Dáil Éireann - Volume 535 - 03 May, 2001
Industrial Designs Bill, 2000: Second Stage.
Mr. T. Kitt Mr. T. Kitt
Minister of State at the Department of Enterprise, Trade and Employment (Mr. T. Kitt): I move: “That the Bill be now read a Second Time.”
I bring the Industrial Design Bill, 2000, before the House today as part of the broader programme of intellectual property law reform which has been ongoing in recent years. Intellectual property rights have become increasingly important to the economy and society in general in recent times. This has been reflected in the increased activity on the legislative front both domestically and internationally in the past decade or so.
I am pleased that this Bill represents the last leg of the initial programme of reform of primary Irish legislation in this area and, as such, marks a significant milestone in the intellectual property arena in Ireland.
Notice taken that 20 Members were not present; House counted and 20 Members being present,
Mr. T. Kitt Mr. T. Kitt
Mr. T. Kitt: By way of background I will comment on the context in which intellectual property law in general is framed and operates. It is widely held that intellectual property rights are a key factor in promoting investment in innovative activity in the economy. Innovation is a key element in maintaining the competitive edge for an economy in the face of increasing international competition and economic globalisation. Any hopes of sustaining economic growth in the longer term depend significantly on the ability of the economy to adapt and achieve technical progress. Investment in research and development and the high valuation and prioritisation of innovative activity must be encouraged to give the country a chance to sustain in the longer term current economic well being.
Intellectual property rights are an essential part of the support and promotion framework which can ensure Irish business continues to invest in and develop innovative creative activity. Further to the Patents Act, 1992, and the Trade Marks Act, 1996, the Government introduced the Intellectual Property (Miscellaneous Provisions) Act, 1998, and the Copyright and Related Rights Act, 2000, both of which have significantly advanced the system of rights and remedies for the creators and owners of intellectual property. In addition, with a view to driving competitiveness in the longer term we have established the technology foresight fund, setting aside up to £560 million, or 711 million, over a seven year period for the creation of a critical mass of world class research, initially in biotechnology and information and communications technologies. The Government has, therefore, put its money where its mouth is in terms of promoting innovation and competitiveness in the economy in the past three years. The Bill is further evidence of our continuing  commitment to promoting innovation with appropriate support in the law.
On the industrial design front, Irish designers have received great recognition and had remarkable success, both at home and abroad, for their excellence and individuality. Increasing numbers of Irish textile fashion designers have been at the cutting edge of international design and exhibited around the world to great acclaim. Irish crystal and glassware products are household names throughout the world and the subject of a massive export industry. On the domestic front, the Irish furniture design industry, while always relatively healthy, has blossomed and currently boasts sufficient diversity and excellence to compete successfully with the best of imported material. Our success in this area has been based on quality and to no small degree on Irish culture, witnessed by a strong and vibrant craftwork and traditional handicraft industry that continues to thrive in many parts of the country.
Ireland has also been at the leading edge in modern design, including in the area of graphic design which is so significant in the context of the information society. The excellence and hard work that has gone into these areas must continue to be protected against the potentially devastating effects of plagiarism and the Bill aims to provide the appropriate level of support in the law by providing strong legal remedies and criminal penalties to ensure the necessary level of protection is achieved.
Industrial designs are, essentially, the appearance of products made by industrial or handicraft means. They include such features of appearance as shape, contours, lines and colours. Examples of familiar designs would be the shape of a coke bottle, the patterns used on wallpapers and carpets and the contours of crystal glassware. If we look around this Chamber, we can see many examples of industrial design in the furniture, carpets and other aesthetic features. The Bill will protect these designs against, for example, the illegal copying of the design, the illegal sale of products incorporating the design and the illegal import or export or other use of a product incorporating the design.
Industrial design law has been somewhat neglected during the years. The landmark Industrial and Commercial Property (Protection) Act, 1927, the first comprehensive intellectual property law to be enacted in the State, is still in force in respect of industrial designs. That, in itself, is sufficient reason to revisit this aspect of the law from the point of view of modernisation alone. The adoption of a European Union directive on the legal protection of designs in 1998 also offers both an opportunity and an obligation to overhaul the current legislation and bring this aspect of intellectual property law into the new century.
Turning to the content of the Bill, let me indicate a few general facts about industrial designs and the law. As I mentioned, it is the appearance of products that is the subject of industrial designs  protection, as distinct from the function of the product. To use the Coke bottle again as an example, it is the shape of the bottle that is protected under industrial design law; the function, in this case to hold carbonated minerals, is not protected by the registration of the industrial design. It may be possible that the function could be patentable as an invention and thus protectable under patent law, but that is not a matter for this legislation. It is, therefore, the aesthetic appeal of an industrial design that is protectable under the Bill. As Deputies will appreciate, the appearance of many products can be the decisive factor in determining whether a consumer buys that product or opts instead for a competing product. In this way, a poor design might undermine the commercial potential of a very high quality product. As a result, designers will spend much time and effort, and businesses much money, on achieving the best design possible to apply to their products. This investment of time and money must be rewarded to encourage its continuation.
The most effective and transparent manner in which to protect industrial designs is through a system of registration. This offers great legal clarity and certainty and also provides a system of accessible and concise information on the existence of rights and the registered rightsholders. The production of evidence of registration greatly assists the designer in moving quickly and decisively to obtain legal redress through, for example, injunction, to prevent the infringement of his or her rights and stop the continuation of such infringement. The existence of a public register also offers the public and other businesses important information on pre-existing rights and the expiry dates of such rights. This is very useful information in future planning and expenditure decisions of both directly competing industries, and industries and businesses which rely on designs to provide the best possible finish to their products.
As part of the update of existing law, the Bill clarifies the legal position regarding authorship and ownership of industrial designs and provides a clear statement of the rights that attach to the registration of a design under the new law. These provisions offer significant support to the designer in prosecuting and defending his or her rights in civil legal cases. The existing system of law is also amended to allow invalidation actions to be taken before the Controller of Patents, Designs and Trade Marks, on less restricted grounds than those in the current law. This should prove both useful and practical, as well as cost-efficient, in terms of time and expense for users of industrial designs. The Bill includes new provisions on the restoration of protection of designs that has lapsed despite due diligence in maintaining the registration, and provides an exception which permits prior use of a registered design to be continued in specified circumstances, even after the design has been registered under the new law. Both these provisions will facilitate  sensible and reasonable law to operate in practice and assist the smooth transfer to the new regime of protection, particularly for those who have committed time and resources to the exploitation of a design in good faith and subsequently find that they have no right to use the design in question.
The Bill restates in a clearer, more comprehensive manner the civil and criminal remedies available under the current law and improves them. The civil remedies include access to injunctions, damages and delivery up of infringing copies of designs, but also contain a protection for those who, unaware of the existence of rights in a design, innocently infringe that design right. The Bill proposes strong criminal penalties along the lines of those for the recent copyright legislation. This brings consistency across intellectual property law in this respect and a coherent approach to protection of the various forms of intellectual property.
One of the principal aims of the Bill is the implementation of the EU directive on the legal protection of designs adopted in 1998. It is important that Ireland implements this directive at the earliest possible date to demonstrate that our recent commitments to bring Irish intellectual property law into line with all international commitments are being met. I have no doubt that the House will assist in the achievement of this objective through constructive, yet efficient, debate. In implementing the directive, the Bill proposes that many of the legal definitions in the directive be directly transposed into our law. This will eliminate any possibility of incorrect or inconsistent application of the directive in Ireland. The Bill also introduces the new novelty and individual character tests, which are fundamental to the directive. The revised novelty test effectively means that, in general, a design must not have been made available to the public within the European Economic Area prior to application for registration in order to qualify for protection. This is a much broader novelty test than that under Irish law and is a significant development in terms of the achievement of a single market within the European Community.
I would like to take time to make particular mention of the position, under the directive, of industrial designs that constitute spare parts used for the repair of complex products. Member states are obliged to maintain in force their existing laws in this area until a review of the matter is undertaken by the European Commission in consultation with industry. This review is due to be completed and proposals brought forward by the Commission by October 2005 at the latest. Existing Irish law does not make specific provision with respect to spare parts. Therefore, if a design of a spare part meets the criteria for protection under existing Irish law, it shall be protected.
The terms of the directive include provisions that deny protection of the design of spare parts not visible during normal use of the product. The  Bill implements this aspect of EU law. However, because our current Irish law makes no specific provision preventing the registration of spare parts used for the repair of complex products to restore their original appearance, we are relatively constrained in bringing forward changes to prevent the registration of designs of spare parts used for repair purposes in the Bill. I will keep the matter under review and, when the European Commission reaches conclusions and brings forward proposals in this area, the best course of action for Ireland can be decided upon at that time.
