by the noble and learned Lord, Lord Brightrnan, on the value of Clause 100 in the Bill. Such a clause which rehearses the definitions of expressions used in the Bill is, as the noble and learned Lord said, immensely time saving and very helpful to the unlearned reader. I should like to echo the noble and learned Lord's wish that that habit of drafting will spread.

Lord Strathclyde

My Lords, I should like to thank all noble Lords who have spoken. I am sorry that my noble friend Lord Lucas is still unhappy with what we decided upon as regards retail services. The House will no doubt recall the force with which he spoke during Second Reading and in Committee. We considered very carefully whether we should agree to defining in the Bill the services for which a trade mark might be registered as including "retail services". However, we came to the conclusion that such a definition would be putting an unacceptable gloss on the meaning of the directive.

Nevertheless, it is possible that, at some future date, a court—perhaps even the European Court of Justice —may decide that the expression "services" in the directive in fact includes the activity of retail trade in goods. If so, nothing in the Bill would prevent the registration of such marks. However, we did not feel that we could do so in the present Bill.

I am overwhelmed by the words of the noble and learned Lord, Lord Brightman, the noble Baroness, Lady O'Cathain, and the noble Lord, Lord McGregor of Durris who all congratulated the parliamentary draftsman. I entirely agree with the words expressed. Indeed, the clause deals with definitions in a sensible and efficient manner. I am sure that the parliamentary draftsman will note and very much appreciate the comments made. In anticipation of that, I hope that the House will now agree that the Bill do now pass.

On Question, Bill passed and sent to the Commons.