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Unofficial Consolidated Version of Trade Marks Act 1996 (as amended), Ireland

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Latest Version in WIPO Lex
Details Details Year of Version 2019 Dates Amended up to: December 2, 2019 Entry into force: July 1, 1996 Adopted: March 16, 1996 Type of Text IP Legal Literature Subject Matter Trademarks, Geographical Indications Subject Matter (secondary) Enforcement of IP and Related Laws, IP Regulatory Body Notes This unofficial consolidation of the Trade Marks Act 1996 (Act No. 6 of 1996) incorporates all amendments up to December 2, 2019 (the date on which the Copyright and Other Intellectual Property Law Provisions Act 2019 was issued to amend inter alia the said Trade Marks Act 1996). This document is compiled by the Department of Jobs, Enterprise and Innovation as a reference guide only: it is not a legal document and has no legal force.

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Main text(s) Main text(s) English Unofficial Consolidated Version of Trade Marks Act 1996 (as amended)        

Unofficial consolidated version

TRADE MARKS

ACT 1996

(as amended)

Note to users: This is an unofficial consolidation of the Trade Marks Act 1996 and amendments up to and including the 2 December 2019 and is produced here as a reference document only. This document has no legal force. The Trade Marks Act, 1996 has been updated on a number of occasions since it was enacted on the 16th March 1996, but the amending laws have not been officially consolidated into a single text. Whilst every effort has been made to ensure the accuracy of the information/material contained on this document, the State, the Department of Business, Enterprise and Innovation, its servants or agents assume no responsibility for and give no guarantees, undertakings or warranties concerning the accuracy, completeness or up to date nature of the information provided and do not accept any liability whatsoever arising nor for any errors or omissions in this document.

Amended by:

Copyright and Related Rights

Act, 2000 (28/2000)

Patents (Amendments) Act

2006 (31/2006)

S.I. No. 622 of 2007

European Communities

(Provision of services

concerning Trade Marks and

Industrial Designs)

Regulations 2007

Intellectual Property

(Miscellaneous Provisions)

Act 2014

S.I. No. 47 of 2016

European Communities

(Trade Mark Agents)

Regulations 2016

S.I. No. 561 of 2018 European

Union (Trade Marks)

Regulations 2018

Copyright and Other

Intellectual Property Law

Provisions Act 2019

Repealed or Deleted

Copyright and Other

Intellectual Property Law

Provisions Act 2019

Unofficial consolidated version

Number 6 of 1996

TRADE MARKS ACT, 1996

As amended – changes tracked

ARRANGEMENT OF SECTIONS

PART I

Preliminary and General

Section

1. Short title and commencement.

2. Interpretation. (Amended by  )

3. Orders, regulations and rules.

4. Expenses.

5. Repeal.

PART II

Registered Trade Marks

6 Trade marks. (Amended by )

7. Registered trade marks.

8. Absolute grounds for refusal of registration. (Amended by )

9. Specially protected emblems.

10. Relative grounds for refusal of registration. (Amended by )

11. Meaning of “earlier trade mark”. (Amended by  )

12. Raising of relative grounds in case of honest concurrent use.

13. Rights conferred by registered trade mark. (Amended by )

14. Infringement of registered trade mark. (Amended by  )

15. Limits on effect of registered trade mark. (Amended by )

16. Exhaustion of rights conferred by registered trade mark. (Amended by )

17. Registration subject to disclaimer or limitation.

18. Action for infringement. (Amended by )

19. Order for erasure &c. of offending sign ).

Unofficial consolidated version

20. Order for delivery up of infringing goods, material or articles .

21. Meaning of “infringing goods, material or articles”.

22. Period after which remedy of delivery up not available.

23. Order as to disposal of infringing goods, material or articles .

(Amended by )

24. Remedy for groundless threats of infringement proceedings .

25. Infringing goods, material or articles: powers of seizure and search.

(Amended by )

26. Nature of registered trade mark.

27. Jointly owned trade marks.

28. Assignment &c. of registered trade mark. (Amended by )

29. Registration of transactions affecting registered trade mark. (Amended by

)

30. Trusts and equities.

31. Application for registration of trade mark as an object of property. (Amended by

)

32. Licensing of registered trade mark.

33. Exclusive licences.

34. General provisions as to rights of licensees in case of infringement. (Amended by

 )

35. Exclusive licensee having rights and remedies of assignee. (Amended by )

36. Exercise of concurrent rights .

37. Application for registration.

38. Date of filing.

39. Classification of goods and services. (Amended by )

40. Claim to priority of Convention application.

41. Claim to priority from other relevant overseas application. (Amended by )

42. Examination of application.

43. Publication, opposition proceedings and observations. (Amended by )

44. Withdrawal, restriction or amendment of application.

45. Registration.

46. Registration: supplementary provisions. (Amended by )

47. Duration of registration.

48. Renewal of registration. (Amended by )

49. Alteration of registered trade mark.

Unofficial consolidated version

50. Surrender of registered trade mark.

51. Revocation of registration. (Amended by  )

52. Grounds for invalidity of registration. (Amended by  )

53. Effect of acquiescence.

54. Collective marks. (Amended by )

55. Certification marks.

PART III

Community Trade Marks and International Matters

56. Meaning of “Community trade mark” and “Community Trade Mark Regulation”.

Meaning of “European Union Trade Mark”, “European Union Trade Mark

Regulation” and “Directive” (Amended by )

57. Power to make provision in connection with Community Trade Mark Regulation.

(Repealed by )

58. The Madrid Protocol.

59. Power to make provision giving effect to Madrid Protocol.

60. The Paris Convention. (Amended by )

61. Protection of well-known trade marks: Article 6bis. (Amended by )

62. National emblems &c. of Convention countries: Article 6ter.

(Amended by )

63. Emblems &c. of certain international organisations: Article 6ter.

(Amended by )

64. Notification under Article 6ter of the Convention.

(Amended by )

65. Acts of agent or representative: Article 6septies .

PART IV

Administrative Provisions

66. The register.

67. Rectification or correction of the register .

68. Adaptation of entries to new classification.

69. Power to require use of forms.

70. Information about applications and registered trade marks.

71. Exercise of discretionary powers by Controller.

72. Costs and security for costs .

Unofficial consolidated version

73. Evidence before the Controller.

74. Exclusion of liability in respect of official acts.

75. Content of Controller's annual report.

76. Registration to be prima facie evidence of validity.

77. Certificate of validity of contested registration .

78. Controller's appearance in court proceedings .

79. Appeals from the Controller. (Amended by  )

80. No award of costs to or against the Controller .

81. Power of Minister to make rules.

82. Fees.

PART V

Trade Mark Agents

83. Authorised agent may act. (Amended by )

84. Register of Trade Mark Agents.

85. Business to be carried on only by registered trade mark agents &c.

(Amended by  )