On the international front, the Bill enables the ratification and implementation of the Geneva Act of The Hague Agreement on the International Registration of Industrial Designs. This treaty was concluded in 1999 and provides for the establishment of an international registration system for industrial designs likely to attract large membership among the member states of the World Intellectual Property Organisation and will offer the possibility of protection for Irish designers in many different countries through a single application. I am sure Members have fond memories of the World Intellectual Property Organisation as a result of our deliberations on the copyright legislation. Under current arrangements, Irish designers would have to apply individually to each different country, pay each country a separate fee and, probably, hire local legal expertise to assist in achieving registration in those countries. There are obvious cost and time savings involved in having access to a central, dedicated system that will operate to high standards of performance and process applications more efficiently than the currently available options offer. The Bill will also ensure Ireland's industrial design law is fully compliant with the Trade-Related Aspects of Intellectual Property Agreement, or TRIPS, as it is colloquially known, annexed to the World Trade Organisation agreement. These developments will permit Irish business and citizens to fully participate in the various international systems for protection of industrial designs and to avail of the undoubted benefits they offer.
In addition to meeting Ireland's international commitments and taking advantage of the international systems of protection, the Bill takes into consideration and reflects the modern environment in which industrial designers operate and the best elements of existing intellectual property law. The language employed is user-friendly and technology-neutral to provide, in as far as is possible, strong protection in this era of information technology, electronic superhighways and band width capability, which facilitates the copying and high-speed transmission of digital and electronic images, including designs, right around the world with the click of a mouse.
Many of the innovations in the provisions for search and seizure of illegal copies that featured in the recent copyright legislation have been  repeated for industrial designs. One in particular that is worth mentioning is the provision that permits the Garda to be accompanied by experts when conducting searches of premises for suspected infringing material. This is a practical measure that businesses can use to protect their legitimate interests in an effective manner. The area of graphic design, which has been growing in importance in recent years, is also covered by the terms of this provision, as are designs that are computer-generated.
While I am referring to the recent copyright legislation, I should mention that this Bill repeals the technical bar created in the 1927 legislation, which prevented designs that are used or intended to be used on industrial products from obtaining protection under copyright law. Repealing this technical bar offers underlying protection to industrial designs in the event that registration is not achieved or is not desirable. It enables a designer to choose whether, in light of the nature and intended use of the design, copyright law or registration under the Bill is the most effective form of protection for their particular design.
It is my intention that regulations made under this Bill in the future will facilitate e-business, including electronic payment and, eventually, electronic filing of applications. It is critically important that Irish business and the Irish public have quick, secure and cheap access to information on registered intellectual property rights. Proposals to enable the Patents Office to meet that challenge and to bring the industrial designs registration system into the modern era are currently being prepared and will be developed on a structured basis over time. In practice, this will mean that designers will, in time, be able to apply for registration electronically and to access the designs register on-line via the Internet. At present a person seeking information on registered designs must request the relevant information by post or must visit the Patents Office to physically view the paper-based register of designs. This is most impractical and does not permit electronic searching of the designs database or timely access to information for Patents Office users. This process will need to be reflected in respect of all areas of intellectual property services, in line with the improved access to public services to be provided through the public services broker model recently announced by the Taoiseach. Only then can we say that we have truly implemented e-government in this area of public services.
I emphasise that, while this Industrial Designs Bill is only one element of the overall ongoing programme of reform of intellectual property law in Ireland, it is, in itself, a very significant step forward. It will have a significant beneficial impact on design industries and craft businesses, which rely heavily on the protection of the law to underpin the substantial investments they make in developing designs. This Bill will also contribute to the modernisation, simplification and user- friendliness of the Irish legal code, as well as enabling Ireland to meet all its EU and international obligations in the industrial designs area.
I commend the Bill to the House.
Mr. Flanagan Mr. Flanagan
Mr. Flanagan: Fine Gael support this legislation. I have been looking at legislation for many years but I have never come across a situation where the reading of the explanatory memorandum was more difficult and more confusing than the actual Bill. Perhaps the Minister's Department would consider ensuring that, as far as possible, the explanatory memorandum is just that. The Bill is far more user friendly, consumer friendly and Dáil Deputy friendly than is the explanatory memorandum. I hope that point will be taken on board, particularly in the area of intellectual property which is technical.
The Bill before us implements the EU directive on the legal protection of designs and will mean that Irish business and designers in future will be bound by an international system of design protection under the Geneva Act of the Hague Agreement. The Bill results in our law being considerably modernised, allowing for the expansion of remedies in both the civil and criminal codes which will be available in respect of breaches of design rights. Undoubtedly, this is a welcome move. The Bill implements fully the terms of the EU designs directive and includes the same definitions and language of the directive in so far as it can. It is a complex and technical area.
As well as complying with the legal requirements of the directive, the Bill extends the protection afforded to design by ten years from 15 to 25 and also extends the protection of copyright to include all registered designs. This is the first time in Irish law that this has happened. When enacted it will allow the owners of these design rights better scope to enforce their ownership by referring matters to the Controller of Patents, Designs and Trademarks or, indeed, through the courts and it also provides a more effective and faster system of registration of designs. The Bill deals with certain rectification procedures and sets out the basis where persons are not entitled to register design rights or to adopt another person's design rights for their own use and benefit.
The Industrial Designs Bill is one of a number of Bills in the intellectual property area published recently allowing this country to keep pace with international developments and modernisation. It is important to note the important advances made so far as industrial design is concerned and the manner in which many of our designers have kept pace with best international practices over a number of vocations. In the past ten years we have had the Patents Act, 1992, the Trademarks Act, 1996, and implementation of the European directive on trademarks. In 1998 we had the Intellectual Property (Miscellaneous Provisions) Act, 1998, with regard to civil copyright cases. Since then the Patents (Amendment) Bill, 1999, has completed Second Stage and is awaiting Committee Stage.
 Over the years we have neglected to update our legislation in this area. Until now the registration of designs in Ireland was governed by the Industrial and Commercial (Property Protection) Act, 1927, which deals with patents, trademarks and designs. The registration of designs in Ireland is still governed by the 1927 Act whereas our near neighbours in the UK have seen considerable modernisation and development in design law. For example, Britain had the Registered Designs Act, 1949, the Design Copyright Act, 1968, and the Copyright Designs and Patents Act, 1988. In the meantime Irish design law has remained largely unchanged.
Industrial designs are protected by design registration under the 1927 Act or where a design is not capable of registration it may be protected in certain circumstances under the Copyright Act, 1963, amended 14 years ago by the Copyright (Amendment) Act, 1987.
This Bill centres around the EU directive on the legal protection of designs adopted by the Council of Ministers in September 1998 and published in October 1998. This came into force on 17 November 1998 at which time it was announced that member states had three years to implement the directive which will expire in October 2001. I am sure it is the Minister's intention to have all Stages of the legislation through both Houses and signed by the President in advance of that date. Fine Gael supports the harmonisation of the law in those areas directly affecting the working of the internal market. The matter of penalties, remedies, sanctions and enforcement will remain in our own hands. I am pleased the Government took an early decision, following the publication of the EU directive in October 1998, to introduce this primary legislation.
The terms of the directive give rise to certain important changes in our domestic law as outlined in the Bill, for example, the meaning attributed to “design”, the criteria for registration and the meaning of this registration, the introduction of a “must fit” exclusion from registerability, the introduction for the first time of a grace period and the extension of the period of exclusivity available.
Part 1 deals with design registration and it is no surprise to learn that the design must have features of shape, configuration, pattern or ornament. This is a new definition in the Bill which states: “ “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colour, shape, texture or materials of the product itself or its ornamentation.” The shape or pattern must be applied to an article as under Irish design, registration is based on the specified article and there is no protection for a shape which is considered abstract or a pattern which is not obvious from the article. The shape or pattern must be applied in all cases to a specific and particular article. This is a practical effect when deal ing with the first registration or when determining a breach.
In Britain there is an exemption from registration when dealing with articles of an artistic or literary nature. In Ireland design works or sculpture works may be accepted for registration. Perhaps the Minister of State could comment on the exemption from registration or otherwise in respect of articles of a literary or artistic nature. On application for registration the new design must be one not previously published in the State and the matter of novelty is considered of great importance. In other jurisdictions there have been difficulties in deciding what is new and original and it seems the test, that is applied in order to consider novelty, is that an original should be interpreted as referring to a design no previous designer had created for any purposes, and a new article would be in reference to a design which was not in this sense original but was new in so far as it was the first time it was the subject matter of an application.
Section 11 provides that the design which is new and has individual character shall be capable of being registered and the criteria for such registration are contained in sections 12 and 13. The Bill includes provisions which will be subject to inspection by the registrar and subject to obtaining copies of documents. It appears no inspection can take place until after registration has been completed while section 24 provides that the design shall be classified. Section 40 provides that the Patents Office shall provide details on registered designs on request, accompanied by information, to enable the controller to identify that design.
I was interested to hear the Minister of State refer to the Patents Office going on-line, which is a marvellous achievement to which I look forward. It is one of those offices that conjures up images of Dickensian cobwebbed rooms full of paper. It is closely associated in my mind with such august offices as the Registry of Deeds and, until lately, the Companies Office. The on-line facility should be available to all public offices. The situation in the Companies Office remains somewhat unsatisfactory regarding filing documents and returns – the normal form-filling procedures of that office. It is the bread and butter of the Companies Office but the fact that most of those activities are not available electronically is a source of concern to businesses and particularly small to medium-sized enterprises. Matters should be progressed along the lines suggested by a recent statement from the Taoiseach. I hope the Patents Office and the Registry of Deeds follow suit.
