Committee Reports > List of Committees > Joint > 1988 > Committee on the Secondary Legislation of the European Communities (5th Committee) > Report No. 04 - Community Trade Mark

(15th July, 1987.)

A. INTRODUCTION

1.The Draft Regulation on a Community Trade Mark was examined for the Joint Committee by its Sub-Committee on Statutory Instruments and Legal Affairs.

This Report was prepared by Senator Mary Robinson who chaired the meetings of the Sub-Committee. The Joint Committee is indebted to Senator Robinson and her colleagues on the Sub-Committee for their dedicated work.

2.Written submissions were received from the Patents Office, the Association of Patent and Trade Mark Agents and the Confederation of Irish Industry. The Joint Committee gratefully acknowledges the co-operation it received from these bodies. It gratefully acknowledges also the assistance given to it and to the Sub-Committee by Mr. John Hogan in preparing this Report.

3.The Sub-Committee had consultations with the Controller of Patents, the Association of Patent and Trade Mark Agents and the CII. These consultations provided a valuable opportunity for discussion and examination of many points raised in the written submissions.

B. BACKGROUND

4.The Commission’s traditional view on the importance of Community progress in the field of intellectual property is re-stated as follows in the Commission’s White Paper on Completing the Internal Market:

“Differences in intellectual property laws have a direct and negative impact on intra-Community trade and on the ability of enterprises to treat the Common Market as a single environment for their economic activities. It will be necessary, as a first step, to reach a decision on the Community Trademark proposal approximating national trade mark laws. Considerable advantages will flow from this which will enable undertakings to adapt their activities to the full scale of the Community by making it possible for them to obtain on a single application one trade mark covering all the Member States. In order to allow the Community Trade Mark system to be adopted by the Council, the Commission will make the necessary supplementary proposals (ie the rules implementing the regulation; the fees regulation; the siting of the Community Trade Mark Office and its working language; the rules of procedure of the Boards of Appeal). The Council should decide on these matters by 1987”.

5.The Joint Committee’s Report on the White Paper on Completing the Internal Market was published on 4 June, 1986. The views of the Department of Industry and Commerce on the above extract from the White Paper were as follows:

“The introduction of a Community Trademark system would enable Irish firms to obtain Community wide protection for their trademarks on the basis of one application. The new system would also have the benefit that a Community trademark would have the same status and effect in every Member State. Irish firms would therefore be able to secure cheaper, easier and more certain Community wide protection for the valuable property which their trademarks constitute. Again though it has to be said that the envisaged timetable for the decisions by the Council appear optimistic. The range, detail and technicalities of the process to be completed, to say nothing of the political difficulties to be solved, are likely to require more time”.

6.The draft Regulation now under consideration follows more than twenty five years’ work by the Commission and the Member States. A Preliminary Draft Convention for a European trade Mark, prepared by a Trade Mark Working Group in 1964, was published in 1973, when work on the European Patent Convention and the European Community Patent Convention had been well advanced. In a memorandum of 1976 on the creation of an EEC Trade Mark, the Commission announced its intention to prepare (i) a draft Community Trade Mark regulation, to be enacted under Article 235 of the Treaty of Rome, and (ii) a draft Directive on the harmonisation of certain points of national trade mark law, under Article 100. The draft Community Trade Mark Regulation, submitted by the Commission to the Council in November, 1980, was amended to take account of the Opinions of the European Parliament and the Economic and Social Committee and the amended version, which is the subject of this Report, was submitted to the Council in August, 1984. The draft proposal for the Council Directive to approximate the laws of the Member States relating to trade marks was submitted to the Council in November, 1980. This also was revised having regard to the views of the European Parliament and the Economic and Social Committee, the revised version being submitted to Council in January, 1986. Also in January, 1986 the Commission submitted to Council a proposal for a Council Regulation implementing the Regulation on the Community Trade Mark.

