HOUSE OF COMMONS.
STANDING COMMITTEE C.
TRADE MARKS BILL.
THE COMMITTEE CONSISTS OF THE FOLLOWING MEMBERS—
Nicholson, Mr. William (Chairman)
*Benn, Captain Wedgwood
Boscawen, Sir Arthur Griffith
*Coats, Sir Stuart
Coote, Mr. William
Davies, Mr. A.
Davison, Mr. J.
*Doyle, Mr. Grattan
Falle, Major Sir Bertram
*Geddes, Sir Auckland
*Greame, Major Lloyd-
Green, Mr. Joseph
Greenwood, Sir Hamar
*Griffiths, Mr. Thomas
Harmsworth, Mr. Cecil
Hope, Mr. John Deans
Horne, Sir Robert
Jones, Sir Evan
Larmor, Sir Joseph
*Marks, Sir George Croydon
Morrison, Mr. Hugh
Pollock, Sir Ernest
Sykes, Colonel Sir Alan
*Walsh, Mr. Stephen
Walton, Sir Joseph
White, Lieut.-Colonel Dalrymple
White, Mr. Charles
Wilson, Capt. Stanley
Wilson, Lieut.-Colonel Sir Mathew
Wood, Major M'Kenzie
* Added in respect of the Patents and Designs Bill and the Trade Marks Bill.
Mr. Legge and Mr. Diver, Committee Clerks.538 539 STANDING COMMITTEE C Thursday, 7th August, 1919
[Mr. W. NICHOLSON in the Chair.]
I.—(I) The register of trade marks (including the Manchester Register) kept under the Trade Marks Act, 1905 (hereinafter referred to as the principal Act), shall be divided into two parts to be called respectively Part A. and Part B.
Question proposed, "That the Clause stand part of the Bill."
Colonel GRETTON: This Clause is of importance and raises the whole question of two Registers. The question of "B" Register is important. There are a number of trade marks in this country which cannot be registered under the present Act, but in which the owners have acquired proprietary rights which they can enforce under the Common Law, hut not under the Trade Marks Act. Such trade marks are under the disability that in many countries abroad they cannot be registered because they are not registered in this country. This is a grievance which it is perfectly right should be remedied. On the other hand, there are certain dangers. There is the danger that this "B" Register may in some respects tend to invalidate the value of the "A" Marks which are registered under our present Acts. If these trade marks registered under "B" are regarded as being of an inferior category, there is also very great danger that the whole purposes of this part of the Bill may fail, because foreign countries may refuse to register these trade marks in the second category on the ground that they do not conform in all respects to the full law of this country. I am going to ask the Solicitor-General if he can give an explanation how the Board of Trade proposes to guard against the second of the two evils or difficulties which may arise, and ensure that Part I. of this Bill does not fail in its effect owing to any indication on the face of the Register or other cause that the marks in 540 Register "B" are inferior. I understand the main object is that these trade marks shall be registered abroad so that their owners may not fail to obtain the advantages to be secured under the law of foreign countries.
The SOLICITOR-GENERAL (Sir Ernest Pollock): This Bill is for the purpose of improving the position of persons who are at the present time the owners at Common Law of Trade Marks, but who at present have no opportunity of being registered because their trade marks are not of such a character as can fulfil the somewhat stringent demands of the present trade mark system. It is not very easy to alter that system, and, as my hon. Friend has rightly pointed out, a certain number of owners of trade marks would feel in a better position if they were able to be registered. We hope, and I think not without good reason, that the registration which will now be offered to both classes of trade mark owners may facilitate the registration and recognition abroad. I do not want to say more because I do not think it would be wise at the present time to dwell too much upon that, but at present a certain number of trade marks are unable to comply with the stringent conditions of registration and so fall out of registration altogether. This Bill has been most carefully drafted. I am sorry to say that two very important persons responsible for it, are, unhappily, no longer with us. I refer to the late Lord Parker, of Warrington, who was a great authority, and a great friend of many of us, Mr. Walter, who was a man of great competence and knowledge in these matters. I say this because the Committee will then recognise that this Bill is not put forward as a hurried piece of legislation. It was considered by them, and Lord Parker died fully a year ago, if not more. Therefore, it has been more than carefully considered. My answer really is that these two classes, A and B, are only put forward because it is impossible, without altering the present structure of the Trade Mark System, to put all the trade marks which will fall into the new Category "B" into Category "A." They are intrinsically incapable of being registered at the present time. The right thing is to make one register, and, although we have Part "A" and Part "B," so far as actual registration goes, it will be really all one register. If you scrutinise the register you will find that there are two parts of it, "A" and "B," but for the purposes of the outside world every owner of a trade mark will be justified in saying that he is the owner of a registered trade mark. Once he can say that, 541 there are not many people, except those who have an intimate knowledge of the Trade Mark Law, who will scrutinise the fact to see whether he is registered in Part "A" or "B." Under these circumstances, we do think this registration Clause of great importance, and I hope the Committee will allow the Clause to stand part of the Bill.
Colonel STEPHENSON: May I ask what is the actual difference between Part "A" and Part "B"?
Sir E. POLLOCK: At the present time Register "A" comprises all those trade marks which are capable of fulfilling the requirements of the existing Trade Marks Law. Part "B" comprises those which are perfectly valid trade marks, perfectly good property at Common Law, but which are incapable of fulfilling the present stringent definition to enable them to be registered. We are, then, going to register good trade marks at Common Law and they will fall into Category "B."
Colonel STEPHENSON: Are those that are going to be put into Part "B" subject to any dispute or claim? Are you going to wash out all claims against them, or anything of that sort?