The existence of the registration of a class in which a design might be registered can also be discovered by way of application to the controller. The procedure for registration, I understand, takes some time to secure and I hope this can be dealt with positively following the passage of the legislation. There appears to be an undue time  lapse in terms of waiting for registration and presumably if modern technology were applied the delay would be considerably shorter.
The design is registered for an initial period of five years and may be renewed thereafter and the maximum time under the Bill is for 25 years, an extension from the present ten years for registration of design articles. I note that packaging designs and get-ups as well as type faces will be considered for registration as will the design of a part of a complex product, provided that the criteria are met for registration and provided that the part design remains visible during normal use which, under the legislation, means “use by the end user” excluding servicing, repair or maintenance. The Minister of State made a passing reference to the situation regarding motor car components and spare parts. This area is a source of some uncertainty and will be considered in some detail on Committee Stage.
The section dealing with individual character is important in so far as a design must have individual character and would have to be deemed to have the character by the informed user. It must convey a different overall impression than any of the design available to the public before the filing or priority date. When deciding on whether individual character is present the degree of freedom of the designer has to be considered.
This Bill has been welcomed, by and large, by experts in this field. There was a seminar considering the matter in some detail some months ago which the Minister of State attended. There were submissions from experts, such as European patent attorney, Mr. Peter Short, and Ms. Yvonne McKeown from McLoughlin and Donaldson, who made some interesting comments following the immediate publication of the Bill last year. I understand the Bill has also been welcomed by the Copyright Association of Ireland.
There was a particular reference to the introduction for the first time of a grace period in Article 6 of the European directive. This article provides that activities of exhibition and publication or other disclosure will constitute the making of the design available to the public, unless such activities could not reasonably have become known in the normal course of business to those specialising in the sector concerned prior to the filing date. Practitioners will have noted that this will cause not only some difficulty but some legal uncertainty and I trust the Minister of State will clarify this in the course of his reply or on Committee Stage.
In section 2 of Article 6, there applies a grace period of one year in respect of disclosures made by the designer or that person's successor in title or a third party as a result of information provided or action taken by the designer. Thus comments such as disclosures made in the 12 months before the filing or priority date will not deprive the design of one of its most fundamental aspects of registration, the matter of novelty. The provision of a grace period is new and something practitioners will take some time to embrace.
 Practitioners have welcomed the duration of protection which has been increased from a current maximum of 15 years to a maximum of 25 years from filing applicable in blocks of five year periods. The extension of the period of protection under Article 10, section 43 is welcome. There may be a problem in so far as the provision that allows for the deferment of publication of design is concerned. It has been suggested that this period should not be 30 months, as envisaged in the legislation, but perhaps 18 months, which would mean a certain harmony with the period as in the patents legislation. A period of 30 months is considered too long and perhaps for consistency 18 months should be considered.
As well as design being defined in the Act, so too is product, as “any industrial or handicraft item, including parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographical typefaces, but not including computer programmes”. It is clear that the definition is broader than that of article, which is also contained in the Bill and to which I referred earlier and which will allow for the registration of designs for articles which have no function other than to carry the design. Designs for packaging, get-up and graphic symbols will be registrable, therefore, for the first time.
It is clear that designs for typographical typefaces will be registrable for the first time and the definition also includes items such as motor car parts for assembly into a “complex product”, a product composed of multiple components which can be replaced. I referred earlier to the difficulties we may have regarding clarification of car components and spare parts.
I understand from the Bill, although the Minister may correct me, that computer programmes are excluded as products because the Government is anxious to avoid confusion between this directive and the computer programme protection directive. Any overlap could give rise to confusion, yet the Minister referred in his speech to the fact that this legislation covers electronic filing. I am not sure of the extent to which we have incorporated a body of legislation to deal with the directive on computer programme protection. I do not recall legislation being passed, or being before the House, so I am not sure where the application of that directive to Irish law stands. I ask the Minister to comment on that.
The directive sees significant changes in Irish law as far as novelty is concerned. For the first time, we have introduced the concept of universal novelty, whereas under current law only local novelty is required. There is also a subjective test as prior art must be shown to have become known to the relevant industrial sector within the European Union; otherwise the requirement of novelty in individual character does not appear to depart significantly from our local test as to similarity applied under existing law.
The directive does not require examination, and it is questionable whether the novelty examination carried out by the Irish Patent Office for  prior Irish designs would be worthwhile in the context of this new universal or international novelty. I understand the European office that will deal with design registration will be based in Alicante and I wonder if there will be an Irish representative. What will be the relationship between the European office in Spain and the Irish Patent Office? Will Ireland have a representative on the international inspectorate? What will be the changed role and function of the Dublin office?
The directive does not include provisions on ownership but these are included in the Bill in sections 17 to 19. The Bill identifies the author of a design as the person who creates it or makes the arrangements necessary for its creation. Section 19 states that the author is “the first proprietor of the design unless the design is created by an employee in the course of employment, in which case the employer is the first proprietor of the design, subject to any agreement to the contrary”. Such an agreement may be between an employer and an employee, third party, agent or client. The author, if not the first proprietor, has the right to be named as the author in the application for registration.
It is provided that the scope of protection conferred by a design right shall include any design which does not convey on the informed user a different overall impression. A design registered in a member state shall also be eligible for protection under the law of copyright of that State, from the date on which the design was created in any form. It seems that a cumulative protection by design registration and by copyright must be provided. If so, it is necessary to delete from Irish law the current prohibition on such cumulative protection and to regulate the protection to be given by copyright. The directive contains other provisions relating to invalidity or refusal of registration and rights conferred by registered design and imitation of rights.
We will have to consider some aspects of the Bill in detail on Committee Stage. I refer particularly to matters that might arise, for example as regards the “must fit” exception with particular reference to spare parts in the motor industry and the repair exception. The directive makes clear certain matters which will render a registration invalid, in particular if it is lacking novelty or is functional, immoral or contrary to public policy, registered by a non-proprietor or a party who cannot establish a bona fide interest, conflicting with an earlier registration or deemed never to have given rise to any rights.
A considerable section of the Bill deals with reliefs available to injured parties or parties that may be offended by a registration. The three remedies available in such instances are injunction, presumably to stop all registration that may be adverse to the interests of the person involved, the seizure of the goods that gave rise to the problem in the first instance and an application to the court for damages as a civil remedy. I note that the court mentioned in section 62 for an  application for the seizure of infringing products or articles is the District Court and I am somewhat surprised as I find it a little difficult to comprehend that this is an area of speciality of District Courts. While there may not be a flood of applications from persons who allege extensive breaches of the Industrial Designs Bill and are seeking the seizure of goods, one would imagine that a District Court's expertise in this area would be somewhat limited.
The Minister referred to the role of the Garda Síochána when conducting an examination, investigation or search and it is important that gardaí are sufficiently competent in this area. To allay fears we may have in that regard, the Minister said there will be experts, I presume a panel of them, available to accompany the Garda. I assume the experts will advise the local District Court on the nature of the infringement or on the damage that may have been caused. Who will be on the panel of experts? Where will they come from? How many persons does the Minister envisage as sufficient to operate as a team? What evidence will be required of them to fulfil their duties?
The overlap between design registration and copyright and the extent to which designs may be protected by copyright is complex and specialist. When these matters are before the courts, in particular the District Court, I hope the appropriate level of speciality and expertise will be available. The Hague Agreement on the international deposit of designs provides for a single design registration covering a multiplicity of States. Since 1925, only 19 states, excluding Ireland, have adhered to the treaty. Under the Industrial Designs Bill, 2000, it will be possible for Ireland to adhere to the new Hague Agreement and ratify the treaty, which will contribute to the harmonisation of design law through the EU in accordance with commitments already given.
As the legislation must be enshrined in Irish law by a particular date in October, and taking into account that there are nine weeks left in the current session, Fine Gael will co-operate fully with the passage of the legislation. I thank the Minister of State, Deputy Tom Kitt, for his opening comments. No doubt his officials will be available to Members of the House to attempt to iron out some of the difficult technical language in the Bill. I look forward to the debate on Committee Stage following completion of Second Stage.
Mr. Rabbitte Mr. Rabbitte
Mr. Rabbitte: I thank the Minister of State, Deputy Tom Kitt, for his introductory speech which spells out the background, purpose and significance of this legislation. Deputy Flanagan has taken time out to trace in some detail the complexity of this Bill and I do not propose to follow suit. I cannot improve on his explanation of the terms of the Bill because, above all, this is a hugely technical Bill.
The whole area of intellectual property is quite complex. I cannot disagree with the Minister of  State's fundamental proposition that intellectual property is now a key factor in promoting investment and innovative activity in the economy. That is manifestly true. This Bill is an aspect of that. It is, I suppose, in the overall programme of intellectual property reform, a minor, but nonetheless important, aspect.