7.It is important to note that the proposed Directive and the proposed Regulation are distinct and separate sets of legislative proposals. The Directive deals solely with legislation relating to national trade marks, its object being to “harmonise” the varying national trade mark laws of the Member States. These “harmonised” national laws will continue to co-exist, and the geographical area of application for each country will remain limited to its own boundaries. Nor can it be held that, through the Directive, the Commission is seeking wholesale harmonisation of national laws since national registration systems will continue, the Community trade mark system being introduced as an alternative method of securing protection through registration. Harmonisation, in effect, will be limited to those areas where it seems essential that Community and national systems operate in tandem. Even after the proposed harmonisation, conflicts between identical or similar trade marks governed by different legal systems will continue to exist since, notwithstanding harmonisation, persons who are independent of each other will be able to obtain protection of identical or similar marks and thereby prevent the importation of the relevant goods into their country. The elimination of such conflicts requires the creation of a supranational law which will make it possible to obtain a mark which is entirely independent of national laws on trade marks and which is valid throughout the Community ie a “Community Mark”. The Regulation provides for such a mark.

8.Section C, D and E following give respectively a general statement of current Irish trade marks law, a statement indicating the effects upon current Irish legislation of the draft directive and the implications of the draft Regulation for a Community Trade Mark.

C. GENERAL POSITION IN RELATION TO REGISTRATION OF TRADE MARKS IN IRELAND: TRADE MARKS ACT, 1963.

9.The definition of a trade mark is: A mark used or proposed to be used for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right - either as proprietor or as registered user - to use the mark (Section 2).

10.To be registrable in Part A of the Register (see Para. 16 below) a trade mark must contain or consist of at least one of the following essential particulars:-

-the name of a company, individual, or firm, represented in a special or particular manner;

-the signature of the applicant for registration or some predecessor in his business;

-an invented word or invented words;

-a word or words having no direct reference to the character or quality of the goods, and not being according to its ordinary signification a geographical name or a surname;

-any other distinctive mark.

For the above purposes, “distinctive” means adapted, in relation to the goods in respect of which a trade mark is registered or proposed to be registered, to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists (Section 17).

11.To be registrable in Part B of the Register, a trade mark must be capable, in relation to the goods in respect of which it is registered or proposed to be registered, of distinguishing goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists (Section 18).

12.It is not lawful to register as a trade mark or part of a trade mark any matter the use of which would, by or otherwise be disentitled to protection in a court of law or would be contrary to law or morality, or any scandalous design (Section 19).

13.No trade mark is to be registered in respect of any goods or description of goods that is identical with a trade mark belonging to a different proprietor and already on the Register in respect of the same goods or description of goods, or that so nearly resembles such a trade mark as to be likely to deceive or cause confusion; however, in the case of honest concurrent use, or of other special circumstances which in the opinion of the Court or the Controller make it proper to do so, the Court or the Controller may permit the registration of trade marks that are identical or nearly resumble each other in respect of the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as the Court or the Controller, as the case may be, may think it right to impose (Section 20).

14.Where a trade mark consisting of an invented word or invented words has become so well known as respects any goods in respect of which it is registered and in relation to which it has been used that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first-mentioned goods, then, notwithstanding the fact that the trade mark is not used or proposed to be used in relation to those other goods, it may be registered, in the name of the proprietor of the trade mark, as a defensive trade mark in respect of those other goods and while so registered, may not be removed in respect of those goods, on the ground of non-use (Section 35).

15.Procedure for registration:

(a)Applications for registration of trade marks must be made to the Controller. A search is carried out, among registered marks and pending applications, for identical or confusingly similar marks in respect of the same goods or description of goods.

(b)After considering the application, the Controller may refuse it or may accept it absolutely or subject to amendments, modifications, disclaimers, conditions or limitations (Section 25(2). Rules 23 and 27).

(c)Accepted applications are advertised in the Official Journal of Industrial and Commercial Property (in certain cases an application may be advertised before acceptance) (Section 26(1), Rules 33(1) and 2(1).