86. Entitlement to be registered as trade mark agent. (Amended by )

87. Removal from Register.

88. Suspension and erasure of registration of trade mark agent .

89. Notice of erasure or suspension: subsequent restoration.

90. Rules relating to trade mark agents. (Amended by )

91. Privileged communications. (Amended by )

PART VI

Offences

92. Fraudulent application or use of trade mark in relation to goods .

93. Falsification of register, &c .

94. Falsely representing trade mark as registered .

95. Offences committed by partnerships and bodies corporate.

PART VII

Miscellaneous and General

Unofficial consolidated version

96. Jurisdiction of the Circuit Court.

97. Unauthorised use of State emblems of Ireland .

98. Misuse of trade marks indicative of Irish origin.

99. Burden of proving use of trade mark.

100. Transitional provisions.

101. Territorial waters and continental shelf.

102. Amendment and adaptation of existing statutes.

FIRST SCHEDULE

Collective Marks (Amended by  )

SECOND SCHEDULE

Certification Marks (Amended by  )

THIRD SCHEDULE

Transitional Provisions (Amended by  )

____________________________________________________________________

Number 6 of 1996

____________________________________________________________________

TRADE MARKS ACT, 1996

____________________________________________________________________

AN ACT TO MAKE NEW PROVISION FOR REGISTERED TRADE MARKS,

IMPLEMENTING COUNCIL DIRECTIVE NO. 89/104/EEC OF 21st DECEMBER, 1988,

TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADE

MARKS(1) ; TO MAKE PROVISION IN CONNECTION WITH COUNCIL

REGULATION (EC) NO. 40/94 OF 20 DECEMBER, 1993, ON THE COMMUNITY

TRADE MARK(2) ; TO GIVE EFFECT TO THE MADRID PROTOCOL RELATING TO

THE INTERNATIONAL REGISTRATION OF MARKS OF 27th JUNE, 1989, AND TO

CERTAIN PROVISIONS OF THE PARIS CONVENTION FOR THE PROTECTION OF

INDUSTRIAL PROPERTY OF 20th MARCH, 1883, AS REVISED AND AMENDED; TO

PERMIT THE REGISTRATION OF TRADE MARKS IN RELATION TO SERVICES

AND FOR CONNECTED PURPOSES. [16th March, 1996]

BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:

Unofficial consolidated version

PART I

Preliminary and General

Short title and commencement

1.—(1) This Act may be cited as the Trade Marks Act, 1996.

(2) The provisions of the Act shall come into operation on such day as the

Minister may by order fix.

(3) Different days may be so fixed for different provisions and different

purposes.

Interpretation.

2.—(1) In this Act, except where the context otherwise requires—

the Act of 1963”means the Trade Marks Act, 1963 ;

Agreement establishing the World Trade Organisation” has the meaning assigned by

section 60;*

“ appropriate court” means—

(a) the District Court, where the damages or the value of the other relief sought in any action

to which the application relates is not liable to exceed such sum as stands specified by an

enactment to be the jurisdiction of the District Court for actions in contract or tort,

(b) the Circuit Court, where the damages or the value of the other relief sought in any action

to which the application relates is not liable to exceed such sum as stands specified by an

enactment to be the jurisdiction of the Circuit Court for actions in contract or tort, and

(c) in any other case, the High Court;”.†

assignment” means assignment by act of the parties concerned;

business” includes a trade or profession;

Community trade mark”, and “Community Trade Mark Regulation” have the

meanings assigned by section 56 ;

the Controller” means the Controller of Patents, Designs and Trade Marks Intellectual

Property;

Convention country” has the meaning assigned by section 60 ;

the Court” means the High Court;

“directive” has the meaning assigned by section 56;

director”, in relation to a body corporate whose affairs are managed by its

members, means any member of the body;

earlier trade mark” has the meaning assigned by section 11 ;

“ ’EEA Agreement’ means the Agreement on the European Economic Area signed at Oporto

on 2 May 1992, as adjusted by all subsequent amendments to that Agreement;

‘EEA state’ means-

(a) a Member State (other than the State), or

(b) a state (other than a Member State) that is a contracting party to the EEA

agreement;”*

* Patents Amendment Act 2006 (31/2006)

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016

*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 † Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

“European Union trade mark” has the meaning assigned by section 56;

“European Union Trade Mark Regulation” has the meaning assigned by section 56;*

exclusive licence” and “exclusive licensee” have the meanings assigned by section

33;

infringement proceedings”, in relation to a registered trade mark, include

proceedings under section 20 ;

the Journal” means the Patents Office Journal;

the Minister” means the Minister for Enterprise and Employment;

the Office” means the Patents Office Intellectual Property Office of Ireland;

the Paris Convention” has the meaning assigned by section 60 ;

partnership” has the meaning assigned by section 1 of the Partnership Act, 1890;

prescribed” means, in relation to proceedings before the Court the appropriate courti,

prescribed by rules

of court and, in any other case, prescribed by this Act or orders, rules or regulations

made hereunder;

publish” means make available to the public, and references to publication—

(a) in relation to an application for registration, are to publication under section 43

(1), and

(b) in relation to registration, are to publication under section 45 (4);

the register”, except in Part V , means the Register of Trade Marks kept under this

Act;

rules”, except in relation to rules of court, mean rules made by the Minister under

section 81 ;

State emblem of Ireland” means any emblem notified as such under Article 6ter of

the Paris Convention;

trade” includes any business or profession;

trade mark” has the meaning assigned by section 6 .

(2) References in this Act to use (or any particular description of use) of a trade

mark, or of a sign identical with, similar to, or likely to be mistaken for a trade

mark, include use (or that description of use) otherwise than by means of a

graphic representation.

(3) Any reference in this Act to a Community European Union† instrument includes a

reference to any instrument amending or replacing that instrument.

(4) In this Act—

(a) a reference to a Part or section is to a Part or section of this Act, unless it is

indicated that reference to some other enactment is intended; and

(b) a reference to a subsection or paragraph is to the subsection or paragraph of

the provision in which the reference occurs, unless it is indicated that some

other provision is intended.

(5) In this Act a reference to an enactment includes a reference to that enactment as

amended by or under any other enactment, including this Act.

† *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

Orders, regulations and rules.

3.—(1) Where a power to make orders, regulations or rules is conferred by this Act, such

orders, regulations or rules may be made either in respect of all, or in respect of any one or

more, of the matters to which the power relates, and different provisions may be made by any

such orders, regulations or rules in respect of matters which are of different classes or

descriptions.

