Joint Committee on Enterprise, Trade and Employment debate -
Wednesday, 9 Oct 2024

Good morning. Anyone participating remotely must do so from within the Leinster House complex. We have not received any apologies.

Today's discussion is on the draft statutory instrument entitled Trade Marks (Madrid Protocol) (Amendment) Regulations 2024. The protocol relates to the Madrid Agreement Concerning the International Registration of Marks. This is an international agreement that provides for an international system for the registration of trademarks in multiple jurisdictions. Section 59(1) of the Trade Marks Act gives the Minister for Enterprise, Trade and Employment the power to make domestic regulations to give effect in this State to the provisions of the Madrid protocol. The draft statutory instrument was laid before both Houses of the Oireachtas on 16 September 2024 and both the Dáil and Seanad have referred it to this committee for consideration. To assist the committee in its consideration of the draft statutory instrument, we are joined by the Minister of State at the Department of Enterprise, Trade and Employment with special responsibility for business, employment and retail, Deputy Emer Higgins, and by officials from her the intellectual property unit of her Department: Ms Tara Coogan, principal officer; and Ms Jill Colquhoun, assistant principal officer.

Before we start, I wish to explain some of the limitations to parliamentary privilege and the practices of the Houses as regards references witnesses may make to other persons in their evidence. The evidence of witnesses physically present and of those who give evidence from within the parliamentary precincts is protected, pursuant to both the Constitution and statute, by absolute privilege. Witnesses are reminded of the long-standing parliamentary practice to the effect that they should not criticise or make charges against any person or entity, either by name or in such a way as to make him, her or it identifiable, or otherwise engage in speech that might be regarded as damaging to the good name of the person or entity. If their statements are potentially defamatory in relation to an identifiable person or entity they will be directed to discontinue their remarks and it is important that they comply with any such direction.

The briefing note and opening statement have been circulated to members. To commence our consideration of this matter, I invite the Minister of State to make her opening remarks.

I am delighted to join members today and I am pleased to present to the committee a draft statutory instrument entitled Trade Marks (Madrid Protocol) (Amendment) Regulations 2024. As the committee will be aware, a trade mark is a sign that distinguishes the goods and services of one business from those of another. The trade mark is a valuable business asset that can attract and retain customer loyalty and create value and growth for that business. A trade mark registration is one of the most effective ways for a business to build and defend its brand.

The draft statutory instrument proposes an amendment to the existing statutory instrument, SI 346/2001, Trade Marks (Madrid Protocol) Regulations 2001. That statutory instrument gave effect in the State to the provisions of the Madrid protocol, which is an international agreement concerning the international registration of trade marks administered by the World Intellectual Property Organization, WIPO. The Madrid system, which is governed by the Madrid protocol, is a WIPO-administered system that allows trade mark owners to protect their trade mark in several countries by simply filing one application in one language with one set of fees in one currency.

It offers a smart business solution for any business seeking to protect and manage its trademarks in international markets.

The proposed amendments to the draft statutory instrument are technical in nature and relate to the effects of an international trademark registration on the corresponding national trademark. An international trademark application must be based on a national trademark application or registration and up until now the specification or classes covered by the international trademark could not be broader than the list of goods and services protected in the national trademark. However, on foot of an amendment to Rule 21(3)(d) of the Madrid Agreement, it is now possible to have a partial replacement of a national trademark registration with an international registration, namely, for only some of the goods and services covered by the national trademark to be listed in the international registration. Consequential amendments are also required to Form No. 2M in the Schedule to the 2001 regulations. These facilitate the changes on Form No. 2M in the 2001 regulations, which are being substituted for a new, updated form in the 2024 regulations. Form No. 2M allows the owner of an international trademark to select a full or partial replacement of the goods or services to which the international trademark applies and to have this recorded in the Irish trademark register. The form has also been amended to reflect the new name of the controller of intellectual property and the change of name of the office to "Intellectual Property Office of Ireland". Ireland, as a contracting party to the Madrid Protocol, which is an international agreement, is obliged to carry out these amendments to its national legislation by 1 February 2025.

I would also like to explain the process required to approve the draft statutory instrument. In my role as Minister of State in the Department of Enterprise, Trade and Employment, I have the power to make domestic regulation to give effect in the State to the provisions of the Madrid Protocol, including the power to amend existing regulations. Section 3(3) of the Trade Marks Act 1996 specifies that any order or regulation pertaining to the Madrid Protocol must be laid before both Houses of the Oireachtas. A regulation cannot be made until a resolution approving the draft statutory instrument has been passed by both Houses. It is quite unusual to have a draft statutory instrument before a Joint Committee but that is why we are here today. I am asking the committee to endorse this draft statutory instrument before it goes to the Houses. As I am sure the committee will appreciate, it is important that we continue to ensure that Ireland's intellectual property legal framework remains current, flexible and effective for its users. The proposed amendment will improve the trademark regime for rights holders and businesses and ensure that they can continue to protect and manage their trademark rights in international markets. Should the committee approve the draft statutory instrument, I will then sign the regulation into law. The regulation will then come into effect on 1 February, as that is the deadline for the rule change for the signatories to the protocol, of which Ireland is one.

I have one question but it may not be related to this. It concerns an issue we will be discussing at a later hearing of this committee, namely, the country of origin assignation, which is not specifically a trademark but is related. I just want to check that there is nothing in this that affects that. We are happy to support this and will not be objecting to it but I just want to check that there is nothing here that affects country of origin. I can see from the Minister of State's face that the answer is "No". I did not think it was related but we will be having a session next week or the week after on country of origin so I just wanted to be sure that this would not in any way conflict with that. Obviously there are people coming to us who want to claim the certificate of origin and want some changes made to it to facilitate them. Is it correct that this would not interfere with that in any way?