From my time in Government and in Opposition, I am familiar with that broader programme of intellectual property reform. I introduced the Trade Marks Bill, 1995, and I have sat opposite the Minister of State, Deputy Kitt, in debates on a couple of the more recent Bills put through the House. I do not know if there is any point in coursing again the philosophy which we dealt with in more detail in the Copyright and Related Rights Bill, 1999, in particular, save to say that nowadays there is not really a great deal of freedom open to an Irish Government in this matter. We are members of the Single Market, which determines, whether by way of international treaty or adherence to a particular EU directive, the parameters of intellectual property law in Ireland. As a result we have had the experience on several occasions of dealing with amendments, which in the Irish context may even have recommended themselves to the Minister as being sensible or tailor made for the Irish situation, but which the Minister found he could accept because of something set out, for instance, in the TRIPs Agreement or the Hague Agreement. In that sense the broad parameters are pretty much laid down and this Bill is following on the EU directive.
I compliment the Department on being ahead of itself. It is a little unusual to be here at this stage of the legislative process in advance of the date set out for implementation of a EU directive. I do not know the extent of the backlog of primary legislation in the Department related to European law, not to mention secondary legislation, but I would imagine the Department is ahead of itself here. Probably that says something about the growing importance attached to the programme of reform of intellectual property law in Ireland.
Having said all of that, I did not ever see this issue of design primarily in the realm of intellectual property law. I see it in the context of industrial policy. It is an important aspect of innovation and I do not think we have been good at it. In the modern world in which we function in terms of commercial practices, the permeation of television and consumer habits, the attractiveness of design, packaging, etc., is critical. Design is only one small aspect of innovation. When we talk about innovation, which is absolutely central in maintaining a competitive edge for this economy in all of its aspects, in the past we have not given it the attention it deserved.
On the question of industrial strategy, the extraordinary boom over the past six or seven years to some extent conceals a certain endemic weakness which still exists in the indigenous sector. Of this year's two shocks, the foot and mouth  disease scare and the American economic slowdown, it is the American economic slowdown which poses the greatest threat to this economy. So much of our growth is being driven by the large international companies based here that agriculture is not as significant as it once was. The foot and mouth disease scare impacts on other industries, especially tourism, but it is a shock which we can survive and overcome. If there was to be a serious downturn in the United States it would have quickly a serious impact on employment here. Therefore there is a necessity to maintain the focus on developing a strong indigenous sector in this economy. Whereas we have made progress and considerable strides in recent years, there are still weaknesses and there is still inadequate attention given to innovation, and this matter of design is but one important aspect of that necessary innovation.
If one looks back over the years, we have been weak in this area. One should remember the efforts, such as they were, to try to create a design conscious environment in Ireland. CTT was the only agency, in my judgment, which tried to give any profile to this issue. I am not sure what is the position today. I am not that close to it. I do not know how the absorption of An Bord Tráchtála impacted on the Department, which is now huge.
I do not know if any Minister has the time to focus on that aspect of it to drive it to the extent it is desirable. Enterprise Ireland is also an enormous conglomerate. I wonder was it a happy and desirable merger? CTT tried to give some profile to this issue with some success.
To take the example of the Kilkenny Design shop, the idea was to import Swedes to guide us on the importance of this area and that achieved some success, but unfortunately through inadequate resourcing and other neglect the workshops effectively crumbled and we are left with KKD, which is dedicated to good producer design for the top of the market. It was a pity the design workshops crumbled for the want of assistance in grant aid, resources and so on.
I would like if the Minister of State, when replying, could contradict me on the point I am about to make. He said on the industrial design fronts, Irish designers have received great recognition and they have had remarkable success at home and abroad for their excellence and individuality. I am not sure to what he is referring. It seems to be a complacent position. Will he give some instances of this striking impact we have made abroad? We have had an impact to some extent in the textile area. I am not so sure about Waterford Crystal. We have not made a major international impact in the design area. It is not easy to do so. To take the example of the Coke bottle used by the Minister of State, a great deal of money went into us all being able to recognise it across the world.
Mr. Perry Mr. Perry
Mr. Perry: They make a big mistake on it.
Mr. Rabbitte Mr. Rabbitte
 Mr. Rabbitte: Yes. It is a difficult and expensive issue. In terms of considering industrial policy, I am not sure design is an aspect that has attracted the focus and priority it deserves. I welcome this Bill in the sense that it brings forward this issue. The Minister of State said it is true that industrial design law has been neglected over the years. That bears out my point. The landmark 1927 Industrial and Commercial Property Protection Act, the first comprehensive intellectual property Bill to be enacted in the State is still in force in respect of industrial designs. The year 1927 is a long time ago, a year after momentous events in the Leas-Cheann Comhairle's life. For the Minister to say it is true that industrial design law has been somewhat neglected over the years is a euphemistic statement. A great deal of water has gone under the bridge since 1927. Industrial policy has evolved dramatically since 1927, the era of protectionism and so on, into the current Single Market, global market conditions and so on. That 1927 law remains the law of the land, which points to design not having attracted the same attention from the policy makers as other aspects of industrial policy.
This issue is part of the weakness of our indigenous sector. I am glad the law, as distinct from design practice, is being modernised and I welcome the protections the Minister of State has introduced in the Bill. I have not had too many lobbyists come to my door about this Bill, although Deputy Flanagan, who took great care to course the Bill in some detail, may have had. I am not aware of any rising up among those in the design industry to make their case. I do not know if they have been making their case to the Minister of State. That also tells a tale. I would have thought an organisation such as IBEC would have someone skilled in promoting this aspect. If it does, I am not aware of it. It certainly has not made any representations to my knowledge to this side of the House on the matter. It is important enough to require that kind of attention.
Mr. T. Kitt Mr. T. Kitt
Mr. T. Kitt: They would normally approach the Deputy when they are not happy with a Bill.
Mr. Rabbitte Mr. Rabbitte
Mr. Rabbitte: The Minister of State might indicate if he has had discussions with IBEC about the essence of the Bill and what is its view, as I would be interested to know that.
Deputy Flanagan referred to the Minister of State's glancing reference to the Patents Office going on line and being available and better capable of coping with the additional functions we have imposed on it on a few occasions in recent times. I would have thought the additional burden on the Patents Office would be pretty extensive and I was glad to hear the remarks the Minister of State made.
Deputy Flanagan said there is no reason we could not do what we did to the Companies Registration Office and that is right. I take some credit for the modernisation of that office in  terms of investment decisions I made in IT and other changes including the purchase of a premises when I was on the Minister's side of the House.
I am aware of an extraordinary court decision that effectively prevents the Companies Registration Office from providing the kind of service Deputy Flanagan said would be desirable. My understanding is that a private company brought an action to the court and, to the surprise of many people, was successful, as a result of which the Companies Registration Office is disbarred from providing a service on line to the public that it might otherwise provide. I understand the Minister is appealing that, but I do not know why the matter is not winding its way more speedily through the system, as it is important it should be disposed of. That service should be available on line to people in 2001. Nobody can claim to have a superior right to mediate this information to the public as a commercial proposition. Is the Minister of State aware of the status of that appeal and if it is being pressed with any urgency because it is important, as Deputy Flanagan's analogy is fair enough.
The terms of the Bill, subject to closer scrutiny on Committee Stage, seem to stick pretty rigidly, in terms of definitions and interpretation, to EU directives and other than that I presume it has to conform to the relevant international agreements and treaties to ensure that the TRIPS agreement is fully implemented in Ireland. It is probably fair enough to grant design rights lasting up to 25 years to proprietors of registered designs, although I understand that the duration of copyright is life plus 70 years. The people who own the design rights would have the exclusive right to use the relevant design and to prevent its being copied or sold by others.
Having regard to our international obligations, I am not sure that this Bill lends itself to much amendment on Committee Stage, other than scrutiny of the import of various sections. It is not a Bill that is likely to be subject to lobbying by special interests, as was the case with the Copyright Bill. It is not even like the Trademarks Act, where people whose daily living was affected by the changes being made, made sure that their point of view was registered with the legislators. So far, I have had little contact about this Bill and I doubt if that situation will change. I see this Bill as a technical and very detailed but timely Bill, on an aspect of intellectual property which is probably the poor relation of copyright, patents and trademarks but is nonetheless important in itself.
I agree with Deputy Flanagan's remark about the explanatory memorandum. This issue has arisen twice previously with the Department which the Minister of State represents. I know that the Bill emerges from the parliamentary counsel's office and is signed off by the Minister, but where does the explanatory memorandum  come from? Does it also come from the parliamentary counsel's office or is it a departmental product? If it comes from the draftsman's office, the Minister should direct that his officials would have a greater involvement. Surely the purpose ought to be to explain the concept to us, rather than merely regurgitating, in some cases almost verbatim, the contents of the Bill itself.
There is no point in having an explanatory memorandum if it simply repeats the wording of a particular section, rather than explaining, in plain English, the essence of the point being made. Anybody looking for the letter of the law will find it in the Bill, as we do in considerable detail on Committee Stage. This was quite a contentious issue on a previous Bill, which one I cannot recall, within the lifetime of this Dáil. Perhaps it is understandable for people in the parliamentary counsel's office, who have put the Bill together, to repeat it in shorthand fashion in the memorandum. However, for legislators who are the common or garden product of the wishes of the people at election time, it would be of great help if it were communicated to us in terms of the essence of the case being made.