Sir E. POLLOCK: Of course, they are open to opposition. If my hon. Friend will look at the Clause he will see "Part 'B' shall comprise all trade marks registered under this Part of this Act, and all trade marks entered on or removed thereto under this Act." The meaning is that the fact that a trade mark is registered does not prevent it having opposition. It does not alter its character. At the same time it enables good trade marks, which are not by means of opposition cut out, to be registered.
Question put and agreed to.
Clause ordered to stand part of the Bill.
"(I) Where any mark has for not less than two years been bona fide used in the United Kingdom upon or in connection with any goods (whether for sale in the United Kingdom or exportation abroad), for the purpose of indicating that they are the goods of the proprietor of the mark by virtue of manufacture, selection, cer- 542 tificatian, dealing with or offering for sale, the person claiming to be the proprietor of the mark may apply in writing to the registrar in the prescribed manner to have the mark entered as his registered trade mark in Part 'B.' of the Register in respect of such goods.
"(2) The registrar shall consider every such application for registration of a trade mark in Part 'B.' of the Register, and if it appears to him without search that the application is inconsistent with the provisions of Section n or Section 19 of the principal Act, or if he is not satisfied that the mark has been so used as aforesaid, he may refuse the application or may accept it, subject to conditions, amendments, or modifications as to the goods or classes of goods in respect of which the mark is to be registered, or to such limitations, if any, as to mode or place of user or otherwise as he may think right to impose, and in any other case he shall accept the application.
"(3) Every such application shall be accompanied by a statutory declaration verifying the user, including the date of first user, and such date shall be entered on the Register.
"(4) Any such refusal or conditional acceptance shall be subject to appeal to the Court, and if the ground for refusal is insufficiency of evidence as to user, such refusal shall be without prejudice to any application for registration of the trade mark under the provisions of the principal Act.
"(5) Every such application shall be accepted and advertised in accordance with the provisions of the principal Act.
"(6) A mark may be registered in Part 'B,' notwithstanding any registration in Part 'A,' by the same, proprietor of the same mark or any part or parts thereof."
Colonel GRETTON: I beg to move, in Subsection (2), after the word "aforesaid" ["mark has been so used as aforesaid"], to insert the words, "after hearing the applicant." The purpose of these words is to ensure that the applicant may have a hearing before the case is decided. I understand that provision is made at present in the rules requiring the applicant to be heard. Of course, I admit that there are some disadvantages in the insertion of the words. It compels the registrar or Court to hear the applicant whether he desires to be heard or not. If the case goes through without opposition and without objection, he still has to be heard. I formally move the Amendment in order to ask the Solicitor-General if he can give an assurance to the Committee that the existing rule will be, in fact, part of the Act, and will be applied to Part "B," as it applies to trade mark cases coming under the existing Act.
Sir E. POLLOCK: I am very glad indeed to make the explanation. It is really the same explanation that I gave to the Committee in answer to a similar question which arose on the Patents and Designs Bill yes- 543 terday. Under the rules there is a provision that in every case where an applicant is dealt with adversely by the Comptroller, no such adverse decision can be given unless he has been heard. Therefore in all cases, unless the Comptroller accepts the application, the applicant has to be heard. That is in the rules, and those rules stand, and will remain. The intention is that the applicant shall still be heard in all cases where there is a danger of his being treated adversely. As I pointed out yesterday on the Patents Bill, there are certain cases where it is unnecessary to hear the applicant, because the Comptroller is ready to decide in his favour. Under the Patents and Designs Act of 1907, although the Comptroller was ready to decide in favour of the applicant, in order to comply with the Statute, the applicant had to go to the Comptroller and the Comptroller had to secure the attendance of the applicant and say to him, "Good morning," and the applicant had to say, "Good morning" before the Comptroller was able to act. That seems to me a wholly unnecessary expenditure of time and money. This occurred because it was a condition precedent under the Act that the applicant must be heard. It seems to me that the procedure would be much more flexible if it were not a condition precedent, and if it were dealt with in the rules. To put it in as a condition precedent that in all cases the applicant must be heard seems to me to put an unnecessary burden upon the Comptroller and upon the applicant, and on that account I venture to say that the insertion of these words is unnecessary.
Colonel BOWLES: It is not quite clear to my mind, because it refers, I take it, to the other Act, and unless one knows the wording of that Act, the statement that the hon. and gallant Gentleman has just made is not quite clear from this Amendment.
Sir E. POLLOCK: I only referred to what happened yesterday because I thought it might be in the minds of some Members of the Committee.
Colonel BOWLES: It seems to me that this is somewhat different.
Sir CROYDON MARKS: No, it is exactly the same.
Colonel GRETTON: I do not think it is necessary for me to proceed further.
Amendment, by leave, withdrawn.544
Amendment made: In Sub-section (5), leave out the words "be accepted and" and insert instead thereof the words "if accepted be." [Sir E. Pollock.]
Clause, as amended, ordered to stand part of the Bill.
CLAUSES 3(Application of certain provisions of principal Act to Part "B" trade marks.) 4 (Effect of registration in Part "B") and 5 (Power to treat applications for registration in Part "A" as applications for registration in Part "B") ordered to stand part of the Bill.
"(I) Where in the case of an article or substance manufactured under any patent in force at or granted after the passing of this Act, a word trade mark registered under the principal Act or Part 'I.' of this Act is the name or only practicable name of the article or substance so manufactured, all rights to the exclusive use of such trade mark, whether under the Common Law or by registration (and notwithstanding the provisions of Section 41 of the principal Act), shall cease upon the expiration or determination of the patent, and thereafter such word shall not be deemed a distinctive mark, and may be removed by the Court from the Register on the application of any person aggrieved.