(d)Within one month from the advertisement referred to, any person may give notice to the Controller of Opposition to the registration: Section 26(2) Rule 35(1).

(e)In the case of unopposed applications or unsuccessful opposition, the trade mark is entered on the Register, unless the acceptance was in error; the effective date of the registration is the date of the application, subject to priority of date under international Conventions.

16.Definition of exclusive right and scope of protection

(a)Subject to any conditions or limitations entered on the Register with respect to it, registration in Part A of the Register gives the proprietor the the exclusive right to the use of the trade mark in relation to the goods in respect of which it is registered. Without prejudice to the generality of the foregoing statement, the exclusive right is deemed to be infringed by a person who, not being the proprietor of the trade mark or a registered user using it by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relationto any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either;

Section 12

(b)Registration in Part B of the Register gives the same exclusive right; however, in the case of such registrations, no relief is granted in infringement proceedings if the Court is satisfied that the use complained of is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods and a person entitled to use the trade mark (Section 13).

(c)The exclusive right does not cover expressions which are in well-known and established use in the trade as the name or description of an article or substance or are the only practicable name or description of an article or substance formerly manufactured under a patent that has expired two years previously (Section 23).

(d)No proceedings are possible to prevent, or to recover damages for the infringement of an unregistered trade mark, but the Act does not affect rights of action, and corresponding remedies, with respect to passing off goods as the goods of another person (Section 10).

17.The Register is divided into Part A and Part B. The main differences between the two forms of registration are: the standard of distinctiveness required is different, the scope of protection differs; registrations in Part A are, after seven years, to be taken as valid in all respects in legal proceedings unless registration was obtained by fraud or the trade mark offends against Section 19 of the Act (See Para. 11 above).

D. EFFECTS OF THE DRAFT DIRECTIVE

18.The directive applies to trade marks in relation to goods and services. There is at present no system in Ireland for the Registration of Service marks.

Article 1.

19.The requirements for registration of Trade Marks under this EEC directive are less strict than those set out in Sections 17 and 18 of the Irish Trade Marks Act, 1963. This could lead to an overall lessening in the distinctiveness of Trade Marks.

Article 2.

20.Arising from this EEC directive there could be a reduction in the rights of Irish nationals as there is no bar on the registration of surnames as trade marks.

Article 2

21.There would be only one form of registration under the EEC directive as opposed to the two forms in Ireland ie A and B marks. Therefore the differentiation between the standard of distinctiveness required and the scope of protection offered by registrations in Parts A and B would be lost.

Article 2

22.Protection of trade marks except in respect of identical or similar goods is excluded. Accordingly there appears to be no protection under the EEC directive for trade marks having wide reputation.

Article 3

23.The scope under existing Irish legislation to refuse to register trade marks where there is a risk of confusion or deception of the public would be restricted. The Controller’s discretion to refuse registration in areas where danger to the public could arise, even though no similarity exists between the respetive goods in the case of a registered mark and an identical or similar mark for which registration is sought eg an identical or similar mark for caustic detergents and for a medicine, would be lost.

Article 8

24.The right of opposition to registration of a Trade Mark would be curtailed under the EEC directive as it would be restricted to the proprietor of a Registered Trade Mark.

Article 8

25.Article 10(1) of the EEC Directive provides that a proprietor of a trade mark or other exclusive right shall not be entitled to apply for invalidation of a conflicting trade mark in that Member State or in another Member State if he has acquiesced in its use any Member State for three consecutive years.

26.Article 14 (2) (a) of the EEC directive states that a trade mark may be invalidated if it has become, in consequence of acts of the proprietor, the common name for a product or service in respect whereof it is registered.