(2) Subject to subsection (3), every order, regulation or rule made under this Act shall be laid

before each House of the Oireachtas as soon as may be after it is made and, if a resolution

annulling the order, regulation or rule is passed by either such House within the next twenty-

one days on which that House has sat after the order, regulation or rule is laid before it, the

order, regulation or rule shall be annulled accordingly, but without prejudice to the validity of

anything previously done thereunder.

(3) Where—

(a) a regulation is proposed to be made under section 57 or section 59 , or

(b) an order is proposed to be made under section 60 subsection (2) shall not apply and a

draft of the order or regulation shall be laid before both Houses of the Oireachtas, and the

order or regulation shall not be made until a resolution approving the draft has been passed

by each House.*

(4) As soon as may be after any order, regulation or rule is made under this Act, notice of the

making thereof and of the place where copies thereof may be obtained, shall be published in

the Journal.

(5) Any power under this Act to make an order includes power to amend or revoke an order

made in the exercise of that power except in the case of an order under section 1 (2).

Expenses.

4.—The expenses incurred by the Minister in the administration of this Act shall, to such

extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by

the Oireachtas.

Repeal.

5.—Subject to the provisions of section 100 , the Act of 1963 is hereby repealed.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 †

Unofficial consolidated version

PART II

Register Trade Marks

Introductory

Trade marks.

6.—(1) In this Act a “trade mark” means any sign capable of being represented graphically

which is capable of distinguishing goods or services of one undertaking from those of other

undertakings.

(2) Without prejudice to subsection (1), a trade mark may, in particular, consist of words

(including personal names), designs, letters, numerals or the shape of goods or of their

packaging.

(2) Without prejudice to subsection (1), a trade mark may, in particular, consist of words

(including personal names) or designs, letters, numerals, colours, the shape of goods or of the

packaging of goods, or sounds, provided that such signs are capable of being represented on

the register in a manner which enables the Controller and the public to determine the clear

and precise subject matter of the protection afforded to its proprietor.*

(3) References in this Act to a trade mark include, unless the context otherwise requires,

references to a collective mark within the meaning of section 54 or a certification mark

within the meaning of section 55.

Registered trade marks.

7.—(1) A registered trade mark is a property right obtained by the registration of the trade

mark under this Act and the proprietor of a registered trade mark shall have the rights and

remedies provided by this Act.

(2) No proceedings shall lie to prevent or recover damages for the infringement of an

unregistered trade mark as such; but nothing in this Act shall affect the law relating to

passing off.

Grounds for Refusal of Registration

Absolute grounds for refusal of registration.

8.—(1) The following shall not be registered as trade marks:

(a) signs which do not satisfy the requirements of section 6 (1);

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in

trade, to designate the kind, quality, quantity, intended purpose, value, geographical

origin, the time of production of goods or of rendering of services, or other

characteristics of goods or services;

(d) trade marks which consist exclusively of signs or indications which have become

customary in the current language or in the bona fide and established practices of the

trade:

* * *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

Unofficial consolidated version

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or

(d) if, before the date of application for registration, it has in fact acquired a distinctive

character as a result of the use made of it.

(2) A sign shall not be registered as a trade mark if it consists exclusively of—

(a) the shape shape or another characteristic which results from the nature of the

goods themselves; or

(b) the shape shape or another characteristic of goods which is necessary to obtain a

technical result; or

(c) the shape shape or another characteristic which gives substantial value to the

goods

(3) A trade mark shall not be registered if—

(a) it is contrary to public policy or to accepted principles of morality; or

(b) it is of such a nature as to deceive the public, for instance as to the nature, quality

or geographical origin of the goods or service.

(4) A trade mark shall not be registered if or to the extent that—*

(a) its use is prohibited in the State by any enactment or rule of law or by any

provision of Community law; or

(b) the application for registration is made in bad faith by the applicant.†

(4) A trade mark shall not be registered if or to the extent that—

(a) its use is prohibited in the State by any enactment or rule of law or by any provision of

European Union law including those for the protection of designations of origin and

*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

geographical indications or where the State or the European Union is party to an international

agreement protecting designations of origin and geographical indications; or

(b) its use is prohibited in the State by any European Union legislation or international

agreements to which the European Union is party, providing for protection of traditional

terms for wine; or

(c) its use is prohibited in the State by any European Union legislation or international

agreements to which the European Union is party, providing for protection of traditional

specialties guaranteed; or

(d) it consists of, or reproduces in its essential elements, an earlier plant variety denomination

registered in accordance with the law of the State or European Union legislation, or

international agreements to which the European Union or the State is party, providing

protection for plant variety rights, and which are in respect of plant varieties of the same or

† *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

Unofficial consolidated version

closely related species; or

(e) the application for registration is made in bad faith by the applicant.*

Specially protected emblems.

9.—(1) A trade mark which consists of or contains any State emblem of Ireland or any

insignia or device so nearly resembling such emblem that it may be mistaken for such

emblem shall not be registered unless the Controller is satisfied that consent for its

registration has been given by the Minister.

(2) A trade mark which consists of or contains a representation of the national flag of the

State, as defined by Article 7 of the Constitution, shall not be registered if it appears to the

Controller that the use of the trade mark would be misleading or grossly offensive.

(3) The Controller may refuse to register a trade mark which consists of or contains any

badge, device or emblem of a public authority unless such consent as is required by rules is

obtained.

Relative grounds for refusal of registration.

10.—(1) A trade mark shall not be registered if it is identical with an earlier trade mark and

the goods or services for which the trade mark is applied for are identical with the goods or

services for which the earlier trade mark is protected.

(2) A trade mark shall not be registered if because—

(a) it is identical with an earlier trade mark and would be registered for goods or

services similar to those for which the earlier trade mark is protected, or†

(b) it is similar to an earlier trade mark and would be registered for goods or services

identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood

of association of the later trade mark with the earlier trade mark.

(3) A trade mark which—

(a) is identical with or similar to an earlier ‡trade mark, and

(b) is to be registered for goods or services which are not similar to those for which

the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the

State (or, in the case of a Community trade mark, in the Community) and the use of the later

trade mark without due cause would take unfair advantage of, or be detrimental to, the

distinctive character or reputation of the earlier trade mark.

(3) A trade mark which is identical with or similar to an earlier trade mark shall not be

registered if, or to the extent that, the earlier trade mark has a reputation in the State (or, in

the case of a Community trade mark, in the Community) (or, in the case of an EU trade mark,

in the European Union) and the use of the later trade mark without due cause would take

* Patents Amendment Act 2006 (31/2006) † *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

Unofficial consolidated version

unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier

trade mark.