I do not know, at this stage, the likely implications of such matters as the new novelty test. Does that make it more difficult, or easier, for people to register designs? I am unclear on the reference to Alicante. If an Irish designer wishes to register a design on a piece of glass or a garment, does registration with the controller in Kilkenny, give property rights to the designer in a European Union context? Is that the situation already, or are we working towards that? Does one have to go to Germany to register separately if one is doing business in the German market? There are a number of questions of that nature which, no doubt, we will have an opportunity to discuss on Committee Stage.
I welcome the Bill as continuing the programme of reform of intellectual property law. Broadly, the Labour Party will support it on Second Stage.
Mr. McGuinness Mr. McGuinness
Mr. McGuinness: I join in welcoming the Bill. I agree with the comments of Deputies Flanagan and Rabbitte about the explanatory memorandum accompanying it. As a new Deputy, it had occurred to me to raise the issue on previous Bills. I agree that what is needed is a simple explanation in layman's language, so that we clearly understand the intentions of the Bill and its contents.
With regard to the present Bill, it is necessary to go through what the Minister said to get a total grasp of what is intended and the various reforms which are proposed. Because it is a particularly technical Bill, many of the finer issues can best be teased out on Committee Stage. Generally speaking, I hope that the introduction of the Bill will emphasise the fact that there is an interest in intellectual property rights. This is a serious issue for the design industry in Ireland.
 I understand the points being made in relation to the American economy and the involvement of quite a number of industrial names in this country. We are now firmly establishing a greater part of our economy on the industrial base of America and on the information communication technology revolution, which is ongoing, although recent American stock market reports indicate that it is going through a rocky period. However, with software developments and the demand for innovations in that field, I have no doubt that we will see an upsurge in that market again.
In view of that reliance on the American economy and on the Irish operations of American-based companies, the only thing which makes us in any way different in this field is in the area of innovation and design. That is what makes us different from the American or European experience in this area. Our ethos and culture lend themselves to design and quite a number of Irish people have made their mark on global markets due to their ability to innovate and design. They are not only in the textile area but in furniture production and design, glass design and many other areas. They are also in website and software design which is a huge market. Irish people have played a major part in that area, not just in the American and European markets but globally. These are the people at the cutting edge of development of design and innovation.
They have been fumbling around in terms of the law and how we offer protection for them. We have not offered sufficient protection to them in the marketplace. Anyone involved in global markets in the area of design will understand that a design is no sooner produced or an innovation put on the market than they are reproduced or stolen or hijacked. I welcome this Bill. It is time this was brought forward and I note in the Minister's contribution that the current law on industrial design dates primarily from 1927. It is well due a serious overhaul. It is possibly the oldest legislation since the foundation of the State to survive on the Statute Book. For that reason and because of the revolution in the economy in recent years and in terms of the sound economic base we are building at home and abroad it is certainly necessary for this legislation to be updated. Many things have happened since 1927 but that legislation seems to have survived world wars, the fall of the Berlin Wall and all sorts of economic changes all over the world.
This new Industrial Designs Bill, 2000, is therefore required to reflect the current state of technological development in society and to provide a modern system of protection for creators of industrial designs. We must also be conscious of the need to revive excellence in public services and to facilitate businesses that wish to carry out their transactions electronically in this information society era which is, regardless of recent economic stumbling, an ongoing positive development.
There was a reference to Kilkenny Design and I am delighted as I am from the Carlow-Kilkenny  constituency. I am also pleased because Kilkenny has become synonymous with design. Design itself, in European terms has become synonymous with what is happening in Kilkenny. It is true that there has been significant change in the Kilkenny Design workshops. There has been a change in ownership and Kilkenny Civic Trust now own the workshops but that does not mean that the effort in design, production and innovation are not continuing to take place. The courtyard in the workshop in Kilkenny is now full of people interested in various activities such as pottery, jewellery, furniture, etc., and a craft council of Ireland is involved there showing off Irish design and designers. That is crucial to the economic base of this country because of the fact that we have led the European scene in terms of design. There is a global market for the design centre and its product and it is recognised and profiled abroad.
Textile, furniture and pottery design have been mentioned. History books show that a Callan, Kilkenny, man was associated with Coke and a Kilkenny man was associated with the architectural design of various buildings, including the White House. Design in our culture goes back to early years and Irish design, Celtic or modern, is recognised. Despite the fact that we focus on information and communication technology, an important role is being played in building a sound economic platform by design and manufacture and it is time we introduced this legislation to protect what is happening.
Waterford Crystal is just one company involved in the general production of glass and the quality of its designs is recognised world-wide. Other glass companies would also have an interest in this Bill. They are now creating new designs in glass and establishing small indigenous companies assisted by county enterprise boards and other agencies of the State. They are doing quite well and also recognised abroad. People come here to see and experience the design capabilities of these companies. I do not doubt that if these companies were made aware of this Bill they would have a strong input to it on Committee Stage. The Bill should be widely publicised because these people have been asking for this type of legislation and now it is being delivered.
I mentioned the area of software design and it deserves particular attention. Young Irish designers have made a name for themselves world-wide regarding how quickly they caught on to information technology. Quite a number of smaller companies are now actively promoting Irish design in the global market, thus ensuring a strong profile for this country as a technology based economy. Because so many things are happening in the area of design and technology it is extremely important that this Government through legislation would offer them necessary protection.
Deputy Rabbitte asked for some examples of our design abroad. Through travel one will experience at first-hand the numbers of compan ies that have made a name for themselves in the global market in software design. There are also other areas such as furniture design. Other smaller companies have accessed major markets and employ a small number of people in their Irish based operations. Their success is based on the fact that they have captured innovation and design. In furniture design, for example in Kilkenny, they have cut out a niche market for themselves but their success is based on design.
Recently at the Enterprise and Small Business Committee we had a number of people discussing the issue of patents. They wanted to ensure that their design or product was protected. I believe, despite what Deputy Rabbitte said, that there is a very strong economic involvement by designers and there is an interest in this Bill which does offer protection. The clothing design industry is another sector which will look at this Bill positively.
Much legislation is required to facilitate e-business and e-government, none more so than in industrial regulation where costs to business are involved. This Bill will eventually provide business and the public with quick, secure and cheap access to information on registered intellectual property rights. Proposals to meet that challenge and to bring the industrial design registration system into the modern era must be developed. Today, a person should be able to access the design registers via the Internet. The companies which use the Internet, not just as a marketing tool but to inform and communicate, want to access all information on line. By doing that, as a Government, we are participating in this revolution, by placing information on line and so encouraging others to use it. People should be able to conduct their business with the State in the most efficient, cost effective manner. This involves the new technology of which I speak.
There are reviews on economic progress and the boom seems set to continue. This happened recently but the foundations were laid long before. There is the possibility to create a society capable of standing on its own feet and playing its part on the world stage. Last year, Ireland achieved the honour of obtaining a seat on the United Nations Security Council. This is the best time to increase our international profile and to demonstrate our commitment to international co-operation, as much in intellectual property rights as in security and other forms of international relations.
This Bill brings us into line with our EU commitments and places us at the forefront of international protection of industrial designs. It strengthens this protection by bringing it up to the standard of the EU directive and even goes beyond it in protecting the interests of Irish designers, industry and citizens. The broad range of strong criminal remedies and penalties ensures that innovation and creativity in industrial design will be encouraged and protected. The companies involved in this field, playing a major role in  global markets, welcome this Bill and the legal measures.
Ireland is one of the first member states to introduce such measures and is setting an example for our EU partners, underlining our commitment to the single market. I applaud the Minister for this. The Nice Treaty, the growth of the EU markets and the expansion East will provide us with the type of challenges that we encountered when we joined the EU. We quickly competed with many of the leading European economies and now we are a leading one. When that competition occurs, many measures will operate regarding innovation and design. It is important as a small European country for us to show our partners that we are willing to play our role in protecting intellectual property rights and in implementing EU directives. In the long-term, with EU enlargement, we must give the lead in this area. We must show that we are good Europeans, which we have proved, and protect the markets that we generated through our design ethos and niche marketing.
This Bill facilitates access for Irish designers and owners of intellectual property rights to the Geneva Act system under the Hague Agreement, on the international registration of industrial designs. This is further evidence of our commitment to participate fully in the protection in the intellectual property community and the organisations concerned with this. The new Hague system will permit Irish rights owners to access, in a cheap and effective manner, protection for designs in over 150 countries by a single application to an international designs office in Geneva. Ratification of this will place Ireland at the forefront of states committed to co-operation on implementation of an international treaty. This is to be commended and relates to EU expansion. It will be essential to all involved in international manufacture and design, requiring this protection, to do so at a stroke. They will be protected in many European markets and comforted in knowing that our Government, in this legislation and others to follow, realises their needs and concerns. The most important outcome from a business, competitive perspective of this legislation must be a system which is easy to access, inexpensive and is as user friendly as possible. This legislation moves towards that. I acknowledge the Bill's importance and hope that on Committee Stage we can tease out the technical points. It will be welcomed by those involved in the design industry.