27.Under the EEC directive the rights of Irish nationals over trade marks will be reduced by the abolition of the distinction between Common Law rights and rights in relation to registered trade marks. Under Irish Law, rights in a trade mark could arise either at Common Law -through use of the mark, or by means of registration. At Common Law it has always been an actionable wrong for one person to represent, for trading purposes, that his goods are those; or that his business is that of another. The aggrieved businessman could obtain an injunction for passing-off provided he could satisfy the Court of his business reputation and that deception or confusion was likely to arise because of the misrepresentations made.

E. IMPLICATIONS OF DRAFT REGULATION

Title 1

28.The Council regulation applies to trade marks in relation to goods and services. There is at present no system in Ireland for the Registration of Service Marks although the provision of such a system may be necessitated by the EEC directive. At present, however, this means that Irish Nationals who previously could not avail of any protection in Ireland for service marks, may now apply for registration of a Community trade mark in respect of services provided that the applications meet the requirements of the Regulation.

Article 1 of Council Regulation.

Title 11

29.The requirements for registration of Trade Marks under the Council Regulation are less strict than those set out in Sections 17 and 18 of the Irish Trade Marks Act, 1963.

Articles 3 and 6

30.In particular registration of surnames is allowed on a prima facie basis ie no proof of distinctiveness through evidence of use is required.

Article 3

31.Therefore, the Community Trade Marks registered and in use in Ireland could consist of marks which would not be registrable under present Irish legislation.

32.There are two forms of registration in Ireland, registration in Part A or Part B. The two parts differ in the standard of distinctiveness required and the scope of protection offered. Under the Council Regulation there will only be one form of registration and therefore no differentiation between the scope of protection afforded to Trade Marks.

33.The Council Regulation requires no undertaking that the applicant for registration either uses or intends to use the mark as a trade mark. Under Irish legislation, if evidence of use by the proprietor of the mark is not provided, intention to use is normally implicit in the application and may be queried if intention to use on the part of the proprietor appears to be absent or unlikely.

Article 4.

34.Under the Council regulation the rights in a Community trade mark are obtained by registration. This means that no trade mark rights may be acquired through use. This provision therefore excludes the possibility of Common Law rights which could arise in Irish Law through use of the mark, and any action based thereon.

Article 5

35.The Council Regulation provides that a trade mark shall not be registered if it is identical with or similar to an earlier trade mark, and the goods or services designated by each of the trade marks are identical with or similar to each other, with the result that there arises a serious likelihood of confusion on the part of the public in the territory in which the earlier trade mark has effect. However, this article applies only where the proprietor of the earlier trade mark has asserted his right by successfully opposing registration of the Community trade mark. Under Irish legislation there is provision for an Official Search for such conflicting marks to be made in respect of registered trade marks and prior applications, which safeguards, insofar as the Office deems necessary, the rights of proprietors, without prejudice to their entitlement to Opposition of the mark at a later stage if they consider it necessary. Under the Council regulation, the rights of proprietors would not be automatically protected - the onus would be placed on the proprietor of the prior registered trade mark to oppose registration of the conflicting mark after its advertisement in the Community Trade Mark Journal, of if he did not assert his rights at that stage, to engagein revocation proceedings. Either course would involve expense on the part of the proprietor. It is considered that the provision of a search procedure during the earlier stages of the processing of the application under Irish Law assists in keeping formal Opposition and, to a certain extent revocation cases at a minimum level.

Article 7

36.The rights conferred on the proprietor of a Community Trade Mark appear to be more comprehensive than those under existing Irish legislation. They include the right of the proprietor to prohibit any third party from using a sign similar or identical to the Community Trade Mark in respect of goods which are different to those in respect of which the Community Trade Mark is registered, where the Community Trade Mark is of wide repute and use of the sign is detrimental to that repute. Under Irish legislation it is necessary for the proprietor of a trade mark of wide repute to register the mark as a defensive trade mark in respect of all of the goods in respect of which he would wish to prohibit a third party from using a similar or identical mark.

Articles 8 and 10

37.In addition to the other rights conferred by the Community Trade Mark, the Council Regulation provides that the proprietor may intervene to prevent the mark from becoming Common to the trade or the generic name of a product in dictionaries and similar works. No such protection is afforded under Irish legislation.