(3A) Subsection (3) applies irrespective of whether the goods and services for which the

trade mark is to be registered are identical with, similar to, or not similar to those for which

the earlier trade mark is protected.

(4) A trade mark shall not be registered if, or to the extent that, its use in the State is liable to

be prevented—

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an

unregistered trade mark or other sign used in the course of trade; or course of trade, subject

to the condition that the rights to the unregistered trade mark or other sign were acquired

prior to the date of application for registration of the trade mark or date of the priority

claimed for that application and that unregistered trade mark or other sign confers on its

proprietor the right to prohibit the use of a subsequent trade mark; or

(b) by virtue of an earlier right, other than those referred to in subsections (1) to (3) and

paragraph (a), in particular by virtue of the law of copyright, registered designs or any other

law relating to a right to a name, a right of personal portrayal or an industrial property right

property right; or

(c) and to the extent pursuant to European Union legislation or the law of the State providing

for protections of designations of origin and geographical indications—

(i) by virtue of an earlier application for a designation of origin or a geographical indication

prior to the date of application for registration of the trade mark or the date of the priority

claimed for the application, subject to its subsequent registration, and*

(ii) that designation of origin or geographical indication confers on the person authorised

under the relevant law to exercise the rights arising therefrom the right to prohibit the use of

a subsequent trade mark.”, and

(5) Where by virtue of any such rule of law or earlier right as is referred to in subsection (4) a

person would be entitled to prevent the use of a trade mark, that person is in this Act referred

to as the proprietor of an “earlier right” in relation to the trade mark.

(5A) Where an agent or representative of the proprietor of a trade mark applies in his or her

own name, without the proprietor’s consent, for the registration of the trade mark, the

application is to be refused unless the agent or representative justifies that action.

(6) Nothing in this section shall prevent the registration of a trade mark where the proprietor

of the earlier trade mark or other earlier right consents to the registration.

Grounds for refusal or invalidity relating to only some of the goods or services

10A. Where grounds for refusal of registration of a trade mark exist in respect of only some

of the goods or services for which that trade mark has been applied, refusal of registration

shall cover those goods or services only.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

Unofficial consolidated version

Meaning of “earlier trade mark”.

11.—(1) In this Act an “earlier trade mark” means—

(a) a registered trade mark, an international trade mark or a Community trade mark

which has a date of application for registration earlier than that of the trade mark in

question, taking account (where appropriate) of the priorities claimed in respect of the

trade marks;

(a) a registered trade mark, an international trade mark, a European Union trade mark

or a designation of origin or a geographical indication which has a date of

application for registration earlier than that of the trade mark in question,

taking account (where appropriate) of the priorities claimed in respect of the trade

marks*

(b) a Community trade mark which has a valid claim to seniority from an earlier

registered trade mark or international trade mark, even when the latter trade mark has

been surrendered or allowed to lapse; or

(c) a trade mark which, at the date of application for registration of the trade mark in

question or (where appropriate) of the priority claimed in respect of the application,

was entitled to protection under the Paris Convention or the Agreement establishing

the World Trade Organisation* as a well-known trade mark.

(2) References in this Act to an earlier trade mark include references to a trade mark in

respect of which an application for registration has been made and which, subject to its being

registered, would be an earlier trade mark by virtue of subsection (1) (a) or (b).†

(3) Where the registration of a trade mark specified in subsection (1) (a) or (b) expires, the

trade mark shall continue to be taken into account in determining the registrability of a later

mark for a period of one year after the expiry unless the Controller is satisfied that there was

no bona fide use of the trade mark during the two years immediately preceding the expiry.

Raising of relative grounds in case of honest concurrent use.

12.—(1) This section applies where on an application for the registration of a trade mark it

appears to the Controller—

(a) that there is an earlier trade mark in relation to which any of the conditions set out

in subsections (1) to (3) of section 10 obtains, or

(b) that there is an earlier right in relation to which the condition set out in section 10

(4) is satisfied,

but the applicant shows to the satisfaction of the Controller that there has been honest

concurrent use of the trade mark for which registration is sought.

(2) In a case to which this section applies, the Controller shall not refuse the application by

reason of the earlier trade mark or other earlier right unless objection on that ground is raised

in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(3) For the purposes of this section “honest concurrent use” means such use in the State, by

the applicant or with his consent, as would formerly have amounted to honest concurrent use

for the purposes of section 20 (2) of the Trade Marks Act, 1963 .

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(4) Nothing in this section affects—

(a) the refusal of registration on the grounds mentioned in section 8 ; or

(b) the making of an application for a declaration of invalidity under section 52 (2).

Effects of Registered Trade Mark

Rights conferred by registered trade mark.

13.—(1) The proprietor of a registered trade mark Without prejudice to the

rights of proprietors acquired before the filing date or the priority date of the registered trade

mark, the proprietor of that registered trade mark* shall have exclusive rights in the trade

mark and such rights shall be infringed by the use of that trade mark in the State without the

proprietor's consent; and the acts referred to in section 14 , if done without that consent, shall

constitute infringement of the proprietor's rights.

(2) References in this Act to the infringement of a registered trade mark are references to any

infringement of the rights of the proprietor of the registered trade mark.

(2A) (a) Without prejudice to the rights of proprietors acquired before the filing date or the

priority date of the registered trade mark, the proprietor of that registered trade mark

shall be entitled to prevent all third parties from bringing goods, in the course of trade, into

the State, without being released for free circulation there, where such goods, including

the packaging thereof, come from third countries and bear without authorisation a trade mark

which is identical with the trade mark registered in the State, in respect of such goods, or

which cannot be distinguished in its essential aspects from that trade mark.

(b) The entitlement of the trade mark proprietor pursuant to paragraph (a) shall lapse if

during the proceedings to determine whether the registered trade mark has been infringed,

initiated in accordance with the European Union (Customs enforcement of Intellectual

Property Rights) Regulations 2013 (S.I. No. 562 of 2013), evidence is provided by the

declarant or the holder of the goods that the proprietor of the registered trade mark is not

entitled to prohibit the placing of the goods on the market in the country of final destination

(3) The rights of the proprietor of a registered trade mark shall have effect from the date of

registration of the trade mark (as determined under section 45 (3)).

(4) Notwithstanding subsection (3)

(a) no infringement proceedings may be begun before the date of publication of the

registration of the trade mark; and

(b) no offence shall be regarded as committed under section 92 by anything done

before that date.