Mr. Perry Mr. Perry
Mr. Perry: I welcome this Bill, which updates legislation from 1927 and is overdue. From its 89 sections, and my experience with the previous copyright Bill, I know the Minister devoted much time to both Bills. Good design in business can be the difference between profit and loss. This Bill, as previous speakers stated, is complex, but it must also be user friendly. I appeal to the Minister to provide a booklet to small businesses to explain how the Bill can be availed of. People  outside the House may find it difficult to understand how to comply with and avail of it.
There are many references in this Bill to the role of the controller. Under this legislation he will now be empowered, but will he have additional staff to enable him to implement and promote this Bill? Once this legislation is put through the House and becomes law, it will be necessary to make people within the industry aware that it is in place. It is very important that the Government should clearly promote awareness of this legislation, a Bill consisting of 89 sections, the purpose of which is to implement the EU Design Directive 98/71/EC, which must be implemented by October 2001.
While it is important to incorporate EU directives in our legislation, this Industrial Design Bill is particularly important, given the huge amount of pirating in every sector. It will help to facilitate the creation of jobs and safeguard innovators in terms of their investments in products in terms of research and money. The foot and mouth crisis is an example of investments being undermined by smuggling, inadequate Border controls and other abuses. I am certain that the investments of many people in industry have been undermined because a concept they have come up with has been pirated and their idea stolen. This Bill will prevent that happening in future.
An article in Business and Finance states:
Irish design continues to suffer from fragmentation and a lack of cohesion with a large number of firms employing less than 12 people. There is a poor export sales records from Irish firms reluctant to pool resources in order to secure large-scale contracts.
That is an area that we should look at in the context of employing companies for design, because it can be very difficult for small companies to employ a designer because of the cost. The article continues:
These serious issues are being addressed by four main sectoral organisations. A partnership called Design Ireland, based at the UCD campus, is to be launched in January. [I presume that has already been launched]. This is a not-for-profit initiative aimed at more effectively marketing Irish design abroad.
We all know of the larger companies such as Waterford Glass. However, Irish companies have a great reputation abroad and there is huge potential for small companies who employ fewer than ten or 12 people, who definitely could not employ a design company. The article further states:
According to a report published by Enterprise Ireland in May of 1999, product design accounted for just two per cent of the sector's overall income in 1997. Visual communications, which includes advertising, graphic design and multimedia development, represented by far the biggest category, with 78 per cent of total income, while environmental  design, which includes architecture, interior design and stage design, accounted for 20 per cent . . . mention of the words ‘Irish' and ‘designer' in the same sentence summons up figures from the fashion world like Paul Costello, John Rocha, Philip Tracey or Lainey Keogh.
Our best example of this is Kerry Co-op and the Kerry brand in relation to food. Kerry Foods is a very important international trade name. In the context of marketing Irish beef abroad, the concept of a good name would clearly identify the product as being Irish. That is where Kerry has been so successful. In the future, it will be important to have a good name not just in relation to food, and to clearly establish that name to ensure that what is manufactured in Ireland stands for something. We must invest in that.
The article further states:
Awareness of the importance of design in the production of everyday goods has been historically very low in this country. This is, in part, linked with the absence of a tradition of widespread indigenous manufacturing.
The roots of the Irish Design Centre can in part be traced back to a Government-backed study in the 1960s . . . This fed into the creation of the Kilkenny Design organisation . . . But the Irish design sector has remained relatively underdeveloped, with, overall, a poor export sales record, despite notable international successes . . .
The most comprehensive source document on the industry remains a study conducted by PriceWaterhouseCoopers . . . in 1999. This sector comprises a relatively large number of small companies, employing 12 people or less. According to the report, product design accounted for just two per cent of the sector's overall income in 1997 . . .
The PriceWaterhouseCoopers report has set the agenda for the development of the industry, which has suffered from fragmentation and lack of cohesion. Up to now, its investment by international design businesses has compounded this. The result, according to the report, is that Irish design “does not have a clear and distinctive selling proposition or image” and design firms “do not pool their resources in order to compete for large-scale design assignments requiring composite design delivery capabilities”. Current policy is aimed at reversing these shortcomings.
This very important Bill will safeguard design, and the Minister's office is working on raising awareness of it.
The article continues:
As a direct response to the PriceWaterhouseCoopers report, the design sector is itself gearing up to the market itself in a more proactive fashion. The four main sectoral organisations, the Graphic Design Business Associ ation, the Institute of Designers in Ireland (IDI), the Institute of Creative Designers and Advertising and the Royal Institute of Architects of Ireland have teamed up to form a design coalition that will be marketed nationally and internationally as Design Ireland. The organisation has representation from the education, business and the public sectors. A not-for-profit company, through which much of the work of Design Ireland will be channelled, has already been established at UCD's campus innovation centre and it is currently recruiting a chief executive officer.
It is very important that this company be very focused and available through Enterprise Ireland. This is a very good concept. The enterprise boards in each county deal with very small companies. The Minister considers, in the context of marketing and design, facilitating small companies in linking into the facilities of this new forum. The difference between profit and loss is in good design.
The article also states:
Design can no longer be seen . . . as some kind of pleasing add-on, but a key enabler. As more and more goods become commoditised through technology and globalisation, brand identity and design become increasingly important differentiators.
Some Irish companies have scored notable successes on the European stage, the most recent being a stove designed for a French company which has been very successful.
The article goes on:
The area of industrial design, in particular, has potential for further growth, given its current low base and its importance as an embedded asset supporting national competitiveness. “part of the awareness campaign is to let Irish manufacturers know that they're sitting on the same land mass as some people who are world class,” said George Kelly.
We have a huge potential here.
The existing statutory provisions governing design date back to 1927. For the first time, this Bill will criminalise infringement of design rights and provide for very heavy fines. That is very important. This should be very effective as a deterrent to those who might consider infringing the rights of others and give substantial recompense for such unlawful acts. The message is being sent out – I am glad the Bill is doing that – to infringers, pirates and those who blatantly exploit the people who provide innovation that there will be a heavy price to pay for such activity and that the Government will not put up with this fraudulent and harmful activity. I have great respect for people who work hard and invest in an idea and somebody else should not exploit their idea.
This new law will not be retrospective and so any existing protection will be unaffected and any  pending applications, subject to certain conditions, can opt to be considered under either the old or the new law. Can people opt for the old or the new law on an application? The aim of the legislation is to modernise Irish industrial design law to broaden the civil and criminal remedies available in respect of infringements of design rights and to enable future access for Irish designers and business to an international system of design protection.
It is essential to understand what is covered by the term “design”. It means the appearance of the whole or part of a product resulting from the features of, in particular, the lines, contours, colour, shape, texture and materials of the product itself or its ornamentation. It is important that all this is made quite simple. A design must be new in that no identical design has previously been made available to the public prior to the date of registration, otherwise known as the priority date.
Public exposure is not established if exposure is made without the owner's authorisation in breach of the confidentiality agreement or within 12 months of the date on which the design was filed. There are also exceptions regarding display at certain official or international exhibitions. The design must also have individual character which means that it produces a different overall impression on the end user.
It is also said that the creator of a design is deemed to be its owner and, in the case of a computer-generated design, this is the person who makes the arrangements for the creation of the design. The proprietor of the design right has exclusive right to use of that design. Moreover, a design registration application is a piece of intellectual property and, as such, can be assigned, licensed and so on just like bricks and mortar property.
I think the lifetime of this contract is a maximum of 25 years, from the current maximum of 15 years, renewable in five yearly periods. It is possible to defer the publication of registration for up to 30 months from the date the application was filed. Once it goes into commercial use, that licence automatically goes? Is that correct?
Mr. T. Kitt Mr. T. Kitt
Mr. T. Kitt: I will respond to the Deputy at the end of the debate.
Mr. Perry Mr. Perry
Mr. Perry: The controller of the Irish Patents Office has powers which can be exercised as required, including the granting of a compulsory licence – subject to stringent obligations being met – for the use of the registered design if the registered owner is not producing sufficient products incorporating that design for which there is a demand within the State. How that would be assessed is an important point. If the registered owner does not produce sufficient products incorporating that design for which there is demand in the State, who will form an opinion on that?
There are several grounds on which a design can be considered invalid by the controller – for  example, where it conflicts with a prior design, trade marks or national emblems or is contrary to public policy. A section in the Bill allows for exceptions for exclusivity of the protection, including private and non-commercial use, use for experimental purposes and teaching.
Abuse of a design right can be wide-ranging and infringement extends to those who not only copy the protected work but also who sell, rent, import or even possess infringing products in the course of their business or facilitate an infringement by others. Where an abuse is suspected, the owner of the design registration can apply for civil action to be taken and have the infringing goods seized. This action can be taken by gardaí, without warrant, where there are reasonable grounds to believe them to be infringing goods. It will take much to police this. It is considerable legislation which updates the position from 1927. Does the Minister of State, through the Minister for Justice, Equality and Law Reform, intend to make the Garda Síochána aware of its powers under this Bill? It is important that it is aware of the law in this regard as well.