Article 9

38.The provision in the regulation relating to the exhaustion of the rights of the proprietor has no equivalent under Irish legislation.

Article 11

39.The regulation provides that a Community Trade Mark shall be put to ‘genuine use’ in the Common market unless there are legitimate reasons ie circumstances beyond the proprietor’s control, for not doing so. This provision is obviously desirable as there is no justification for allowing a proprietor to monoposise a trade mark that he neither uses himself nor allows to be used by others.

Article 13

40.Under the Council Regulation, a trade mark is registered for a period of ten years from the date of filing of the application and may be renewed for further periods of ten years. Under existing Irish legislation, a trade mark is registered for a period of seven years from the date of filing of the application and is renewable for further periods of fourteen years.

Article 14

41.The Council Regulation does not permit the alteration of a registered trade mark except where the mark contains the name and address of the proprietor which may be altered on condition that the alteration does not substantially change the trade mark. Under existing Irish legislation, alteration of a trade mark may be allowed provided that such alteration does not substantially affect the identity of the trade mark. The Irish Controller has discretion to refuse the alteration or grant it on such terms and subject to such limitations as he may think fit.

Article 15

42.The procedure for examination of the application outlined in the Council Regulation differs from that under existing Irish legislation. The Community trade mark Office may, if accepting the application, ask for applicants agreement to disclaim non-distinctive elements in the mark or restrict the specification of goods or services in respect of which the mark is to be registered. The scope of the Irish Controller would appear to be much wider - if accepting the application, he may accept it absolutely or subject to amendments, modifications, disclaimers, conditions or limitations. As previously mentioned, under Irish Law the Controller causes a search to be made among registered marks and pending applications for the purpose of ascertaining whether there is on record in respect of the same goods or description of goods any mark identical with the mark in respect of which the application is being made, or so nearly resembling it as to render it likely to deceive or cause confusion. If a conflicting mark is found, the application may be refused on this basis. It can be seen that this provides a considerable protection for proprietors of trade marks under Irish Law as it does not require their personal intervention at this stage, a protection which they would not be afforded under the regulation. Under Irish Law, if there is doubt as to whether or not a trade mark application is in conflict with a registered trade mark or prior application, the Office may impose, as a condition of registration, an obligation on the applicant to send the proprietor of the prior right a copy of the Official Journal in which the trade mark application is advertised so that he may decide at an early date if he wishes to oppose registration of the application. There is no provision in the Regulation for affording this type of protection to trade mark proprietors before the application proceeds to advertisement.

Article 31

43.The Regulation provides that an application may upon request be amended by restricting the list of goods or services, by rectifying the name and address of the applicant and by correcting typographical errors and other obvious mistakes on condition that the trade mark is not substantially changed. There is provision for this under Irish legislation also. However, the Controller also has power to allow amendment of the trade mark as long as the amendment does not fundamentally alter the identity of the trade mark as originally filed. Therefore, an applicant for registration of a trade mark in Ireland may avail of the opportunity to effect a slight amendment of the mark for which registration is sought, subject of course, to approval by the Office, but an applicant for registration of a Community Trade Mark is denied this as there is no such provision in the regulation.

Article 32

44.After publication of a Community Trade Mark application, any third party may draw the Office’s attention to any absolute grounds of refusal outlined in Article 6 of the regulation ie grounds which do not include confusing similarity of mark and goods with a prior right. Under the regulation the Office can take account of these or can disregard them and allow the application to proceed. There is no such specific provision under Irish legislation. However, the right of Opposition to registration of a trade mark on these grounds is provided for. Under the Council Regulation, if the Office disregards the observations and allows the application to proceed, the persons having made the observations have no right of appeal. Under Irish Law, there is provision for an appeal to Court by either party of an Opposition against the Controller’s decision.