Reproduction of trademarks in dictionaries

13A. If the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference

work, in print or electronic form, gives the impression that it constitutes the generic name of

the goods or services for which the trade mark is registered, the publisher of the work shall,

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at the request of the proprietor of the trade mark, ensure that the reproduction of the trade

mark is, without delay, and in the case of works in printed form at the latest in the next

edition of the publication, accompanied by an indication that it is a registered trade mark.*

Infringement of registered trade mark.

14.—(1) A person shall infringe a registered trade mark if that person uses in the course of

trade a sign which is identical with the trade mark in relation to goods or services which are

identical with those for which it is registered.

(2) A person shall infringe a registered trade mark if that person uses in the course of trade a

sign where because—

(a) the sign is identical with the trade mark and is used in relation to goods or services

similar to those for which the trade mark is registered, or

(b) the sign is similar to the trade mark and is used in relation to goods or services

identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood

of association of the sign with the trade mark.

(3) A person shall infringe a registered trade mark if that person uses in the course of trade a

sign which—

(a) is identical with or similar to the trade mark, and

(b) is used in relation to goods or services which are not similar to those for which

the trade mark is registered,

where the trade mark has a reputation in the State and the use of the sign, being without due

cause, takes unfair advantage of, or is detrimental to, the distinctive character or the

reputation of the trade mark.

(3) A person shall infringe a registered trade mark if that person uses in the course of trade in

relation to goods or services a sign which is identical with or similar to the trade mark where

a sign which is identical with, or similar to, the trade mark irrespective of whether it is used

in relation to goods or services which are identical with, similar to, or not similar to, those for

which the trade mark is registered where the trade mark has a reputation in the State and the use

of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the

distinctive character or the reputation of the trade mark.†

(4) For the purposes of this section, use of a sign shall include, in particular—

(a) affixing it to goods or the packaging thereof;

(b) offering or exposing goods for sale, putting them on the market or stocking them

for those purposes under the sign, or offering or supplying services under the sign;

(c) importing or exporting goods under the sign; or sign

(d) using the sign on business papers or in advertising.

(e) using the sign as a trade or company name or part of a trade or company name; or

(f) using the sign in comparative advertising in a manner that is contrary to the

European Communities (Misleading and Comparative Marketing Communications)

Regulations 2007 (S.I. No. 774 of 2007).”, and

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(4A) Where the risk exists that the packaging, labels, tags, security or authenticity features or

devices, or any other means to which the trade mark is affixed, could be used in relation to

goods or services and that use would constitute an infringement of the rights of the proprietor

of a trade mark under section 13(1) and 14(4), the proprietor of that trade mark shall have the

right to prohibit the following acts if carried out in the course of trade:

(a) affixing a sign identical with, or similar to, the trade mark on packaging, labels, tags,

security or authenticity features or devices, or any other means to which the mark may be

affixed;

(b) offering or placing on the market, or stocking for those purposes, or importing or

exporting, packaging, labels, tags, security or authenticity features or devices, or any other

means to which the mark is affixed.*

(5) A person who applies a registered trade mark to material intended to be used for labelling

or packaging goods, as a business paper, or for advertising goods or services shall be treated

as a party to any use of the material which infringes the registered trade mark if, when that

person applied the mark, that person knew or had reason to believe that the application of the

mark was not duly authorised by the proprietor or a licensee of the registered trade mark.

(6) Nothing in the preceding provisions of this section shall be construed as preventing the

use of a registered trade mark by any person for the purpose of identifying goods or services

as those of the proprietor or licensee of the registered trade mark; but any such use, otherwise

than in accordance with honest practices in industrial or commercial matters, shall be treated

as infringing the registered trade mark if the use without due cause takes unfair advantage of,

or is detrimental to, the distinctive character or reputation of the trade mark.

Limits on effect of registered trade mark.

15.—(1) A registered trade mark shall not be infringed by the use of another registered trade

mark in relation to goods or services for which the latter is registered, but subject to section

52 (6).

(2) A registered trade mark shall not be infringed by—

(a) the use by a person of his own name or address;

(a) the use of the name or address of a third party, where that third party is a natural

person;

(b) the use of indications concerning the kind, quality, quantity, intended purpose,

value, geographical origin, the time of production of goods or of rendering of the

service or other characteristics of goods or services; or

(b) the use of signs or indications which are not distinctive or which concern the kind,

quality, quantity, intended purpose, value, geographical origin, the time of production

of goods or of rendering of the service or other characteristics of goods or services;

(c) the use of the trade mark where it for the purpose of identifying or referring to

goods or services as those of the proprietor of that trade mark, in particular where that

use is necessary to indicate the intended purpose of a product or service, in particular,

as accessories or spare parts: Provided that such use Provided that such use is in the

course of trade† in accordance with honest practices in industrial and commercial

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matters.

(3) A registered trade mark shall not be infringed by the use in the course of trade in a

particular locality of an earlier right which applies only in that locality.

(4) For the purpose of subsection (3) an “earlier right” means an unregistered trade mark or

other sign continuously used in relation to goods or services by, or by a predecessor in title

of, a person from a date prior to whichever is the earlier of—

(a) the use of the first-mentioned trade mark in relation to those goods or services by

the proprietor or a predecessor in title of the proprietor; and

(b) the registration of the first-mentioned trade mark in respect of those goods or

services in the name of the proprietor or a predecessor in title of the proprietor;

and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use

in that locality is protected by any rule of law, in particular the law of passing off.

Exhaustion of rights conferred by registered trade mark

16.—(1) A registered trade mark shall not be infringed by the use of the trade mark in

relation to goods which have been put on the market in the European Economic Area under

that trade mark by the proprietor of the trade mark or with the consent of the proprietor.

(2) The provisions of subsection (1) shall not apply where there exist legitimate reasons for

the proprietor of the trade mark to oppose further dealings in the goods, in particular, where

the condition of the goods has been changed or impaired after they have been put on the

market.

Use of trade marks*

16A. (1) If, within a period of 5 years following the date of the completion of the registration

procedure, the proprietor has not put the trade mark to genuine use in the State in connection

with the goods or services in respect of which it is registered, or if such use has been

suspended during a continuous 5 year period, the trade mark shall be subject to the provisions

of sections 18A, 43A, 51(1)(a) or 52A(3) and (4), unless there are proper reasons for non-

use.

(2) With regard to trade marks registered under international arrangements and having effect

in the State, the 5 year period referred to in subsection (1) shall be calculated—

(a) from the date when the mark can no longer be rejected or opposed, or

(b) where an opposition has been lodged or when an objection on absolute or relative

grounds has been notified, from the date when a decision terminating the opposition

proceedings or a ruling on absolute or relative grounds for refusal became final or the

opposition was withdrawn.

(3) The date of commencement of the 5 year period in subsection (1) shall be entered in the

register.

