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

Lord Hope of Craighead Excerpts

Report stage
Tuesday 16th January 2024 Lords Chamber

[Lord Lansley (Con)]

I hope that I will be equally quick on this amendment, as there are points of more substance and principle to be debated later.

We discussed Amendment 3 in Committee. Essentially, it relates to a set of circumstances in which trademarks and GIs—geographical indications—may come into conflict and the circumstances in which the Secretary of State can make a decision that there would be confusion between the two. The point is that the GIs should be compared to existing trademarks and registered trademarks; to circumstances where, on the date which the GI is submitted, there are applications for the registration of trademarks; and, as the legislation refers to, where trademarks are “established by use”.

My problem is that nowhere in trademark legislation do the words “established by use” appear. My noble friend’s letter to me of 10 January said that “established by use” refers to unregistered trademarks. We appear to be putting into statute the concept that where a trademark has been used, it can be established but not registered, and I am not sure that that is helpful. What is more helpful would be to indicate that the Secretary of State should have a discretion to look at a GI that may come into conflict with an unregistered trademark—there are such things—and where confusion would result. My noble friend says that they may just use a trademark once, and the fact that it had been used once at some point in the past may lead to this confusion. As the legislation is drafted, the Secretary of State would actually have the discretion to judge these matters and to say whether confusion would arise. If a trademark has not been used prior to that date in any substantial way, I think the Secretary of State could ignore it and say that the GI has a meaning that people will readily understand.

I have a problem with the term “established by use” and think that “in use prior to that date” is more straight- forward and has the meaning we are looking for; “established by use” runs a risk of establishing that, in law, trademarks can be established by use. That is not something that the trademarks legislation currently admits of. I am not an expert in intellectual property matters, but I have talked to one or two who are, as we do in this place. I think there may be a problem with this, but I stand to be corrected by my noble friend. For the moment, I beg to move Amendment 3.

[Lord Hope of Craighead (CB)]

My Lords, I cannot claim any expertise in trademarks or their registration, but I think there is force in the point made by the noble Lord, Lord Lansley. The expression “established by use” is slightly vague, whereas the words that the noble Lord would substitute—of it being actively “in use prior to that date”—make the point rather better. I support the amendment, for what it is worth, in the interests of clarity.

[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?