"(2) If the proprietor of any registered word trade mark uses his mark as the name or only practicable description of any single chemical substance, such mark may, notwithstanding Section 41 of the principal Act, be removed by the Court from the Register on the application of any person aggrieved: "Provided that— "(a) the provisions of this Sub-section shall not apply where the mark is used to denote only the proprietor's brand or make of such substance, as distinguished from the substance as made by others, and in association with a suitable and practicable name open to the public use; and "(b) in the case of marks registered before the passing of this Act, no application under this Section for the removal of the mark from the Register shall be entertained until after the expiration of four years from the passing of this Act.
"(3) The power to remove a trade mark from the Register conferred by this Section shall be in addition to and not in derogation of any other powers of the Court in respect of the removal of trade marks from the Register.
"(4) The provisions contained in Part 'III.' of this Act authorising applications for the rectification of the Register to be made in the first instance to the registrar instead of to the Court shall apply to applications under this Section."
Mr. HOOD: I beg to move, in Sub-section (1), to leave out the words "name or" ["a 545 word trade mark registered under the principal Act or Part I. of this Act is the name or only practicable name"]. There is a good deal of apprehension on the part of large trade mark owners that this Clause will seriously affect their existing marks. I would like to illustrate the argument by referring to a mark which has been brought to my attention. There is a well-known brand of soap called "Lux" upon which large sums of money have been spent. The brand is known as "Lux," not as Lux Soap or Lux Flakes, or anything of that sort. The owners think that if this Clause is passed as drawn it will seriously affect their mark, upon establishing which they have spent large sums of money, and in respect of which they have much advertising material, such as sign plates, etc. They say that the effect of this Clause, if passed as drawn, will be that they will have to alter the name and call it "Lux Soap" or "Lux Soap Flakes," and therefore they will have to destroy the whole of the very large stock of advertising material that they have on hand. If this is so, I think there is very great force in the objection that they make.
Sir E. POLLOCK: I do not think that the misgivings which my hon Friend (Mr. Hood) has referred to are well founded. I do not think that this Clause would refer at all to "Lux." If I am correctly informed, "Lux" is not a patented article, nor is it one chemical substance. It is a soap composed of many chemical substances. Therefore, this Clause has no application to it at all. To use an old phrase, the owners of "Lux" may sleep in their beds without any misgivings. The real purpose of this Clause is this. There are a certain number of named substances which have secured a trade mark because they are made by means of a patented process. This patented process runs for, say, 14 years, and while they are patented and protected by the patent laws, there is a trade mark registered in order to cover the name given to the substances which are made by the patented process. At the end of the 14 years, although everybody has the right to make that substance by any other method, and even by the patented method, which is no longer protected, because the patent has run out, the public is in the unfortunate position that they still have to secure this substance from those makers who have got the "used" name, in respect of which it is known to the public, a name, moreover, which has probably by this time become a proprietary name. If the public generally had the opportunity of making the same substance by any process, it could 546 be made, and possibly be made very much more cheaply. That applies to a very large number of chemical substances made by the Germans, and it is really for that purpose that we are putting forward this Clause. Take the case of "Eurotropine"; it is a chemical substance which can be made by anyone who knows what it is made of. It is really simply hexamethylene tetramine, and anybody can make this, and anyone can therefore make "Eurotropine." But because the Germans have got that name applied to that substance, they are endeavouring to prevent other people selling the substance as "Eurotropine." The public is used to the name, and, though it could just as well be made by a British producer, if it were sold under another name the public would not buy it. It is for this purpose that this Clause is to be fitted in to the old Trade Marks Act, and it serves a purpose which will have the sympathy, I feel sure, of this Committee.
Mr. HOOD: After the explanation of the Solicitor-General, I beg leave to withdraw the Amendment. I am not anxious to protect German trade marks. I only wish to try and protect the British trader.
Amendment, by leave, withdrawn.
Question proposed, "That the Clause stand part of the Bill."
Colonel GRETTON: There is one small matter. The marginal note ("Removal from register of word trade marks used as names of articles") goes further than the Clause. The Clause contains powers of removal for certain reasons, but it does not go as far as the marginal note, which says that the names must be removed. I suggest that the Board of Trade consider the marginal note and make it more in conformity with the real meaning of the Clause.
Sir E. POLLOCK: I am much obliged to my hon. and gallant Friend. It will be carefully considered by the Board of Trade to see if some other "catchwords," as we call them, may not more happily be used.
Clause ordered to stand part of the Bill.
In paragraph (5) of section nine of the principal Act (which defines the particulars which registrable trade marks must contain or consist of) for the words "except by order of the Board" of Trade or the court be deemed a distinctive "mark," there shall be substituted the words 547 "be registrable under the provisions of this "paragraph, except upon special evidence of its "distinctiveness."
Colonel GRETTON: I beg to move to leave out the word "special." Apparently this word has been imported from the old Acts, but it has led to very great misunderstanding and difficulty in interpretation. Therefore, I suggest that the word "special" in this connection is not required. What is really required is distinctiveness and nothing else. I ask my right hon. Friend to accept this Amendment.