(4) Use within the meaning of subsection (1) shall include—

(a) use of the trade mark in a form differing in elements which do not alter the distinctive

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* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

character of the mark in the form in which it was registered, regardless of whether or not the

trade mark as used is also registered in the name of the proprietor, or

(b) affixing of the trade mark to goods or to the packaging thereof in the State solely for

export purposes.

(5) Use of the trade mark with the consent of the proprietor shall be deemed to constitute use

by the proprietor.*

Registration subject to disclaimer or limitation.

17.—(1) A person who applies for the registration of a trade mark or the proprietor of a

registered trade mark may—

(a) disclaim any right to the exclusive use of any specified element of the trade mark,

or

(b) agree that the rights conferred by the registration shall be subject to a specified

territorial or other limitation;

and where the registration of a trade mark is subject to a disclaimer or limitation, the rights

conferred by section 13 shall be restricted accordingly.

(2) If on an application for the registration of a trade mark, it appears to the Controller that

any particular element of the trade mark is not distinctive and the inclusion of the element in

the trade mark could give rise to doubts as to the scope of protection of the trade mark, he

may refuse to accept the application unless the applicant agrees to make a disclaimer in

respect of that element under subsection (1) (a) within such period as the Controller may

specify.

(3) Particulars of any disclaimer or limitation shall be entered in the register.

Infringement Proceedings

Action for infringement.

18.—(1) Where a registered trade mark is infringed, the infringement shall be actionable by

the proprietor of the trade mark.

(2) In an action for infringement of a registered trade mark all such relief by way of damages,

injunctions, accounts or otherwise shall be available to the proprietor as is available in

respect of the infringement of any other property right.

Non-use as defence in action for infringement

18A. (1) The proprietor of a trade mark shall be entitled to prohibit the use of a sign only to

the extent that the proprietor’s rights are not liable to be revoked pursuant to section 51 at the

time the action for infringement is brought.

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(2) If the defendant so requests, the proprietor of the trade mark shall furnish proof that,

during the 5 year period preceding the date of bringing the action for infringement—

(a) the trade mark has been put to genuine use as provided in section 16A, in

connection with the goods or services in respect of which it is registered and which

are cited as justification for the action, or

(b) that there are proper reasons for non-use,

provided that the registration procedure of the trade mark has, at the date of bringing the

action, been completed for not less than 5 years.

Intervening right of the proprietor of a later registered trade mark as

defence in action for infringement

18B. (1) In an action for infringement, the proprietor of a trade mark shall not be entitled to

prohibit the use of a later registered trade mark where that later trade mark would not be

declared invalid pursuant to sections 10(4)(a), 10(4)(b), 52(2A), 53(1), or 52A (3).*

(2) In an action for infringement, the proprietor of a trade mark shall not be entitled to

prohibit the use of a later registered European Union trade mark where that later trade mark

would not be declared invalid pursuant to Articles 60(1), (3) or (4), 61(1) or (2) or 64(2) of

the European Union trade mark regulation.†

(3) Where the proprietor of a trade mark is not entitled to prohibit the use of a later registered

trade mark pursuant to subsection (1) or (2), the proprietor of that later registered trade mark

shall not be entitled to prohibit the use of the earlier trade mark in an action for infringement,

even though that earlier right may no longer be invoked against the later trade mark.‡

Order for erasure &c. of offending sign.

19.—(1) Where a person is found to have infringed a registered trade mark, the Court

appropriate court may make an order requiring him—

(a) to cause the offending sign to be erased, removed or obliterated from any

infringing goods, material or articles in his possession, custody or control, or

(b) if it is not reasonably practicable for the offending sign to be erased, removed or

obliterated, to secure the destruction of the infringing goods, materials or articles in

question.

(2) If an order under subsection (1) is not complied with, or it appears to the Court

appropriate court likely that such an order would not be complied with, the Court appropriate

court may order that the infringing goods, material or articles be delivered to such person as

the Court appropriate court may direct for erasure, removal or obliteration of the sign, or for

destruction, as the case may be.

Order for delivery up of infringing goods, material or articles.

20.—(1) The proprietor of a registered trade mark may apply to the Court appropriate court

for an order for the delivery up to the proprietor, or such other person as the Court

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appropriate court may direct, of any infringing goods, material or articles of which a person

has possession, custody or control in the course of a business or otherwise for the purpose of

dealing in any way (including offering or exposing for sale or hire).

(2) An application for the delivery up of any infringing goods, material or articles shall not

be made after the end of the period specified in section 22 ; and no order shall be made

unless the Court appropriate court also makes, or it appears to the Court appropriate court

that there are grounds for making, an order under section 23 .

(3) A person to whom any infringing goods, material or articles are delivered up in pursuance

of an order under this section shall, if an order under section 23 is not made, retain them

pending the making of an order or the decision not to make an order under that section.

(4) Nothing in this section shall affect any other power of the Court appropriate court*.

Meaning of “infringing goods, material or articles”.

21.—(1) In this Act the expressions “infringing goods”, “infringing material” and “infringing

articles” shall be construed as defined herein.

(2) Goods shall be “infringing goods”, in relation to a registered trade mark, if they or their

packaging bear a sign identical or similar to that mark and either—

(a) the application of the sign to the goods or their packaging was an infringement of

the registered trade mark, or

(b) they have been or are proposed to be imported into the State and the application of

the mark in the State to the goods or their packaging would constitute an infringement

of the registered trade mark, or

(c) the sign has otherwise been used in relation to the goods in such a way as to

infringe the registered trade mark.

(3) Nothing in subsection (2) (b) shall be construed as applying to goods which may lawfully

be imported into the State by virtue of any right created or arising under or by virtue of the

treaties governing the European Union.

(4) Material shall be “infringing material”, in relation to a registered trade mark, if it bears a

sign identical or similar to that mark and either—

(a) it is used for labelling or packaging goods, as a business paper, or for advertising

goods or services, in such a way as to infringe the registered trade mark, or

(b) it is intended to be so used and such use would infringe the registered trade mark.

(5) “Infringing articles”, in relation to a registered trade mark, means articles—

(a) which are specifically designed or adapted for making copies of a sign identical or

similar to that mark, and

(b) which are in the possession, custody or control, of a person who knows or has

reason to believe that they have been or are to be used to produce infringing goods or

material.

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Period after which remedy of delivery up not available.

22.—(1) Subject to the provisions of this section, an application for an order under section 20

may not be made after the end of the period of six years from—

(a) in the case of infringing goods, the date on which the trade mark was applied to

the goods or their packaging;

(b) in the case of infringing material, the date on which the trade mark was applied to

the material; or

(c) in the case of infringing articles, the date on which they were made.