Article 33

45.The Regulation provides that the proprietors of registered trade marks may within three months following publication of a Community trade mark application enter opposition to registration of the trade mark application on the grounds of ownership of an earlier trade mark identical with or similar to that advertised, both marks being in respect of goods or services identical with or similar to each other with the result that there arises a serious likelihood of confusion on the part of the public in the territory in which the earlier trade mark has effect. Under Irish legislation any person is entitled to enter Opposition to registration of a trade mark application on any grounds within one month of the date of advertisement of the application. The regulation would therefore have the effect of curtailing the rights of Irish nationals in two ways - (1) by restricting the grounds of Opposition and (2) by restricting the right of Opposition to proprietors of registered trade marks. Unregistered prior rights can, in Ireland, be obtained at Common Law through use and these should be given due consideration and should entitle the owner to enter opposition. Even if there was only a relatively small number of unregistered rights and hence of oppositions based on them, the principle is important; registered rights and Common Law rights are inseparately linked. It is clear that the restrictions regarding Opposition in the Regulation operate against the interest of Irish nationals.

46.The provision for renewal of a trade mark registration under the Council Regulation contains the requirement of production of a declaration of user. This is the only fundamental difference between the Regulation and the Irish Act which contains no corresponding requirement. The Declaration of user specifies the goods or services in respect of which the Community Trade Mark has been used during the period of five years prior to expiry of the registration and if the declaration of user is in respect of part only of the goods or services for which the mark is registered, registration shall be renewed only for that part of the goods or services. Declaration of user is not a requirement under Irish Law for renewal of registration, however, to be registrable under Irish Law a trade mark must be “used or proposed to be used” and the requirement of a declaration of user for renewal would be a logical extension of the policy of granting protection only to those who need it.

47.The regulation provides that a Community Trade Mark shall be invalid where some other prior right exists in opposition to it and there is a serious likelihood of confusion on the part of the public between the trade mark and that right. “Prior right” is sefined as any sign used in the course of trade before filing of the Community Trade Mark application and which, under the law of the Member State which governs the sign, entitles the proprietor to prohibit the use of any later trade mark. This provision therefore does not restrict the right of application ot have a Community trade mark declared invalid, to the proprietor of a registered mark and apparently recognises unregistered prior rights. Therefore, while opposition proceedings under the regulation are confined to the proprietors of registered marks only, it appears that invalidity proceedings do take account of unregistered prior rights which could arise at Common Law.

Article 42

48.Under the Council Regulation, the proprietor of a “prior right” as defined above, may not apply for a declaration that a Community trade mark is invalid, if he has acquiesced in its use for a period of three successive years, unless the Community Trade Mark was applied for in bad faith. There is no corresponding provision under Irish Law for a trade mark to become incontestable after a number of years.

Article 44

49.There is provision under the Council Regulation that the Court which is hearing an action for infringement of a Community trade mark shall have jurisdiction to give judgment on a counterclaim made by the original defendant for a declaration that the rights of the proprietor are revoked or that the trade mark is invalid. This provision operates in favour of owners of prior rights who are unable to assert their rights under the Opposition procedure. They are not obliged to submit to the Office an application for a declaration of invalidity but can defend themselves in their national Court against the proprietor of the Community Trade Mark.

F. VIEWS OF THE JOINT COMMITTEE

50.The Committee considers that the essential features of national trade mark law in the Member States will be effectively harmonised under the provisions of the draft Directive. Thousands of trade marks registered in national registers will continue to exist even though Community trade marks would become possible under the draft regulation; it is highly desirable that equivalent laws should apply in each country.

51.The draft regulation sets up a Community trade mark office and register permitting trade marks to be registered for the whole of the Community and to be subject to a single law of trade marks which is the same as the proposed harmonisation of the national laws. National registers and Community registers will exist side by side indefinitely. The Committee considers that such co-existence will not give rise to serious problems.