Sir E. POLLOCK: I am obliged to my hon. Friend for calling my attention to this matter. I think he is quite right. I do
Sir E. POLLOCK: I beg to move, after paragraph (Section 16), to insert the following new paragraph: Section 21.—After the word "Court" there shall be inserted the words "or registrar in each case." Delete the words "as it may think it right to impose" and insert "as the Court or registrar as the case may be think it right to impose." I want to move this slight Amendment. Section 21 deals with the question of the concurrent user of trade marks, and instead of leaving it only to the Court, I want to give power also to the registrar. It is possible that in practice it will be more simple and useful if the powers are given, not merely to the Court, but also to the registrar.548
not think the word "special" is needed. It might introduce complication, and I am quite ready to accept the Amendment.
Amendment agreed to.
Clause, as amended, ordered to stand part of the Bill.
CLAUSE 8 (Appeals), 9 (Rectification of Register), 10 (Costs), 11 (Registration of assignments), 12 (Minor Amendments of principal Act), and 13 (Short title, construction and commencement) ordered to stand part of the Bill.
FIRST SCHEDULE (Provisions of principal Act not applied) agreed to.
|Section Amended.||Nature of Amendment.|
|Section 16||After the words "the register shall" there shall be inserted the words "unless the mark has been accepted in error or."|
|Section 43||For section forty-three the following section shall be substituted: "In any "action or proceeding relating to a trade mark or trade name the tribunal "shall admit evidence of the usages of the trade concerned and of any relevant "trade mark or trade name or get up legitimately used by other persons."|
|Section 62||For the words "Where any association or person undertakes the examination "of any goods in respect of origin, material, mode of manufacture, quality, "accuracy or other characteristic, and certifies the result of such examination by mark used upon or in connection with such goods, the Board of "Trade" there shall be substituted the words "Where any association or "person undertakes to certify the origin, material, mode of manufacture, "quality, accuracy or other characteristic of any goods by mark used upon "or in connection with such goods, the Board of Trade, if satisfied that "such association or person is competent to certify as aforesaid."|
Colonel GRETTON: The Amendment is quite unobjectionable provided there is an appeal from the registrar in cases where the decision of the registrar is not acceptable.
Sir E. POLLOCK: There is an appeal in every case.
Amendment agreed to.
Mr. HOOD: I beg to move, after the words last inserted, to add Section 22.—At the end, add the words "and to be registered for such trade mark in respect of the interests so assigned." I may explain that it is not unusual now for the owner of a business to sell his foreign 549 business and to keep the business which he has for this country alone. That has occurred in a number of cases. There used not to be any difficulty in connection with it, because the practice of the registrar was to allow the assignee of the foreign interest to effect a new registration, and the assignee's mark was limited to its use in the assigned foreign territory. This practice, which was very useful, has been discontinued except in cases of new marks applied for concurrently by the owners of the divided interests, and the assignee is only permitted to register his assignment under the original registration, and does not obtain a separate registration in respect of the assigned interests. If this addition is made to Section 22, it will enable the assignee of the foreign goodwill of the marks not only to register, but also to obtain a certificate of registration, which will be useful in obtaining registrations in other countries, particularly in those countries which are parties to the Convention. This will bring Section 22 more in line with Section 21, which deals with honest concurrent user or other circumstances. I may say, speaking from experience, that it has been a real trouble, and if the Solicitor-General will be good enough to accept this Amendment, I think he will be helping the owners of foreign trade marks and British people in the registration and in the carrying out of this work.
Sir E. POLLOCK: Will the hon. Member explain why he is not content with Section 33 which deals with assigning. At present under Section 33 all assignments can be registered. He has not given me any reason why these words are necessary.
Mr. HOOD: In practice they are not registered, because you cannot get a certificate from the Registrar in respect to an assigned interest to send to a foreign country in order to obtain registration there.
Sir E. POLLOCK: I am afraid that I cannot accept this Amendment. The Section reads:— "Nothing in this Section contained shall be deemed to affect the right of the proprietor of a registered trade mark to assign the right to use the same in any British possession or protectorate or foreign country in connection with any goods for which it is registered, together with the goodwill of the business therein in such goods." Therefore where a business has been assigned, with the goodwill, there is nothing to prevent the registration. Under Section 33, when a person becomes entitled to regis- 550 tration of a trade mark by assignment, then, on proof of title, the Registrar forces the name and address of the person to be entered on the registration as the proprietor of the trade mark. All that the Amendment proposes to do is to add the words "and to be registered for such trade mark, in respect of the goods so assigned." My hon. Friend raises another and much more difficult point about the question of trade marks abroad, but it is the words only to which I must pay attention. If you take Sections 22 and 33 as they stand at present, these words are entirely otiose. If these words were adopted, they would encumber the Act with something already done under Section 33. The purpose of this Amendment may be different, but I cannot accept the words, because I do not think that they are either useful or necessary.
The CHAIRMAN: Does the hon. Member wish to press his Amendment?
Mr. HOOD: Yes, I am sorry, but I attach great importance to it. It is leading to a good deal of expense.
Sir C. MARKS: The hon. Member says he attaches importance to it from his experience. Can he give the Committee a single case where he has had a certificate refused?
Mr. HOOD: Yes, I have been unable to obtain a certificate for registration for a foreign country subject to the Convention.
Sir C. MARKS: In connection with a trade mark?
Mr. HOOD: Yes, a trade mark.
Sir E. POLLOCK: I am afraid that there is a great deal of misunderstanding about this matter. May I point out to my hon. Friend that what he is doing—whatever he may want to do—is to make an addition to Section 22. At the end he proposes to insert "and to be registered for such trade mark in respect of the interests so assigned." Those words are to be added to this sentence: "but nothing in this Section contained shall be deemed to affect the right of the proprietor of a registered trade mark to assign." The proprietor therefore is to assign, and then, having assigned, nothing is to prevent the proprietor who has assigned from being registered for such trade mark in respect of the interests so assigned. That is the Amendment. It will simply make nonsense.551
Mr. HOOD: I will reconsider the words, and move an Amendment when we come to the Report Stage.
