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Tuesday, 31 July 1906

Mr GROOM (Darling Downs) (Minister of Home Affairs) . - I move -

That the Bill be now read a second time.

In this measure Parliament is asked to further exercise the powers which it possesses under section 51 of the Constitution to make laws for the peace, order, and good government of the Commonwealth with respect to -

xviii.   Copyrights,patents of inventions, and designs and trade marks.

This Bill is really one of a number of measures dealing with thesubjects referred to in that sub-section of the Constitution. We have already passed laws dealing with copyright, patents of invention, and trade marks. The only power remaining under the sub-section which we have not vet exercised is that relating to designs. The Bill is rather urgent, because certain practical difficulties have arisen in connexion with the operation of the other measures to which I have referred which necessitate the passing as soon as possible of a law dealing with this branch of the subject. A Convention between several leading European countries was signed at Paris on the 20th March.1883, and in the following year Great Britain gave her assent to it. Article 2 of this International Convention provides -

The subjects or citizens of each of the Contracting States shall in all the other States of the Union as regards patents, industrial designs or models, trade marks, and trade names, enjoy the advantages that their respective laws now grant or shall hereafter grant to their own subjects or citizens.

Consequently they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided they observe the formalities and conditions imposed on subjects or citizens by the internal legislation of each State.

Of course, it is our desire that in the matters of patents and industrial designs our people shall enjoy the benefit of this international agreement, but in order that they may do so, it is necessary that we should legislate upon all of these subjects. The House is accordingly asked now to give its assent to this Bill, which has al- ready been passed by the Senate.

Mr Higgins - Have not the States passed Designs Acts already ?

Mr GROOM - Yes.

Mr Higgins - Will they not be covered by the Convention?

Mr GROOM - The difficulty is that as a Commonwealth Parliament we have dealt so far only with patents, trade marks, and copyright, and in order to get the benefit of the Convention, it is necessary that we should exercise our power to deal with this other branch of the subject as well.

Mr Hughes - How does the Minister propose to differentiate between a trade mark and a design?

Mr GROOM - A design is intended only for the ornamentation of goods, and may have reference to the particular configuration of an article. It is a pattern or plan as distinguished from a trade name which a person acquires by virtue of the excellence of the article which he manufactures.

Mr Hughes - But a trade mark may also be a design.

Mr GROOM - A design is distinguished from a trade mark in its object and purpose. I will deal with that presently if the honorable and learned member will permit me to refer to some other matters first.

Mr Glynn - Clause 5 of the Bill defines the matter clearly.

Mr GROOM - Yes, it is all defined. Theprinciple of this Bill generally follows that which we have laid down in the

Patents and Copyright Acts which we have alreadv passed. On the issue by the GovernorGeneral of a proclamation in pursuance of this Bill, the administration of the existing States Acts will be transferred to the Commonwealth. As a result, whatever executive powers are now possessed by the Governors of the respective States under the States Acts will then be exercisable by the Governor-General or the GovernorGeneral in Council of the Commonwealth. All the records, registers, and so on kept in the various States under the States Act will pass over to and become the property of the Commonwealth. Under clause 6, it is provided that, after the proclamation, there shall be no further registration under the States laws, and subject to a saving of the rights under existing States Act, the administration will proceed on the principles laid down in this measure.

Mr Hughes - Does this differ from the Imperial Act?

Mr GROOM - No; this measure is based on the English Act. The English law on the subject is to be found in the Trade Marks Act of 1883 and amending Acts of 1888. This Bill embodies the principles of the English law, and applies the machinery we have already adopted in connexion with the other Acts to which I have referred to meet the circumstances of the Commonwealth. The administration of the law will be in the hands of the Minister of Trade and Customs. It is provided that there shall be a Registrar, but it is not intended to create any new office. The administration of this Bill will be in the hands of the present Commissioner of Patents, and there will therefore be no increased cost in that respect as the result of passing this measure. There is power given in the Bill to appoint deputy registrars, the intention being that if it should be found necessary in any of the States, there may be such an officer appointed for the purposes of this Bill.

Mr Glynn - I hope the deputy registrars will keep up the records. In the States offices they do not keep up the records in connexion with patents. That is a verv important matter.

