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Lord Haskel: I begin by saying to the noble Viscount that he should listen to the advice he receives from the Department of Trade and Industry. It is good advice. It is advice that works. The advice from the Department of Trade and Industry was that either the Trade Marks Act

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1994 dealt with the problem that he raised or the common law tort of passing off could be used. Those avenues have proved effective.

The noble Viscount mentioned the case Penguin v. Puffin. In that case Mr. Justice Walker found in favour of United Biscuits on passing off and an injunction was granted to restrain Asda from selling the Puffin biscuit in any get-up which amounted to a passing off of the Penguin biscuit. The legislation worked, so the advice from the DTI was probably sound.

Equally, the noble Viscount mentioned the Nescafe jar. Shapes are protected under the provisions of the Trade Marks Act 1994 and since the introduction of that Act there has been an increasing number of applications for shapes and trade dress. For example, the Nescafe jar is based on a registration for the shape of the jar and that is its protection. Invariably it takes time for brand owners to establish such marks as distinctive by use, but some delay is needed to ensure the quality and value of the trade marks registered.

The House debated this matter during proceedings on the Trade Marks Bill in 1994. On that occasion the House decided that the measure should not be included and that a full consultation had not taken place. Since that time opportunities to discuss unfair competition have arisen, notably before the Standing Advisory Committee on Industrial Property. The committee has considered the need for unfair competition legislation. Its members consist of organisations with a cross-sectorial interest in industrial property and its membership can be enlarged to address specific issues if that is the will of the committee. I draw the Committee's attention to the fact that this issue was touched on at the recent hearing of the Select Committee on Trade and Industry on 4th November. The president, when asked at the hearing whether she thought that further legislation was required in this area, replied:

    "There is not a consensus yet that further legislation is required".

Our problem with the amendments is that they would add a substantial new dimension to the Bill. This issue is really outside the scope of the Bill. The noble and learned Lord, Lord Fraser, asked me about this. I say to him that this matter is very different from the Bill as it is currently drafted. The Bill is primarily concerned with the introduction of prohibitions on anti-competitive agreements and abuse of a dominant position. The amendments tabled address a rather different concern. Indeed, Amendment No. 270C in particular goes well beyond providing protection for branded goods from look-alikes. It would create a new intellectual property right of an extremely wide scope. It would define unfair competition as any action or practice likely to damage good will and reputation, even when this did not cause confusion among consumers. The amendments would effectively make redundant almost all existing trade mark legislation because of the much larger range of activities that would be actionable than is currently the case.

In view of the implications the amendments imply, and on the basis of my explanation, I invite the noble Viscount to withdraw his amendment.

Lord Fraser of Carmyllie: Before the noble Viscount does whatever he wishes to do, perhaps I may say that

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I am a little surprised by the Minister's response. I carefully avoided using the word "scope". My understanding of the procedures of the House is that if the set of amendments had been outwith the scope of the Bill, that would have been communicated in one way or another and we might not have been permitted to debate it at all. I hope that the noble Lord will reflect on that point and that if there is a rather more refined argument than simply whether an amendment is within or outwith the scope of the Bill, we shall have that communicated to us.

The Viscount of Falkland: The hour is late. I shall take the advice of the noble and learned Lord and recommend that to my noble friend Lord McNally. We shall certainly come back to it again. I particularly note what the Minister said. I thank all noble Lords who have taken part in what has been a fascinating debate. I am glad that I was here and not at the Liberal Democrat ball. I beg leave to withdraw the amendment.

Amendment, by leave, withdrawn.

[Amendments Nos. 270B to 270D not moved.]

Lord Simon of Highbury: Because Clause 58 is central to the Bill, I wish to put something on the record. In my haste to respond quickly to Amendments Nos. 257A and 272F, to which the noble and learned Lord, Lord Fraser, spoke in place of the noble Viscount, Lord Trenchard, I said, in order to move on, that I confirmed. I believe that was my answer. I want to put on record that I confirm that we believe that the tribunal and the commission would come within the scope of Article 177 of the EC treaty but we do not believe that the Director General of Fair Trading or the regulator necessarily would. I believe that was the purpose of the amendment. I answered too quickly because I was thinking of the tribunal. I shall naturally write to the noble and learned Lord if he needs further information on that.

10.30 p.m.

Lord Fraser of Carmyllie: I say immediately to the Minister how much we appreciate his courtesy in returning to the matter so quickly. If he says only that they do not necessarily fall within the definition of being a court or a tribunal to enable them to seek a preliminary ruling under Article 177, we might engage in some correspondence about it subsequently.

Clause 67 [Regulations and orders]:

Lord Simon of Highbury moved Amendment No. 271:

Page 36, line 14, at end insert--
("( ) The power to make rules which is conferred by section 47 is exercisable by statutory instrument.").

The noble Lord said: This amendment corrects an omission in the Bill. Clause 67(1) provides that any power to make regulations or orders under the Bill is exercisable by statutory instrument, but that provision does not cover the rules the Secretary of State may make under Clause 47 with respect to appeals and appeal tribunals. The amendment provides that the power to make such rules is also to be exercisable by statutory instrument. I beg to move.

On Question, amendment agreed to.

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Clause 67, as amended, agreed to.

Clause 68 agreed to.

Clause 69 [Crown application]:

On Question, Whether Clause 69 shall stand part of the Bill?

Lord Borrie: It seems particularly refreshing that a major Bill of this sort should be specifically said to bind the Crown. Have Her Majesty's Ministers any comment on that and is it something that we may look forward to as regards other major Bills?

Lord Simon of Highbury: I do not particularly want to generalise in responding to my noble friend Lord Borrie. The Government believe that it is right that the prohibition should apply to some bodies where they are acting as undertakings. They should not be treated differently from normal commercial undertakings in that respect. I should add that Crown bodies are already subject to Community competition law if they are undertakings. We are reviewing the extent to which it is necessary or desirable to have entry powers in relation to the Crown. I may wish to come back with an amendment on this matter at Report stage.

Clause 69 agreed to.

Clause 70 agreed to.

Schedule 12 [Minor and consequential amendments]:

Lord Simon of Highbury moved Amendments Nos. 271A to 271C:

Page 84, line 14, at end insert--
("( ) Omit section 45 (power of the Director to require information about complex monopoly situations).").
Page 84, line 14, at end insert--
("( ) In section 85 (attendance of witnesses and production of documents on investigations by Competition Commission of references under the Fair Trading Act 1973), in subsection (1)(b)--
(a) after "purpose", insert "(i)";
(b) after the second "notice", insert "or
"(ii) any document which falls within a category of document which is specified, or described, in the notice,".").
Page 84, line 14, at end insert--
("( ) In section 85, after subsection (1), insert--
"(1A) For the purposes of subsection (1) above--
(a) "document" includes information recorded in any form;
(b) the power to require the production of documents includes power to take copies of, or extracts from, any document produced; and
(c) in relation to information recorded otherwise than in legible form, the power to require it to be produced includes power to require it to be produced in legible form, so far as the means to do so are within the custody or under the control of the person on whom the requirement is imposed."
( ) In section 85(2), for "any such investigation" substitute "an investigation of the kind mentioned in subsection (1)".").

On Question, amendments agreed to.

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