(2) If during the whole or part of the period referred to in subsection (1) the proprietor of the

registered trade mark—

(a) is under a disability, or

(b) is prevented by fraud or concealment from discovering the facts entitling the

proprietor to apply for an order,

an application may be made at any time before the end of the period of six years from the

date on which the proprietor ceased to be under a disability or, as the case may be, could with

reasonable diligence have discovered those facts.

(3) For the purposes of subsection (2) a person is under a disability if he is so for the

purposes of the Statute of Limitations, 1957 .

Order as to disposal of infringing goods, material or articles

23.—(1) Where infringing goods, material or articles have been delivered up in pursuance of

an order under section 20 , an application may be made to the Court appropriate court* —

(a) for an order that they be destroyed or forfeited to such person as the Court

appropriate court thinks fit, or

(b) for a decision that no such order should be made.

(2) In considering what order (if any) should be made, the Court appropriate court shall

consider whether other remedies available in an action for infringement of the registered

trade mark would be adequate to compensate and protect the interests of the proprietor and

any licensee.

(3) Provision may be made by rules of court as to the service of notice on any person having

an interest in the goods, material or articles, and any such person shall be entitled—

(a) to appear in proceedings for an order under this section, whether or not he was

served with notice, and

(b) to appeal against any order made, whether or not he appeared;

and, unless the Court appropriate court otherwise directs, an order shall not take effect until

the end of the period within which notice of an appeal may be given or, if before the end of

that period notice of appeal is duly given, until the final determination or abandonment of the

proceedings on the appeal.

(4) Where there is more than one person interested in the goods, material or articles, the

Court appropriate court shall make such order as it thinks just.

(5) If the Court appropriate court decides that no order should be made under this section, the

person in whose possession, custody or control the goods, material or articles were before

being delivered up shall be entitled to their return.

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(6) References in this section to a person having an interest in goods, material or articles

include references to any person in whose favour an order could be made under section 27 of

the Copyright Act, 1963 . *

(6) References in this section to a person having an interest in goods, material or articles

include references to any person in whose favour an order could have been made under

sections 145 and 264 of the Copyright and Related Rights Act, 2000*

Remedy for groundless threats of infringement proceedings

24.—(1) Where a person threatens another with proceedings for infringement of a registered

trade mark other than in relation to—

(a) the application of the mark to goods,

(b) the importation of goods to which the mark has been applied, or

any person aggrieved may apply to the Court appropriate court† for relief under this section.

(2) The relief which may be applied for as mentioned in subsection (1) is any of the

following:

(a) a declaration that the threats are unjustifiable;

(b) an injunction against the continuance of the threats;

(c) damages in respect of any loss sustained by the threats.

(3) A plaintiff shall be entitled to such relief as is referred to in subsection (2) unless the

defendant shows that the acts in respect of which proceedings were threatened constitute (or

if done would constitute) an infringement of the registered trade mark concerned.

(4) Notwithstanding the provisions of subsection (3), the plaintiff shall be entitled to such

relief as is referred to in subsection (2) if the plaintiff shows that the registration of the trade

mark is invalid or liable to be revoked in a relevant respect.

(5) Notification that a trade mark is registered or that an application for registration has been

made shall not of itself constitute a threat of proceedings for the purposes of this section.

Infringing goods, material or articles: powers of seizure and search.

25.—(1) If the District Court is satisfied by evidence that there is reasonable ground for

believing that infringing goods, material or articles are in the possession, custody or control

of any person in the course of business or otherwise for the purpose of dealing in any way

(including offering or exposing for sale), the District Court may by order authorise a member

of the Garda Síochána to seize the goods, material or articles without warrant and to bring

them before the court.

(2) ‡If a Judge of the District Court is satisfied by information on oath that there is reasonable

ground for suspecting that infringing goods, material or articles are on any premises in the

course of business or otherwise for the purpose of dealing in any way, the Judge may grant a

* S.I. No. 28/2000 Copyright and Related Rights Act, 2000 † Copyright and Other Intellectual Property Law Provisions Act 2019

‡ Patents Amendment Act 2006 (31/2006)

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search warrant authorising a named member of the Garda Síochána not below the rank of

inspector, accompanied by such other members of the Garda Síochána as may be necessary,

to enter on the premises, if need be by force, and to seize any such goods, material or articles

and bring them before the court.

(2) If a Judge of the District Court is satisfied by information on oath that there is reasonable

ground for suspecting that infringing goods, material or articles are on any premises or place

in the course of business or otherwise for the purpose of dealing in any way, the Judge may

grant a search warrant authorising a member of the Garda Síochána, accompanied by such

other members of the Garda Síochána or other person or persons as that member thinks

proper, at any time or times within 28 days from the date of the issue of the warrant on

production, where requested, of that warrant, to enter and search the premises or place *specified in the warrant using reasonable force where necessary, and to do all or any of the

following acts:

(a) to seize any such goods, material or articles;

(b) to make an inventory or prepare other evidence of infringement of a registered trade mark

or potential infringement of a registered trade mark;†

(c) to seize anything found there which that member believes on reasonable grounds may be

required to be used in evidence in any proceedings brought in respect of an offence under this

Act;

(b) to make an inventory or prepare other evidence of infringement of a registered trade mark

or potential infringement of a registered trade mark;

(2A) A warrant issued under this section may authorise persons, including the registered

proprietor or his or her designated representative, to accompany and assist any member of the

Garda Síochána in executing the warrant or in collating any inventory or other evidence.‡

(3) On proof to the District Court that any goods, material or articles brought before the court

under subsection (1) or (2) are infringing goods, material or articles, the court may—

(a) order them to be delivered up to the proprietor of the registered trade mark

concerned;

(b) order them to be destroyed or forfeited to such person as the court thinks fit; or

(c) order them to be dealt with in such other way as the court thinks fit.

(4) The powers of the District Court under this section shall be exercisable by the Judge of

the District Court for the district in which the goods, material or articles are for the time

being or, as the case may be, where the premises or place* concerned are situated.

Registered Trade Mark as Object of Property

Nature of registered trade mark.

26.—A registered trade mark is personal property.

† Patents Amendment Act 2006 (31/2006)

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Jointly owned trade marks.

27.—(1) Where the relations between two or more persons interested in a trade mark are such

that no one of them is entitled, as between himself and the other or others, to use it except—

(a) on behalf of both or all of them, or

(b) in relation to an article with which both or all of them are connected in the course

of trade,

those persons may be registered as joint proprietors of the trade mark.

(2) Except as provided by subsection (1), nothing in this Act shall permit the registration as

joint proprietors of a trade mark of two or more persons who use, or propose to use, the trade

mark independently.