Mr GROOM - That is a matter of administration. It is intended under this measure to establish a Designs Office at the Seat of Government. Following the lines of other legislation upon kindred matters, there is to be a sub-office in each

State, and a seal of the Designs Office. The Bill deals with copyright in designs, and its machinery is intended to protect such copyright. In clause 4 it is provided that "design" - means an industrial design applicable, in any way or by any, means, to the purpose of the ornamentation, or pattern, or shape, or configuration, of an article, or to any two or more of those purposes, while " article " means " any article or substance." What is protected is the copyright in a design as distinct from the article to which a design is applied. Under the English law, the protection of designs covered originally only designs applied to certain classes of fabrics, such as cotton; but it was afterwards extended to designs applied to other articles, and now relates to all designs applied to articles of manufacture. The design is distinct from the article to which it is applied. For instance, the pattern printed upon cotton goods is something apart from the goods themselves, being the result of an effort to produce something to take the fancy and capture the taste of the public. In some instances, the design is the configuration or shape of the article to which it is applied. For instance, a design of the shape of a lamp shade has been held in a leading case on the subject to be protected.

Mr Hughes - What is the difference between copyright in such a design and a trade mark?

Mr GROOM - A trade mark is a mark or a word used to indicate that the article to which it is applied is the manufacture or production of a particular person or firm, and carries with it a certain reputation. A design is different from a trade mark.

Mr Hughes - In some cases it is, while in other cases it is not.

Mr GROOM - Of course, a man may have his design registered to protect his interest in the design in relation to a certain class of goods. Clause 5 provides that-

A design shall be deemed to be applied to aa article when -

(a)   the article is made from or in accordance with the design ;or

(b)   the design is applied, in any way or by any means, to the purpose of the ornamentation, or pattern, or shape, or configuration, of the article, or to any two or more of those purposes.

The copyright, when registered, is protected, under clauses 13 and 26, from the date on which the application for registra- tion is lodged, the protection being for a period of five years, or so long as the registration remains in force. Clause 28 provides that -

The owner of a registered design shall, within two years after registration, substantially use the designor cause it to be substantially used in Australia in the manufacture of articles, and if he fails to do so the copyright in the design shall cease.

Provided that if such design is used in any manufacture abroad the period aforesaid shall be limited to six months.

Mr DUGALD THOMSON (NORTH SYDNEY, NEW SOUTH WALES) - Is that clause similar to the English provision?

Mr GROOM - It is a modification of it, the English provision toeing that -

If a registered design is used in manufacture in any foreign country, and is not used in this country within six months of its registration in this country, the copyright in the design shall cease.

Mr DUGALD THOMSON (NORTH SYDNEY, NEW SOUTH WALES) - Does not the Bill shorten the period during which registration will protect?

Mr GROOM - No; but it requires the owner of a registered design, if he wishes to have protection for five years, to use it within two years after registration, and there is a proviso, which was inserted because of the provision in the English law, to the effect that, if the design is used in any manufacture abroad, the period within which it must be used here shall be limited to six months. The author of a design is to be regarded as its first owner; but if a design has been made on behalf of any person for valuable consideration, that person shall be deemed to be its author, and the author of an unregistered design may, by instrumentin writing, assign it, and the right to make application for its registration. The person registered as the owner of a registered design is to be regarded as the owner of a copyright in the design, while the registered design will be personal property, capable of assignment, and of transmission by operation of law; but the assignment must be in writing, and signed by the registered owner.

Mr Hughes - Is it not desirable that assignments shall be registered?

Mr GROOM - Clause38 provides for the entry of assignments in the register. Coming now to Part IV., which deals with the registration of designs, clause 17 provides that -

Any new and original design, which has not been published in Australia before the lodging of an application for its registration, may be registered under this Act in respect of all or any of the articles included in one or more of the classes in the prescribed classification.

The classes of articles so prescribed under the English Act are as follow: -

1.   Articles composed wholly or chiefly of metal not included in class 2.

2.   Jewellery.

3.   Articles composed wholly or chiefly of wood, bone, ivory, papiermache, or other solid substances not included in other classes.