The court may, in addition, or as an alternative to awarding compensation for financial loss to the injured party, impose aggravated and/or exemplary damages. Any person who contravenes the law should be liable on summary conviction to a fine not exceeding £1,500 in respect of each infringing product or article or to 12 months' imprisonment. The provision that all communications between an applicant/registered proprietor and his or her patent/trade mark agents has the same status of privilege of confidentiality as in the case of client and solicitor is very important.
Section 17 covering ownership of designs provides that the creator of the design shall be the author. In relation to a computer-generated design the person who makes the arrangements necessary for the creation of the design shall be considered the author. Policing that will be very important. The controller will have a huge task.
Section 20 dealing with the application in prescribed form provides for the filling of an application form for registration of a design with the controller by persons claiming to be the owner of the design. The application shall comply with the requirements which will be set out in regulation. As regards filling out an application form, will there be someone who could act as a mentor and who could help companies in this regard, perhaps through Enterprise Ireland or the enterprise boards? The purpose of this Bill is to ensure a certain protection. It is important it is user friendly.
Section 38 on the inspection of designs register provides for the inspection of the register at such times and in such manner as may be prescribed by the Minister for Enterprise, Trade and Employment. We will need clarification on many sections of the Bill.
I am delighted to speak on this Bill. I only got a briefing note on it today, so I am not overly  informed on it. From the point of view of small companies, it is important that the Bill is user friendly and that information on it will be available.
Mr. Fleming Mr. Fleming
Mr. Fleming: I welcome the opportunity to speak on the Industrial Designs Bill, 2000. It is a very technical Bill and when it reaches Committee Stage, a lot of detailed work will be done going through it section by section. I praise the Minister of State for his work in this area. In the last couple of years, we have had the Intellectual Property (Miscellaneous Provisions) Act, 1998, and the Copyright and Related Rights Act, 2000. They were very detailed Bills on areas which would not be generally known to the public. They are very important in terms of how economies, businesses and individuals operate. When that Act was being discussed I was contacted about copyright by photographers from my constituency, and there are parallel provisions in section 17 which talks about ownership of designs. The section specifically refers to the creator, namely, the person working on a project, and the employer, who may be the owner of the design. The person who does the work can be cited as the creator when a new design is being registered, and it is important this is taken into account.
The same issues will arise in this Bill as arose under the Copyright and Related Rights Act and we will receive similar correspondence seeking clarification. In particular we must delineate between people working on their own, under contract, as a direct employee of an organisation, or a person holding a combination of these roles.
Last week a photographer in my constituency thanked me for a letter I sent him some time ago in relation to queries he raised under the Copyright and Related Rights Act. I got praise from him because of the very detailed and comprehensive letter I received from the Minister of State, Deputy Kitt. The photographer read the letter in detail and said it concerned a very important issue for freelance photographers. He and his colleagues discussed the letter which was clear-cut and which explained thoroughly an issue which they at first sight perceived as being very complicated. It is appropriate that I convey the thanks of those people to the Minister. In this Bill he is continuing such work and I expect we will receive correspondence from different people. That the Bill is being discussed in the House will highlight the issues.
It is complicated in terms of understanding what is involved. I mentioned copyright and related rights, intellectual property, composers of music, artists, logo designers, those involved in industrial design, etc. It is very hard for a lay person to distinguish between the various Bills. People may not be able to define design, but they know it when they see it. Design in this legislation means “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colour, shape, texture or materials of the product itself or its ornamen tation”. This covers a wide variety of items and people will begin to grasp what we are talking about. It is no harm giving people a few concrete examples of what we are talking about so they will understand the purpose of the legislation.
The most common example cited by many people is the design of a Coca-Cola bottle. It is a specific design which is known in every country. The same could be said about the Toblerone bar. This is an era of globalisation, a concept which is supported by some people and opposed by others. Most cars are designed on a global basis, and world-wide there are only between six and eight substantial global car companies. Therefore, globalisation of design is an issue to be addressed and will form part of the world trade talks which are ongoing.
The clothing industry in Ireland has been mentioned. I remember a celebrated case not so long ago where a high street shop in Dublin went to a design fair across the world to pick out the best and most suitable and attractive First Communion dress for the following season. No sooner was it available here than another shop bought one of the first dresses and sent it to its own manufacturers telling them to change a button from one place to another. Shortly afterwards it appeared in their shops at a fraction of the price. They argued at length that it was a different design, and I am not sure of the final outcome. It highlighted the importance of good design, which helps sell a product, but also shows the inherent risk of other people wanting to take a good design to exploit it for their own commercial gain. This Bill will deal with all such issues.
Ireland has a rich tradition in design. Our hand crafts and clothes are well known while Waterford Glass has been mentioned by several speakers. Increasingly, our furniture is very well known. It is interesting that the boundaries between the different sectors are changing and being blurred with people beginning to realise design is an issue on its own. Up to now people worked in traditional areas, products and materials and would not have thought they could transfer their skills and ideas to other areas of design and other fields. However, different designers are moving from sector to sector, for example, John Rocha's involvement with Waterford Glass. This shows that design stands on its own and is an art form which can be transferred from one industry to another. For example, it is not necessary to have expertise in the motor car industry in order to design for it. If one has an appreciation of design, of features and contours and of what is appealing and pleasing to the eye one can fit into any industry. Some people have a talent, skill and creative ability and we want to provide protection in this regard.
Existing legislation is out of date. There was a reference to legislation passed in 1927 which we are now updating for the first time. The concept of patents, copyright and ownership of design is long established. Many centuries ago there was a  question about the Book of Durrow. When a copy of it was made the relevant person was asked to adjudicate. A famous judgment was issued which still holds and is the essence of patent, copyright and design law, namely, to every cow its calf. It might seem a funny phrase in these times, but it was understood by everybody at a time when society was not urbanised and industrialised as it is now. People understood the rural way of life and that a calf is a product of the cow. In the same way ownership of the offshoot of something reverts to the original creator. It is a very old concept which people understand, and it is important given the changes in commerce and legislation that the laws are updated on a regular basis.
The Bill will allow us implement and operate EU directives and ratify various associated agreements. It will also allow us fully participate in the world trade agreements and get protection under the agreements which have been signed. It will also ensure we can benefit from the international systems of registration.
Earlier I mentioned definitions of design. There are different bodies which have a significant role to play in terms of design, such as the National College of Art and Design. In particular, Enterprise Ireland, mentioned by Deputy Perry, has an important role, as do local county enterprise boards, in ensuring thought and research is put into product design. There has been a lack in this area. Recently a lady in my constituency who has set up a product design company came to me and when she mentioned design I immediately thought about graphic design, etc. However, she is concerned with product design and explained the process to me whereby she meets senior people in a business and gets an understanding of their customers' needs. It is an entire process and a bigger issue that people appreciate. Almost everyone nowadays owns a mobile phone. A few short years ago these items were big and clumsy but they now come in all shapes, sizes and colours. The same can be said about the new Apple mat which has a particular design and makes a statement on its own. Under the legislation, that design is entitled to protection.
In relation to design, something which is much more in the minds of designers nowadays than heretofore is the question of environmental issues, the recycling of existing materials and the use of recycled products. We know from debates on waste management that we cannot continue to design new products to be ultimately discarded. There is an environmental cost to every new product which comes on the market and I appeal to designers to take that fact into consideration at the early stages.
We could ask about design which is not just commercial. Many public features have a particular design of which people will be instantly aware. Members will recall the competition which took place in relation to the spike in O'Connell Street  on which people instantly had a particular view. The same can be said about many features on various motorways and street furniture which is designed to serve a particular purpose, including architecture. Design has been very much neglected in this country and we need to concentrate further on that issue to ensure it is properly protected.
In an era of e-commerce and computer-assisted designs, it is essential to be up-to-date and in a position to take on board all these new arrangements. I am pleased that in due course designers will be able to apply electronically for registration. I am aware it will take some time for the various bodies to get fully geared up for this development but the passage of this legislation will facilitate that aspect. I look forward to the availability of electronic registration in the near future. This will also be beneficial for people introducing new designs. They can check electronically to see if this has been done before and save unnecessary time, effort and possible litigation down the road. I look forward to the implementation of this aspect which will assist existing and future designers.
One could say that the legislation is about protecting design because it is all about business and trade. I mentioned the European directive and world trade talks on which it has a big impact. As all designs are created by individuals in the first instance, that individual is protected under this legislation and is entitled to due recognition on foot of it. It is very important that is the case because, even though these people might be a small cog in a big wheel, individual input is very important. The reason I say that is because I believe industry and the whole commercial and business environment in which we operate is changing. Many years ago we were taught that the two key features needed in relation to any business or organisation was labour and capital. That philosophy is now becoming a little outdated because there is a third more important component, which is ideas. Businesses which do not come forward with new ideas will go nowhere.
Last night I listened to George Lee on television speak about the Irish and world economy. He said there is currently too much money in the western democracies. I believe that where there are good ideas there is no shortage of money. Finding capital, therefore, for a good design or product is not a problem and in this day and age there tends to be sufficient labour in the western world. The only limiting factor currently is good ideas and good designs, which will be the difference between successful and unsuccessful businesses. If we look 20 years down the road, the successful companies will not be the ones with the successful bank balance or the biggest access to employment today but those that were able to introduce new ideas and designs. That factor will become more and more evident.