52.The Committee recognises that the draft instruments in their present form represent the outcome of protracted negotiation, in course of which the proponents of widely differing systems of trade mark protection have agreed to give up certain features and to implement changes and adjustments in the interests of abolishing restraints to competition, the free movement of goods and consumer protection.

53.In general terms, the Committee is satisfied that the results achieved by our negotiators substantially protect Irish interests. There are, however, some outstanding issues in respect of which the present position is unsatisfactory; these are indicated in Section G below.

54.The Committee welcomes the provision for registrability of trade marks for services under the new regime.

55.The committee has no difficulty in accepting the proposal of the Commission that the directive and the regulation be based respectively on Articles 235 and 100 of the Treaty of Rome. The objective to be achieved under the new arrangements is, in the Committee’s view, to be welcomed-the more so now that mechanisms for achieving a genuine and effective internal market have finally been put in place. That being so, only the most serious doubts as to the appropriateness of relying upon the Treaty articles in question should be allowed to hold up the proposals. The Committee notes with satisfaction that the legal services of theCommission and the Council have no reservations on this point. The alternative favoured by some member states-having the member states adopt a separate treaty as was done in the case of patents - ignores the fact that such a procedure would raise the same constitutional difficulties that have prevented Ireland and Denmark from ratifying the Patent Convention.

56.The location of the Community Trade Marks Office is one of several matters remaining for decision. The Committee believes that the case made for locating the office in Dublin is, by any objective standard, extremely strong.

57.While recognising that the proposed new regime for Community trade mark laws has not been designed primarily as a measure of consumer protection, the Committee feels that consumers will undoubtedly derive considerable benefit from greater choice. The Community Trade Mark will constitute an additional source of information as to the origin and quality of numerous consumer goods. In addition, consumer associations will, in the registration procedure, be in a position to lodge objections to specific registration applications, and to apply for declarations that particular trade marks have expired or are invalid. It seems clear that up to now, national trade mark laws have been used to prevent competition between freely circulating goods.

58.The Committee is advised that several of the Member States want to see implementation of the directive closely linked to adoption of the regulation. The Committee is not convinced that such a close link is essential. An important consideration here is that while consideration of the directive has been largely completed, work on the regulation is far from finalised. The Committee considers it desirable that the provisions of the directive be brought into force in the Member States and that the operation of these provisions should not have to await the outcome of negotiations in the regulation.

G. RECOMMENDATIONS OF THE COMMITTEE

59.The draft regulation on the Community Trade Mark makes no provision for an official search of its register by the Community Trade Marks Office for prior conflicting registrations, nor for subsequent examination. Owners of registered rights would, if this provision were implemented, be obliged to keep applications under constant surveillance - an exercise which would be costly and disproportionately so in the case of small and medium enterprises. Given its structure, Irish industry would, in the Committee’s view, be put at an unfair disadvantage. The Committee recommends, accordingly, that every effort be made to secure that, at least, a search be made and that the new application be notified to owners of appropriate prior registrations. (In this connection, the Committee notes that the early drafts of the regulation contained such provision).

60.The draft regulation does not provide for ex parte action by the Community Trade Marks Office on the grounds of prior rights. Consequently, the owner of a trade mark can prevent a conflicting Community trade mark being established only by lodging an opposition to its registration himself or by seeking its invalidation. Further, the proprietor of a common law right can take no action against the use of a Community mark until he has succeeded in having it removed from the register. There is, in consequence, a real danger that goods sold under the Community mark will damage the reputation of the common law right, perhaps for a considerable period. The Committee recommends that every effort be made to secure that prior unregistered common law rights should be written in to the regulation as a ground of opposition.

61.The Committee is satisfied that the absence of statutory provision for service marks puts the Irish tertiary sector at a serious disadvantage. In view, particularly, of the current drive to establish Dublin as a financial services centre, the Committee recommends that legislation be introduced as soon as possible to meet this need.

62.The Committee recommends that Dublin’s case as the seat of the Community Trade Marks Office should be vigorously pressed at the diplomatic and political levels.

March, 1988.