4.   Articles composed wholly or chiefly of glass, earthenware, or porcelain, bricks, tiles, or cement.

5.   Articles composed wholly or chiefly of paper (except hangings).

6.   Articles composed wholly or chiefly of leather, including book-binding of all materials.

7.   Paper hangings.

8.   Carpets and rugs in all materials, floorcloths, and oilcloths.

9.   Lace, hosiery.

10.   Millinery and wearing apparel; including: boots and shoes.

11.   Ornamental needlework on muslin or other textile fabrics.

12.   Goods not included in other classes.

13.   Printed or woven designs on textile piecegoods.

14.   Printed or woven designs on handkerchiefsand shawls.

Mr Hughes - Will all those details beset out in a schedule?

Mr GROOM - They will be prescribed by regulation.

Mr Hughes - Will the copyright run. for the same length of time with respect to all the articles enumerated?

Mr GROOM - Under clause 18, it will be necessary to make a separate application in respect of each class. For instance, if a man desires to register one design for paperhangings and another for carpets, he will have to make a separate application in each case.

Mr Hughes - But will the copyright extend over the same period in each case?

Mr GROOM - Yes ; it will extend for five years in all cases. Then theBill sets out the procedure to be followed in the registration of designs. Clause 19 provides that, after an application for registration has been lodged, the design may be published and used without prejudice. Thenfurther provision is made that certain conditions shall be fulfilled before registration is granted. If these conditions are not complied with, the Registrar will have power to refuse registration. Then an appeal' will lieto the Law Officer of the Commonwealth, which means the Attorney-General or the Crown Solicitor.

Mr Hughes -Is there no appeal from the Crown Law Officer ?

Mr GROOM - Application mav be made under clause 39 to have the register rectified.

Mr Hughes - But, supposing that it is desired to insert something that is not contained in the register?

Mr GROOM - We can rectify by inserting, as well as by omitting.

Mr Hughes - I do not think that rectification means that.

Mr GROOM - If the honorable and learned member will read clause 39, which follows the wording adopted in the Imperial Statute, he will see that the necessary power is given.

Mr Hughes - Yes; but even by adopting the wording of an Imperial Statute you cannot convert a cow into a horse.

Mr GROOM - To rectify means to put right, and you can rectify a register by inserting something that has been improperly omitted from lt. Part V. deals with the remedies for infringement of copyright or design. The person who infringes a copyright is liable to an action for damages, or for penalty, or to have an injunction issued against him. But it is not intended that a penalty shall be imposed upon, or damages awarded against, an offender unless it is shown that he has knowingly infringed a copyright.

Mr DUGALD THOMSON (NORTH SYDNEY, NEW SOUTH WALES) - It is not proposed in this case to put the onus of proof upon the offender?

Mr GROOM - We are now dealing with a class of cases quite different from that which" the honorable member has in his mind. Part VI. deals with the register of designs. There is to be a register in which proper entries shall be made, and there is the usual provision that trusts shall not be noticed in the register. Other "' clauses deal with the inspection of the register, and provide for penalties for making false entries, and also for the correction of the register. In minor matters, the Registrar may, upon request, amend or alter the register by correcting any error ; but in important matters the Court itself must be appealed to. TEe miscellaneous clauses include provisions which give power to make regulations and to deal with certain offences. Clause 47 is worthy of notice. Registration cannot be obtained for a design if it has been previously published. At public exhibitions it is very often desirable to display designs for certain purposes, and clause 47 provides that designs exhibited under such circumstances shall be protected. Under clauses 48 and 49 the Commonwealth will be empowered to take advantage of the Conventions to which I have already referred. The measure is based upon English legislation, which went through several changes before if reached its present stage. We have in the six different States conflicting laws with regard to the registration of designs, and this is one of those matters in which, above all things, it is desirable to bring about uniformity, in order that' one registration may give protection throughout the Commonwealth

Mr Glynn - The Commercial Congress urged that provision should be made for uniformity throughout the Empire.

Mr GROOM - As far as possible, our legislation will fall into line with the Imperial law, and will substantially secure uniformity. We did the same thing in regard to our copyright and patent laws. The desire is to, as far as possible, insure Imperial uniformity, and I think that this measure will carry out that intention.

Debate (on motion by Mr. Glynn) adjourned.

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