We have seen the proof of this over the years with the various “dot.com” companies. All one  had to do was stick the name “dot.com” on the company and fools came charging to hand over money. Some deserved to lose their money because fools and their money can easily be parted. We have seen that happen in this situation. I recall a cartoon in Phoenix magazine a few weeks ago showing two people begging in the street outside the Financial Services Centre. One person had “donations please” written on the card he was holding and there was nothing on it. The other person sitting beside him had “donations please dot.com” written on his card and his box was full – I think that says it all. There is plenty of money in the world. It is said that from a global point of view there are more people than the planet can sustain, therefore labour and capital will not be crucial factors. It will take ideas, designs and people's intellectual ability to make the world a better place.
This legislation is very timely. However, the Minister of State should take into consideration the role of the consumer because this legislation seems to be about helping those who are involved in trade. In due course, consumers should be given a focus, particularly at European and world trade talks level. People are concerned about globalisation because they perceive these European and world trade talks as solely and exclusively ensuring that big businesses of the western world can trade and sell their products freely wherever they are entitled to do so. I want to ensure there is a balance, that there are not restrictive practices when designs are registered so that people can charge excessive prices because they have legal protection for their designs which they can exploit. This has happened in South Africa on a related issue. The South African Government recently took on the world pharmaceutical companies who were importing cheap copies of medical products to deal with the AIDS epidemic in that country. Because these companies had international patents, people were being forced to pay a high price for these products. In that situation, the world community, world businesses and trade organisations were putting the commercial interests of those organisations above the health and well-being of individuals. When we reach the next round of world talks, I would like to see the role of consumers and individuals being put on an equal basis with the role of the commercial and trading rights of these organisations. This will work to the benefit of everyone at the end of the day.
The Minister of State, Deputy Kitt, has a particularly good understanding of this area. I mentioned other legislation with which he dealt and took a great interest. I know he will listen to all the comments on Committee Stage and if good suggestions are put forward he will study them closely and incorporate them in the legislation, if appropriate. I look forward to the passage of this legislation.
Mr. Belton Mr. Belton
Mr. Belton: I welcome the Bill because it is important to update our legislation. I presume the  legislation is necessary to keep up-to-date with EU legislation. This is necessary given that many small industries throughout the country are currently providing a lot of employment. It is important that small companies and individuals who introduce new ideas and new products are protected so that their businesses can continue. Larger operators should not be able to move in and copy the designs and products of these people. The textile and clothing industry in this country is very important. They must be protected by legislation. It is the only way to proceed. According to the Minister of State the most effective and transparent way in which to protect industrial design is through a system of registration which offers clarity and certainty and provides a system of information on the registered rights holders and the existence of rights. When straightforward information is available to all necessary information can be obtained. That gives producers and those involved in business the confidence to know that their product, idea or design will not be availed of by their opposition or others in their business.
I welcome the Bill. It is right and proper that the country should update legislation to keep it in line with EU regulations and what is happening with our partners in Europe.
Mr. T. Kitt Mr. T. Kitt
Minister of State at the Department of Enterprise, Trade and Employment (Mr. T. Kitt): I thank the Deputy for summing up for his party and I appreciate the contributions made by Deputies. This is very technical legislation. I also thank those who have acknowledged the work I have tried to do on behalf of those involved in the intellectual property area. Those of us involved in Committee Stage of the Copyright and Related Rights Bill are aware of how time consuming were our deliberations. Nevertheless, having concluded our work and listened to advice from lobbyists on all sides we made a collective effort to enact very good legislation in that area. In this Bill we are filling a gap with regard to another area of intellectual property legislation. It is also part of fulfilling our responsibilities at EU level.
A number of Deputies pointed out that the explanatory memorandum is very technical. I and other Ministers have always impressed on those preparing legislation the need to make it user friendly. In this instance every effort was made to keep technical aspects to a minimum and to produce user friendly and comprehensible legislation. However, unfortunately – most Deputies acknowledge this – the nature of the subject matter here is such that it is not possible to choose language of our own making in all cases. The legal definitions in the interpretation section are largely based on the definitions and language used in the EU directive on the legal protection of designs. Given the highly technical nature of the directive, acknowledged by all Members of the House, we must be careful in transposing its terms into law to ensure that it is compatible and  consistent with the directive. Deputies Perry, Flanagan and others made the point that we need to deal with these issues.
Deputy Perry referred to the concerns of small businesses. The Patents Office will publish user friendly booklets and information on industrial designs when the Bill is implemented as it did with patents and trademarks. With regard to assistance in completing application forms for small businesses, the services of patents and trademarks agents and solicitors are available. It is our intention to draft regulations in user friendly language that is easily understandable for ordinary citizens. This would facilitate do it yourself applications. The staff of the Patents Office will assist with any queries in that regard.
It is provided that designers shall have access to the District Court to enable them to quickly and efficiently implement their rights. Users have made the case that access to the District Court would be very useful in the quick and effective protection of copyright and design rights. The experts referred to are intended to be expert advisers who, acting on behalf of rights owners, will assist the gardaí in search and seizure activities to ensure that justice is done in a thorough and effective manner. It is not intended that a public panel, as such, be established but rather that the rights owner himself or herself will appoint his or her own representative.
Deputy Flanagan correctly pointed out that the definition of “product” in the Bill excluded computer programmes from protection as industrial design. The area of protection for computer programming is generally covered by copyright law. There are also discussions at EU level with a view to the protection of computer programmes by patents. This issue was raised in the Dáil and the Seanad when we debated copyright legislation. However, design law is only concerned with the appearance of products, so while the underlying computer code is protected by copyright etc., the end product which emerges from the computer programme must also be protected by law. The Bill provides for this.
Many Deputies rightly referred to the achievement of Irish designers. Deputy Rabbitte mentioned some of our great successes, including Waterford Glass. Others include John Rocha, Paul Costelloe and Philip Treacy, who hails from east Galway and who was mentioned by Deputy Perry. Our traditional handicraft and design industries have achieved penetration in many world-wide markets, not least in the US. It is important that these works are protected.
Many Deputies rightly referred to the importance of ideas and innovation. That is what we are trying to protect here. It was also rightly pointed out that this whole area of innovation and creativity must be central to our economic success into the future. A sporting example would be the work of Irish designers in conjunction with their British counterparts on, for example, Jordan and other Formula One motor racing cars.
 Articles of a literary or artistic nature may be registered if the designer wishes to co-register the design and if it meets the criteria for design registration under the 1927 Act. Alternatively, designers may wish to avail of copyright protection instead. If they are qualified for protection the term of protection extends for the longer period of life plus 70 years under that law. Under the new law a designer will be able to have both copyright and registration protection for 25 years.
With regard to grace periods, a one year grace period shall apply during which any making available of the design shall not be taken into account for the purpose of establishing novelty of design. This permits the designer to explore the commercial possibilities of the design prior to investing time and money in the process of registration and replaces the old legislative exception for exhibition at international design and craft fairs.
The 30 month period of deferment of publication of registration of industrial design is the standard period of deferment contained in The Hague agreement and the Community design regulation. It makes no sense for Ireland to make different provisions in this area. The Community design office in Alicante will be established to implement the proposed EU community design regulation. While it is not appropriate to speak of Irish representation in an office that does not yet exist, access to jobs in it when established will be open to Irish and other EU citizens.
Deputy Perry inquired if a design is still protected once it goes into commercial use. It is still protected for up to 25 years from the date of registration where a registered design is not used or supplied. There are provisions to grant compulsory licences to other companies who may wish to use a design to meet a market demand.
Registration of designs currently only gives protection in respect of the territory of Ireland. However, access to protection on the EU and international stage for Irish designers will be provided through ratification of The Hague agreement and, the final adoption is expected shortly of the EU Community Design Regulation. All the more reason why this Bill must be enacted as soon as possible. Deputies will know that the administration of the existing system of registration and protection of industrial design is a function of the Controller of Patents Design Trademarks and Patents Office. The workload involved on industrial design registration and renewal is minimal compared with that of trademark registration or the granting of patents. In the year 2000, the Patents Office received 4,804 trademark applications, compared to just 560 industrial design applications. It registered 6,861 trademarks compared to 588 industrial designs. As such, it has been relatively easy for the Patents Office to keep abreast of the requirements of applicants and proprietors of registered designs. The office is currently preparing and planning for the introduction of a new computer system for the administration of industrial design matters and which will reduce the amount of paperwork  and make things easier for everybody. I know many Deputies will welcome that. I thank you, a Cheann Comhairle, and all the Deputies who contributed to this debate. I do not see this as a controversial Bill in the light of the debate and I hope it can now proceed to the next Stage.
An Ceann Comhairle Séamus Pattison
An Ceann Comhairle: The question is: “That the Bill be now read a Second Time.”
Question put and agreed to.
Dáil Éireann 535 Industrial Designs Bill, 2000: Second Stage.