This is another technical amendment to a technical Bill. It seeks to understand why the language of the Bill is precisely as it is. We are dealing here with geographical indications—GIs—and the circumstances in which a GI conflicts with a trademark.
What is a trademark? A trademark is something that is registered as such under the Trade Marks Act 1994, and it distinguishes the goods or services of one undertaking from those of other undertakings. Interestingly, Section 2 of that Act says:
“A registered trade mark is a property right … No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark”.
So our starting point is that there are registered trademarks, in which rights lie, and unregistered trademarks do not enjoy that protection.
We are amending what I think is retained EU law—namely, regulation 1151/2012, Article 6 of which says that, in relation to a conflict between a potential designation for a GI and a trademark, the GI should be refused only if,
“in the light of a trade mark’s reputation and renown and the length of time it has been used”,
it
“would be liable to mislead the consumer as to the true identity of the product”.
That is the context of this. If the combination of the GI and the trademark could mislead consumers, you have a problem and should therefore not allow the GI to be so designated. The bit on misleading the consumer has not been carried through, but maybe it is not necessary.
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The proposition in this legislation and the way in which the regulation is changed is that, under Clause 4(3), GIs should not be permitted in circumstances where it would lead to confusion over a trademark if,
“on the date on which the application for … the designation of origin or geographical indication is submitted”,
the trademark is
“the subject of a good faith pending application”
or
“the subject of a good faith registration”.
This applies if it is registered or there is an application for it to be registered, and not simply to frustrate the GI—that is the good faith bit—or if it is “established by use”. The proposition that it is in use seems consistent with the Trade Marks Act, but it has not been established by use. Alternatively, is the intention that GIs could, in theory, conflict with a trademark that is unregistered but established by use? That cannot be the intention. So why is the word “established” here?
This is why I tabled my amendment. If the point is that it should be in use prior to that date—namely, it is a trademark in use and, by extension, registered—then we know where we are. However, I worry that our lawyer friends, given the opportunity, will say, “This GI should not be allowed because, although this sign or description of our product does not happen to be a registered trademark, we have established it by use, as the legislation says”. I do not think there is a concept of trademarks established by use. Trademarks have to be registered. That is why the words
“in use prior to that date”—
namely, the date of the application for protection of the GI—would be a better way of describing it. I would be grateful to be educated in this matter by my noble friend. I beg to move.