Amendment, by leave, withdrawn.
Mr. HOOD: I beg to move, in paragraph (Section 43), after the word "concerned," to insert the words "and of the probability of deception." I understand that there has been a good deal of discussion and agitation among trade mark owners for some considerable time on this point. Up till about twenty years ago it was the practice to admit evidence of this kind, but since that time it has been excluded, because it was supposed to restrict the courts in deciding points which were for the Courts to decide. This might be the effect if the Court was supposed to be bound by expressions of opinion in the form of evidence. So long as it is made clear that the Court is not bound by evidence of this kind, it can only be helpful for the Court to be made aware of the views of people who have passed their lives among the relative surroundings with which it is impossible for judges to be familiar. The principal point is the calling of evidence by tradespeople in the trade in regard to the probability of deception in any particular case where an action is brought for infringement.
Sir E. POLLOCK: I am afraid that I am not able to accept this Amendment. It is really a retrograde step, and I would not ask a better body to address on this subject than a Committee of the House of Commons. The Amendment means that when a case has been tried before a judge, you are to set aside his common sense and his own judgment as to whether there is a probability or a danger of deception—you are to set aside not only his intuition and the experience that he has gained as a judge, but also his inference from the facts which have been placed before him—and you are to allow a large number of opinions to be laid before him as to the probability of deception. Such a practice is familiar to many of us in our dealings with our constituents. Take, for instance, a Dogs Bill. Somebody is perhaps in favour of or against a Dogs Bill, and we find our post bags filled with letters, sometimes written and sometimes printed, all on the same lines. Sometimes even printed circulars in the same words are sent by the score in order to have some weight with us in our judgment on the Bill. Someone writes, "I am in favour" or "I am against the Dogs Bill," or "In consequence of this or that I am for (or against) it." Are these letters and circu- 552 lars kept by us? Are they filed by us? Do we attach great value to them? Do we take great trouble to see who it was that sent them? Do we say, "Now I have really got an authoritative opinion which will get a Bill forward in the House," or is the proximity of the waste-paper basket welcome? In this case is the judge to be asked to receive a large number of declarations as to the probability of deception? On either side you will find a large body of persons who will be ready to say that this practice will probably deceive, or this practice will not deceive, and you will have them sent in to the judge by the score. What would the judge do in such a case? I understand that in one case there was something like one thousand declarations as to the probability of deception, and by that means it became an abuse. This Amendment would take us back to that. It will be a retrograde step towards that abuse. There is now a provision that the judge can take the evidence of somebody who will come forward and say, "I shall be deceived." If evidence of that kind were called, he would attach the right kind of weight to it. To insert in the Section the words proposed would really mean that you would put before the Court a number of opinions which would be more valuable by reason of their number than by reason of their weight, and you would really set aside the discretion and the common sense of the judge. I hope that the hon. Member will not press the Amendment.
Amendment, by leave, withdrawn.
Mr. HOOD: I beg leave to move, after paragraph (Section 43), to insert Section 48.—For the words "but the registrar shall not be ordered to pay the costs of any other of the parties," there shall be substituted the words "and the Court may order the registrar to pay the costs of any other of the parties." The object of this Amendment is to provide that the Court may order the registrar to pay the costs of the parties. In proceeding before the Court under this Act the registrar when he fails is not ordered to pay the costs of the parties. The words proposed to be substituted say that the Court may order the registrar to pay the costs of any other of the parties. Sometimes in the case of appeals the registrar is unsuccessful and the successful litigant has to pay his own costs. We have just had a similar Revenue case in which the decision of the Court was that the Government department should in future in these cases be liable to pay the cost if unsuccessful. This is a good opportunity to put the Registrar of Trade 553 Marks in the same position as the Government Revenue officials.
Sir E. POLLOCK: I quite appreciate the spirit and purpose of this Amendment, and I think there would be a good deal to be said for it if the analogy which has been drawn between this case and the case of a Revenue Department which came before the Lord Chief Justice were good, but it is not a correct analogy. In the case of the Revenue Department there was a distinct issue to be tried between the Department and the subject, and the Department failed. It had brought the subject as a litigant before the Court and, the Department having failed, it was said in this particular case, not as having a wide application, that the costs should be paid by the unsuccessful litigant. But in the case of the Registrar of Trade Marks he has to attend in order to represent the public interests, and he is not there as a litigant in litigation between him and other parties on a direct issue. He is there as the representative of a public department to give such information as is necessary to give. Therefore, in these circumstances the analogy does not apply, and I do not think that we should accept the Amendment.
Amendment, by leave, withdrawn.
Sir E. POLLOCK: I beg to move, in paragraph (Section 62), to delete all the words after "words" ["For the words"] and to insert instead thereof "Where any association or person undertakes the examination of any goods in respect of origin, material, mode of manufacture, quality, accuracy, or other characteristic, and certifies the result of such examination by mark used upon or in connection with such goods, the Board of Trade may, if they shall judge it to be to the public advantage, permit such association or person to register such mark as a trade mark in respect of such goods whether or not such association or person be a trading association, or trader or possessed of a goodwill in connection with such examination and certifying" there shall be substituted the words "where any association or person undertakes to certify the origin, material, mode of manufacture, quality, accuracy or other characteristic of any goods by mark used upon or in connection with such goods, the Board of Trade, if satisfied that such association or person is competent to certify as aforesaid, may, if they shall judge it to be to the public advantage, permit such association or person to register such mark as a trade mark in respect of such goods whether or not such association or person be a trading association or trader or possessed of a goodwill in connection with such certifying." After putting the Amendment down in the schedule making an alteration in the principal Act, we found that we had not put 554 down exactly the words we wanted, and that to make it correct another word would have to be deleted.
