Trade (Comprehensive and Progressive Agreement for Trans-Pacific Partnership) Bill [HL]

Baroness Butler-Sloss Excerpts

Report stage
Tuesday 16th January 2024 Lords Chamber

[Lord McNicol of West Kilbride (Lab)]

My Lords, the noble Lord, Lord Lansley, is right: the Trade Marks Act 1994 at no point uses the words “established by use”. However, the Act makes specific provision for registered trademarks, whereas those established by use—as the noble Lord said—would presumably be unregistered and, therefore, subject to common law through the concept of passing off. It would be interesting to hear the Minister’s comments on passing off and whether that covers it.

I want to pick up the main point of this amendment and, specifically, geographical indications. I think this may be the only time on Report that we will be able to get some words into Hansard on that. The noble Lord, Lord Lansley, picked up the technical part, but there is a wider set of issues on geographical indications on which I am interested to hear the Minister’s response.

When this agreement was announced in October 2020, the then Trade Secretary Liz Truss MP promised that 77 specialist UK food and drink products would be guaranteed protected geographical indication status, along with the seven that were carried over from the previous EU-Japan trade deal. The former DIT Minister said that the protections would be in place by May 2021 for all 77 new products, which included many iconic British brands, such as Scottish beef, Cornish pasties and Welsh lamb—to name but a few. The DIT also boasted that, thanks to Liz Truss’s agreement, the UK would benefit from fast-track processes for securing brand protection that would not have been possible under the EU-Japan deal. It said:

“The EU must negotiate each new GI individually on a case-by-case basis”.


The EU has added 84 extra products to its protected list since October 2020, including a number in the last few months, but I understand that Kemi Badenoch’s department has not yet secured brand protection for a single one of the 77 products originally promised. The number of EU GIs with Japan now stands at 299, which offers them protection, while the UK is still stuck with only the seven protected products inherited from the EU-Japan deal. Given this, how can UK producers of geographically indicated products be confident in the measures contained within the CPTPP?

[Baroness Butler-Sloss (CB)]

Perhaps I might add something before the Minister speaks. Having listened with interest to my noble and learned friend Lord Hope, and with my limited intellectual property knowledge, I am concerned about the use of the words “established by use”. As far as I know, they do not appear elsewhere and are certainly not part of existing legislation. To bring them into this legislation, almost by a side wind, would be somewhat unfortunate.

[Lord Johnson of Lainston (Con)]

As always, I thank my noble friend Lord Lansley and all contributors to the debate on this amendment. It is very relevant, in my view; however, I am comfortable keeping the words “established by use” in the Bill as printed, rather than using

“in use prior to that date”.

My reason is simple and was pointed out by my noble friend: a single use of a name could be construed as giving the same protections as a trademark which, through an effective accumulation of good will and the establishment of its use, has been protected under these laws. We are quite comfortable with the wording.

I am aware that there is no reference to the concept of “established by use” in the Trade Marks Act 1994— I am surprised that there is no lawyer in this House jumping up to support me at this crucial moment, just when I need one. They seem not to be in their usual places but they would say, were they here, that this is an extremely well-established part of trademarks law. As I understand it—I am comfortable to be corrected, but my officials assure me of this—elsewhere, in the amended legislation relating to unregistered trademarks, is the common-law tort of passing off, which relates to good will. I am also reassured that in GI legislation—for example, Article 14(2) of the assimilated regulation 1151/ 2012—the concept of “established by use” is written and codified.

From our point of view, it is important to ensure that we protect our trademarks and that we use geographical indicators where appropriate. I will come on to the point raised by the noble Lord, Lord McNicol, in a moment. Having spent a great deal of time working on this, I ask my noble friend to withdraw his amendment because I do not believe that by changing the phraseology we will give the greater protection that we want to our trademark-using organisations, businesses and people, and allow the system to function effectively. I am very convinced of that. We have a line in our next amendment that will allow us to discuss geographical indicators in slightly more detail, so I will cover the points raised by the noble Lord, Lord McNicol, at that point if he is content with that.