Ireland: Intellectual Property - Trademarks

Last Updated: 12 December 1996
1. DEFINITIONS

A trademark is defined in the Trademarks Act, 1963 as:

"...a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade, between the goods and some person having the right either as proprietor, or as registered user, to use the mark, whether with or without any indication of the identity of that person..."

The Act defines a mark as including:

"A device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof."

There is no means of registering a service mark in the Republic of Ireland, and reliance must be placed onto common law remedy of passing off for protection.


2. REGISTRATION PROCEDURES

A trademark is registered in accordance with the classification of goods set out in the Nice Agreement, 1957 (as revised). There are 34 classes and an applicant must specify the class to which the goods belong. Furthermore, the Trademarks Register in Ireland is in two parts, A and B, and application may be made for entry on one part only. The part chosen will depend on the distinguishing qualities of the mark, as is shown below.

Application for registration is made on the requisite form, attaching a representation of the mark, and the filing fee. The fee is currently IRœ60.00.

The Trademarks Office will examine the application and may seek amendments, modifications or limitations to the application. Examination takes approximately 18 months. If the mark is then accepted, it is published in the Official Journal.

Oppositions to the mark must be filed within one month of its publication, but the Controller may extend this period if an opponent so requests.

If there is no opposition, or an opposition is not sustained, the trademark is entered on the Register upon payment of a fee, currently IRœ81.00.

If registration is refused, the applicant may obtain the Controller's reasons for refusal in writing and may appeal the refusal to the Court within two months thereafter.


3. PART A REGISTRATION

In order for a trademark to be registerable in Part A, it must contain at least one of the following essential particulars:

1.The name of a company, individual, or firm, represented in a special or particular manner.

2.The signature of the applicant for registration or some predecessor in his business.

3.An invented word or invented words.

4.A word or words having no direct reference to the character or quality of the goods and not being according to its ordinary signification, a geographical name or surname.

5.Any other distinctive mark, name, signature or word or words, other than such as fall within the description in paragraphs 1, 2, 3 and 4 above shall not be registerable except upon evidence of distinctiveness.

"Distinctive" means adapted, to distinguish goods with which the proprietor of the trademark is or may be connected in the course of trade from goods in which no such connection subsists, either generally or in relation to use in the extent of the registration. The best Part A registrations are invented words, for example "Aspro", "Bovril" and "Kodak".


4. PART B REGISTRATION

In order for a trademark to be registerable in Part B, it must be "capable of distinguishing" goods with which the proprietor is or may be connected in the course of trade from goods with which no connection subsists. Thus, Mothercare was considered not to have been "adapted to distinguish" the goods of the applicant but as being capable of so distinguishing, and thus registrable in Part B. "Waterford", despite its being a geographical name, was registered in Part B, as the Supreme Court considered that it was capable of distinguishing cut crystal glassware from that of other manufacturers.


5. EXCLUSIONS FROM REGISTRATION

The Trademarks Act prohibits registration of any matter likely to deceive or cause confusion; matters contrary to law on morality; and scandalous design. Registration of identical and resembling trademarks belonging to different proprietors is prohibited unless there is honest concurrent use or other special circumstances.

In addition, the Controller may refuse to accept applications which include the words "patent", "patented", "registered" "copyright" ; "shamrock" in relation to goods other than those expressly of Irish origin, "standard" or its Irish equivalent; and the heraldic emblem of the Red Cross. The Controller may require the applicant to furnish consent if the emblem of a State, city or town or the name of a person is included in a trademark.

Unless the applicant can establish distinctiveness through use for a proposed mark containing a geographical name, surname or purely descriptive term, it will not be registered.


6. DURATION AND CONTENTS

A trademark lasts for a period of seven years and is renewable for subsequent periods of fourteen years, forever. Applications may be made to have a trademark taken off the Register if it has not been used for a continuous period of five years or longer.

Registration gives the registered proprietor the exclusive right to the use of the trademark and an action for infringement lies against any person using an identical mark in relation to any goods in respect of which it is not registered.

Where the allegedly infringing mark is not identical to, but resembles, the registered trademark, the remedies depend on whether the trademark is registered in Part A or Part B. These are discussed in the following section.


7. CIVIL REMEDIES

In suing for an alleged infringement of a trademark, the Plaintiff may seek an injunction restraining the use of the mark and/or seek damages. If the mark complained of is not identical to the Plaintiff's, it must be so nearly resembling it as to be likely to deceive or cause confusion. Principals regarding deception and confusion have been enunciated by the High Court in United Biscuits Limited v. Irish Biscuits Limited (1971) and IBP v. Dowdall O'Mahoney & Co. (1977). The Court will have regard to such questions as the local sound of the mark complained of, the goods at issue and the customers and their knowledge of the market.

No injunction or other relief shall be granted to a plaintiff whose mark is registered in Part B if the Defendant establishes that the alleged infringing use is not likely to deceive or cause confusion, or to be taken as indicating a connection in the course of trade between the goods and the registered proprietor or use of the trademark.

8. PROPERTY RIGHTS

A registered trademark is assignable or transmissible in respect of some or all of the goods for which it was registered. An unregistered mark may only be assigned or transferred with goodwill of the business. All assignments must be registered. Care should be taken that the mark is not to be used by the assignor and the assignee in connection with confusingly similar goods, as the assignment can be rendered void.

The mark may be licensed to a Registered User provided a prescribed relationship exists between the registered user and the owner of the mark. If the proprietor of a trademark authorises the use of the mark by a Registered User, that authorisation must be registered in the Trademarks Office. The effective date is the date of the Register User Agreement but as there is considerable delay in having agreements registered, there is no way of knowing such an agreement exists for a considerable time thereafter. A User may not transfer or assign his rights. However, he may call on the owner to bring infringement proceedings and if the owner fails to do so, the proceedings may be instituted by the User.


9. COLLECTIVE MARKS

Several marks may be registered in a series in one registration in respect of the same goods differing only in non-distinctive matters such as statements of the respective goods, their number, price, quality or colour.


10. VALID INTERNATIONAL TRADEMARKS

EC Directive 89/104/EC has not yet been implemented here.

In order to gain protection for a trademark in the Republic of Ireland, it must be registered here.

However, priority is afforded to persons who first applied for a trademark in Member States of the International Convention for the Protection of Industrial Property. Registration shall have the same date as the date of application in the foreign State.


11. BUSINESS NAMES

It is possible to register a business name under the Business Names Act, 1963. However, registration does not confer exclusive use of the name of the registered owner. The purpose of the Act is to provide a register of firms and individuals trading in the State under a name other than that of the person(s) concerned.


12. COMPETITION ACT, 1991

The Competition Act, 1991 introduced into domestic Irish law provisions similar to Articles 85 and 86 of the EC Treaty. It prohibits and invalidates agreements, decisions and concerted practices which prevent, restrict or distort competition within the State. Unlike the EC Treaty, there is no de mutinus provision.

It also prohibits the abuse of a dominant position within the State. It is not yet known to what extent the Competition Act affects intellectual property rights, but it is expected that Commission and ECJ decisions will create strong precedents. Hence, if protection under the Trademarks Acts is used as a vehicle for the operation of an anti-competitive agreement or an abuse of dominance under the Act, the protection may be void. The Magill decision, on which RTE and others were forced to licence their copyright in their programme listings, has set a strong precedent for a similar decision in any field of intellectual property law under the Competition Act.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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