Colonel GRETTON: This may be more important than it appears. My hon. Friend (Mr. Hood) has an Amendment dealing with the words proposed to be left out, and I should like to know whether that Amendment would be interfered with by the words proposed to be inserted. I think the Solicitor-General might make a further explanation.
Sir E. POLLOCK: It does not prevent an Amendment being moved, and it does not prevent the hon. Member (Mr. Hood) from moving to insert the words "after due examination." It will be seen that we propose to take out the word "examination." There are a certain number of Associations which give a guarantee by the very fact that the goods come from the members of that Association. The fact that they come from such members is a guarantee of the value and the quality of such goods. Take, for instance, tobacco. There are some Associations which are tobacco importers or growers and which give a certificate to persons who are members of that Association. Thus the importation, say, of Havana cigars is facilitated and stabilised, I will not say "standardized," by the fact that these goods came from members of the Association. If the members of that Association did not exercise proper control when sending forward their goods, they would cease to be members of the Association. It is impossible to ask that Association in all cases of such goods to make a complete examination, and what we want—and this is the real point—is to say, that the brand of the Associations should be taken rather than what I may call, in the circumstances, the false pretence of the goods having been fully examined. The paragraph that I have put down by way of Amendment stands, excepting as regards the words "examination "and" the results of such examination." The altered words exclude the question of examination. The whole thing depends upon the use that is made of Section 62 of the Act of 1905. That deals with special trade marks, and says: "Where any association or persons undertake the examination of any goods in respect of origin, material, mode of manufacture, quality, or other circumstances and certifies the result of such an examination by marking it upon or in connection with such goods, the Board of Trade may, if they shall judge it to be to the public advantage, permit such association or persons to register such mark or brand in respect of such goods—" 555 and so on. The fact of such examination having to take place militates against that Section being utilised, and the Board of Trade feel that it will be to the advantage of the public to take the trade mark or brand of the association, so that they may know what is the origin of the goods, and may have some regard to the character of the persons who form the association and with the members have the same belief in the goods. If we adhere to the examination it will be very difficult. The Section, on the whole, will be more useful to the public in the form which we now propose with the word "examination" deleted. I hope that this explanation will satisfy the hon. and gallant Member for Burton (Colonel Gretton). I may also remark that we undertook at the Industrial Property Convention that we would, as far as possible, protect the making use of these brands by these Associations for that purpose and their use in the matter of imported goods. Article 7, of the International Convention for the Protection of Industrial Property, as revised at Washington, reads "The Contracting Countries" — of which we were one— "undertake to allow the registration of and to protect trade marks belonging to associations the existence of which is not contrary to the law of the country of origin, even if such associations do not possess an industrial or commercial establishment. "Nevertheless, each country shall be the sole judge of the particular conditions on which an association may be allowed to obtain protection for its marks."
Mr. HOOD: I am rather sorry this Amendment has been brought on at so late a stage, because I look upon it as a most important Amendment to the principal Act. Whilst it may be a good thing to facilitate associations certifying particular goods in connection with its own trade, I rise more particularly to ask the Solicitor-General if he will kindly throw some light on the effect of this Amendment on the very controversial subject of the British Empire Trade Mark. Probably the Solicitor-General knows the difficulty in registering the applicants for the British Empire Trade Mark. The difficulty of registering that mark has been that it must be after an examination. If I understand this Clause aright, it deletes the necessity of any such examination and merely makes a certificate necessary. I daresay the Solicitor-General is aware that there is great diversity of opinion throughout the country regarding the British Empire Trade Mark. I think I am right in saying that great bodies of commercial men are against it. Therefore, I would like to ask him if he would 556 kindly say whether under this Section, as altered, the British Empire Trade Mark could be registered. If so, I am afraid that there would be a great deal of opposition to this Amendment.
Colonel GRETTON: It is a little difficult to follow the meaning of this long Amendment, and I suggest that it would have been more convenient if an important Amendment of this kind had been put on the paper so that it might have been examined by experts and by members interested in these subjects. I endeavoured to follow the meaning of it, and so far as I could judge there was another important alteration besides that explained by the Solicitor-General, which, no doubt, has escaped his notice. At present, as my hon. Friend (Mr. Hood) who has just spoken says, the trade mark of an association may be registered by that association provided that it undertakes examination. Clearly, what is contemplated is an association of competent traders. I gather, if the words now proposed are inserted, that a special exception is made in the case of persons who are not traders, and that there is to be no examination. I may be wrong, but I certainly thought I understood the hon. Gentleman to say so, and it certainly would be most objectionable that any association without responsibility, without being responsible traders, without being able to be brought to book, should be able to register trade marks and apply them to anybody who chooses to pay a subscription and become a member of that association. It is something quite new which is being set up under our law, and I think it ought not to be done without most careful examination. I suggest to the hon. and learned Gentleman that it would be convenient for the Committee to adjourn and deal with this very important question on another occasion.
Sir E. POLLOCK: I hope my hon. Friends will finish the Committee Stage to-night. May I assure my hon. Friend (Mr. Hood) that this has nothing to do with the British Empire Trade Mark, and may I also assure the hon. and gallant Member (Colonel Gretton) that his misgivings are also unfounded. The British Empire Trade Mark was turned down because it did not fulfil—and it does not fulfil—the terms of this Clause. There are two safeguards. To use the phrase of my hon. and gallant Friend, any association can be "brought to book" under this Clause. May I just call attention to the terms?: "Where any association or person undertakes to certify the origin"—and so 557 on, "the Board of Trade, if satisfied that such association or person is competent to certify may, if they should judge it to be for the public advantage." I am informed, with regard to the British Empire Trade Marks, that it was determined that it was not to the public advantage, and, therefore, the British Empire Trade Mark did not satisfy this Clause. This Clause, therefore, does not in any way covertly introduce the British Empire Trade Mark, nor is it intended to do so. There is another safeguard in this Clause. It continues: "whether or not such association or person be a trading association or possessed of a goodwill in connection with such certifying"—and the Board of Trade has to be satisfied that such an association or person is competent to certify. In other words, before this mark can be of any use, the powers of the Board of Trade come into play. They have, first of all, to determine whether such mark would be to the public advantage; secondly, they have to be satisfied that such an association, in granting a certificate or certifying, is a body which is competent to certify. If they are satisfied with regard to those conditions, they may allow the mark to be introduced as being to the public advantage. I hope my hon. Friends will appreciate that those are exactly the same safeguards that we have had before. It is really wholly impossible to make a complete, exhaustive and useful examination of all the goods that an association would send over here. You must rely far more on the competence, the trustworthiness, and the character of the association than on an examination of every box of goods that comes over. All that I am asking is that we should maintain that which has been the practice for 14 years, since the Act of 1905. I am only deleting the word "examination," a system which has not afforded any safeguard in the past and which we have found to be impracticable. We prefer to rely far more on the system which I hope I have been able to explain to the Committee.
Sir STUART-COATS: The Solicitor-General has said that the new Clause and the Amendment will not interfere with the subsequent Amendment moved by Mr. Hood, in which the words appear "after due examination." How can he reconcile what he has said with that statement? I do not understand it.
Sir C. MARKS: The hon. and learned Gentleman said that his Amendment would not prevent the hon. Member for Wim- 558 bledon (Mr. Hood) from moving his Amendment requiring an examination.
Sir E. POLLOCK: I meant that it would not prevent the Amendment being moved. Sometimes when there are two Amendments down, one takes the two points at the same time. I never undertook, however, that I would not oppose it.
Question, "That the words proposed to be left out stand part of the Schedule," put and negatived.
Question proposed, "That the words proposed be there inserted."
Colonel GRETTON: I would suggest to my hon. and learned Friend that he might easily amend his words—I have not a copy, unfortunately—to the effect that where the association undertakes to examine and to certify the examination ought not to be done away with. If the examination is required and called for, it ought to take place. There ought to be power to require it. It is clearly wrong that a certificate should be granted without investigation and examination. Of course, in practice, under the words which have just been eliminated, it was not expected or intended that there should be a day-to-day examination of every article and every consignment, but that there should be an effective examination to see that on the whole the articles conformed to the requirements of the association, and were such as they were certified to be. I think my hon. Friend (Mr. Hood) is perfectly correct, and I am afraid, in an important matter of this kind, we are obliged to press the Solicitor-General and request him to provide for examination in the form in which my hon. Friend proposes, or in the form which I have suggested as an alternative.
Sir E. POLLOCK: I think my hon. and gallant Friend (Colonel Gretton) has rather misunderstood the position. I object to leaving the examination of goods as a condition precedent necessary for the purpose of making this trade marks system work at all. I want to say that I rely upon the trustworthiness of the Association. I am not preventing the Association in an adequate number of cases, and wherever they may think proper, from making such examination as enables them to be a proper certifying authority. I agree with my hon. and gallant Friend, of course, that from time to time the Association will have to examine in order that they may adequately perform their duties of certifying. If they did not 559 do that I should not regard them, and the Board of Trade would not regard them, as persons who were competent to certify. It is, however, quite another thing to say that none of the goods of an Association which does examine, which does certify, and which does take trustworthy evidence to be assured that its members are acting fairly to us, can be introduced unless those particular goods have been examined. I understand my hon. and gallant Friend—and I agree—does not want examination of every box of goods that comes into this country. He says that there ought to be, in proper cases, an adequate examination, and I agree. I am only eliminating the condition precedent. I hope that this will reassure my hon. and gallant Friend, but I would like to say that there will be another opportunity of bringing up the matter on the Report Stage should he wish to do so.
Mr. HOOD: The whole gist of Section 62 is the examination—"Where an association or person undertakes the examination of any goods …. and certifies the result of such examination." In this paragraph, as proposed by the Solicitor-General, the whole of the examination is dispensed with.
Sir E. POLLOCK: I specifically said that the whole examination was not dispensed with. My hon. Friend has quite misunderstood my meaning. I do not wish to eliminate the whole examination. I pointed out to my hon. Friend—and it is a point which he does not seem fully to appreciate—that there will be an examination by a certifying authority, but there will not be always, as a condition precedent, an examination of every box of goods.
Mr. HOOD: The gist of Section 62, as it stands to-day, is the examination. If the words which are now proposed are substituted there is no undertaking that there will be any examination at all. As I say, we look upon the examination as the whole gist of the Section.
Colonel GRETTON: This matter is one of very great importance, and I do not think that we can let it pass. We have full confidence in the advice of the Solicitor-General, but he does not appreciate the great importance and significance of the words. I am afraid that we shall have to ask the Committee to go to a division; there is no other alternative. If the words had been on the paper, we should have been able to consider them and to get the advice of experts.560
Captain S. WILSON: I do appeal to my hon. Friend. This Committee has sat for some time, and I appeal to him to allow the Bill to pass the Committee Stage. It is unfair to the Committee that it should be asked to sit again to consider this question. I therefore appeal to my hon. Friend to be reasonable, and allow the Solicitor-General to proceed so that this Bill may pass the Committee Stage to-night.
Colonel GRETTON: My hon. Friend really does not appreciate the difficulty in this matter. The difficulty arises because the Solicitor-General did not put down upon the Paper an Amendment which is found to be arguable, which we really have not had time to examine in all its bearings, and which goes very much further than his explanation. If he assures me that in substance and in practice he agrees to our contention and that he does not wish to dispense with the examination so far as to enable the associations of persons to give a proper certificate, I am willing that the Committee should go forward, but if he thinks that the assurance of the association without examination is sufficient then I am afraid that I must ask the Committee to divide.
Captain WILSON: Would it not be possible for a private conference to be arranged between the two gentlemen interested and the Solicitor-General before the Report Stage? I am sure that they would be able to come to some mutual arrangement.
Sir E. POLLOCK: I had hoped that I had made it plain, but it is quite obvious that I have not. I have not said, and I did not wish to say, that the certifying authority should not examine. I mean them still to exercise their duty of examining wherever they think it is necessary to examine, in order that they may be competent to certify. That is what I understand my hon. and gallant Friend (Colonel Gretton) asks me to give as my interpretation of the Section. I do it, but I do not want to go further. No objection should be taken that I am putting forward a new paragraph which has not been printed, because the very same point arises on the Amendment of my hon. Friend (Mr. Hood) which is upon the Paper. I am prepared to leave the paragraph where it is, and make my Amendment on Report.
The CHAIRMAN: We have already taken out the words.
Sir E. POLLOCK: It is only because in one line the word "examination" has not been 561 eliminated that I have re-drafted the paragraph for the purpose of eliminating that word. It is very near the Recess, and we do not want the House to rise without this Bill having gone through. Bills have been known to have been squeezed out. If this question holds the Committee up, it is possible that the Bill itself may be imperilled, and that is a result which we none of us desire.
Colonel GRETTON: If my hon. Friend will say that he will assist us in this matter, I am perfectly willing to agree. I do not want him to accept the words now. I understand that we are entirely agreed at the present moment, and all I want is that he will consider certain words for insertion in the Bill. I shall then be perfectly satisfied.
Sir C. MARKS: I have not said anything before, but I think I know something about this matter. I imagined that the Bill contained so many advantages that anyone interested in trade would want to see it passed. It will remedy very great abuses which have been discussed and appreciated for many years, and there has been no Bill before Parliament, except the Patents Bill yesterday, to get rid of these abuses. Any misapprehension as to what this paragraph means must soon be cleared up. All that is sought to be done here is to remove from persons who desire to have a trade mark placed upon an article the disability of having to examine everything before they can get that trade mark. If the persons desiring the trade mark are a body of adventurers, the Board of Trade would immediately say, "We will not register this trade mark; it is not in the public interest to do it." But it is a different matter altogether where there are groups of persons representing large interests, all associated together, who undertake to say, "We are going to save our friends in Australia the necessity of having all their goods dealt with by examination. We know their work. We know where they are. We will certify the origin of the goods for them and will put it on. We will not make them members of the association unless we know something about their credentials." To insist in such cases that examination shall be a condition precedent would injure a great many persons who now are mutually helpful. My hon. Friends are 562 under an entire misapprehension in the position that they take up.
Colonel GRETTON: I am afraid that I am very persistent, and I must apologise for the time that I am taking. I fully appreciate what my hon. Friend says, but these matters are familiar to me, and I know how intricate they are.
Sir C. MARKS: They are familiar to me, too.
Colonel GRETTON: Our purpose is the same. The whole difficulty is in the question: What is this association of persons to be?
Sir C. MARKS: It is for the Board of Trade to be satisfied.
Colonel GRETTON: We give directions to the Board of Trade, but those directions are very vague. Evidently, the matter wants clearing up, but if it is the wish of the Committee to go forward, I will not press the matter further. I think I have made it clear that there are matters of importance which have not been fully appreciated, and on the understanding that the matter must come on again on Report I do not press it further.
Mr. HOOD: I beg to move in the proposed Amendment after the word "certify" ["substituted the words where any association or person undertakes to certify"] to insert the words "after due examination." I formally move this, and in order to place it on record.
Sir E. POLLOCK: I recognise that my hon. Friend has made his point, and that he wilt bring" the matter up again on Report.
Amendment to the proposed Amendment, by leave, withdrawn.
Proposed words there inserted.
Schedule, as amended, agreed to.
Bill to be reported, with Amendments.
Committee rose at 15 minutes before six o'clock.563
THE FOLLOWING MEMBERS ATTENDED THE COMMITTEE.
Nicholson, Mr. William (Chairman)
Coats, Sir Stuart
Davies, Mr. A. (Clitheroe)
Doyle, Mr. Grattan
Green, Mr. Joseph
Griffiths, Mr. Thomas
Kerr-Smiley, Major Lunn, Mr.
Marks, Sir George Croydon
Morrison, Mr. Hugh
Pollock, Sir Ernest
White, Lieut.-Col. Dalrymple
Wilson, Captain Stanley564