(3) Subject to subsection (4), where, in accordance with subsection (1), two or more persons

are registered as joint proprietors of a trade mark, this Act shall have effect in relation to any

rights to the use of the trade mark vested in those persons as if those rights were vested in a

single person.

(4) The rights of any one of the persons who are registered as joint proprietors of a trade

mark (in this subsection referred to as “the joint owners”) shall be deemed to be infringed by

any other of the joint owners who uses the trade mark in physical or other relation to goods

or services—

(a) in respect of which the trade mark is so registered; but

(b) with which both or all of the joint owners are not and have not been connected in

the course of trade.

Assignment &c. of registered trade mark.

28.— (1) A registered trade mark is transmissible by assignment, testamentary disposition or

operation of law in the same way as other personal property, and shall be so transmissible

either in connection with the goodwill of a business or independently.*

(1) A registered trade mark may be transferred by assignment, testamentary disposition or

operation of law in the same way as other personal property, and shall be so transferrable

either in connection with the goodwill of a business or independently.

(1A) A transfer of a whole business shall include the transfer of the trade mark, except where

there is agreement to the contrary, or circumstances clearly dictate otherwise.

(1B) Subsection (1A) shall apply to the contractual obligation to transfer the undertaking.

(2) An assignment or other transmission other transfer of a registered trade mark may be

partial, that is, limited so as to apply—

(a) in relation to some but not all of the goods or services for which the trade mark is

registered; or

(b) in relation to use of the trade mark in a particular manner or a particular locality.

(3) An assignment of a registered trade mark, or a vesting assent relating to a registered trade

mark, shall not be effective unless it is in writing signed by or on behalf of the assignor or, as

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the case may be, a personal representative; and this requirement may be satisfied in a case

where the assignor or personal representative is a body corporate by the affixing of its seal.

(4) Subsections (1) to (3) shall apply to assignment by way of security as in relation to any

other assignment.

(5) A registered trade mark may be the subject of a charge in the same way as other personal

property.

(6) Nothing in this Act shall be construed as affecting the assignment or other transmission

other transfer* of an unregistered trade mark as part of the goodwill of a business.

Registration of transactions affecting registered trade mark.

29.—(1) On application being made to the Controller in the prescribed manner by—

(a) a person claiming to be entitled to an interest in or under a registered trade mark

by virtue of a registrable transaction, or

(b) any other person claiming to be affected by such a transaction,

particulars of the transaction shall be entered in the register in the prescribed manner.

(2) The following are registrable transactions for the purposes of this Act—

(a) an assignment of a registered trade mark or any right in it;

(b) the grant or assignment of a licence under a registered trade mark;

(c) the granting of any security interest (whether fixed or floating) over a registered

trade mark or any right in or under it;

(ca) matters arising from the operation of law which affect the proprietorship of a

registered trade mark†

(d) the making by a personal representative of a vesting assent in relation to a

registered trade mark or any right in or under it; and

(e) an order of a court the appropriate court‡ or other competent authority transferring

a registered trade mark or any right in or under it.

(3) Until an application has been made for registration of the prescribed particulars of a

registrable transaction—

(a) the transaction shall be ineffective as against a person acquiring a conflicting

interest in or under the registered trade mark in ignorance of it; and

(b) a person claiming to be a licensee by virtue of the transaction shall not have the

protection of section 34 or 35 .

(3) Until an application has been made to enter the particulars of a registrable transaction in

the register pursuant to subsection (1), the transaction shall be ineffective as against a

person acquiring a conflicting interest in or under the registered trade mark in ignorance of

that transaction.§

(4) Where a person becomes the proprietor or a licensee of a registered trade mark by virtue

of a registrable transaction, then unless—

*

† Patents Amendment Act 2006 (31/2006) ‡ Intellectual Property (Miscellaneous Provisions) Act 2014 §§ Copyright and Other Intellectual Property Law Provisions Act 2019

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(a) an application for registration of the prescribed particulars of the transaction is

made before the end of the period of six months beginning with the date of the

transaction, or

(b) the Court is satisfied that it was not practicable for such an application to be made

before the end of that period and that an application was made as soon as practicable

thereafter,

that person shall not be entitled to damages or an account of profits in respect of any

infringement of the registered trade mark occurring after the date of the transaction and

before the application for registration of the prescribed particulars is made.

(4) Where a person becomes the proprietor or a licensee of a registered trade mark by

virtue of a registrable transaction and the trade mark is infringed—

(a) on or after the date of the registrable transaction, and

(b) at a time when no application has been made to enter the particulars of the

registrable transaction in the register pursuant to subsection (1),

the Court the appropriate court* shall not award the person his or her costs in

proceedings for such an infringement of the trade mark unless—

(i) an application for registration of the particulars of the registrable transaction was

made not later than 6 months from the date of the transaction, or

(ii) the Court appropriate court is satisfied that it was not practicable for such an

application to be made in the period referred to in paragraph (i) and that an application

was made as soon as practicable after the expiry of that period.*

(5) Provision may be made by rules with respect to the amendment or deletion of particulars

of registrable transactions entered in the register by virtue of this section.

Trusts and equities.

30.—(1) No notice of any trust (express, implied or constructive) shall be entered in the

register; and the Controller shall not be affected by any such notice.

(2) Subject to the provisions of this Act, equities in respect of a registered trade mark may be

enforced in like manner as in respect of other personal property.

Application for registration of trade mark as an object of property.

31.—(1) The provisions of sections 26 to 30 sections 26 to 30 and 32 to 35 †shall apply, with

the necessary modifications, in relation to an application for the registration of a trade mark

as they apply in relation to a registered trade mark.

(2) In section 29 as it applies in relation to a transaction affecting an application for the

registration of a trade mark, the references to the entry of particulars in the register, and to the

* Intellectual Property (Miscellaneous Provisions) Act 2014 †*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 † Copyright and Other Intellectual Property Law Provisions Act 2019

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making of an application to register particulars, shall be construed as references to the giving

of notice to the Controller of those particulars.

(3) The procedure subsequent to the giving of notice as mentioned in subsection (2) shall be

such as may be prescribed by rules.

Licensing

Licensing of registered trade mark.

32.—(1) A licence to use a registered trade mark may be general or limited.

(2) A limited licence may, in particular, apply—

(a) in relation to some but not all of the goods or services for which the trade mark is

registered; or

(b) in relation to use of the trade mark in a particular manner or a particular locality.

(3) A licence shall not be effective unless it is in writing signed by or on behalf of the grantor

and this requirement may be satisfied in a case where the grantor is a body corporate by the

affixing of its seal.

(4) Unless the licence provides otherwise, it shall be binding on a successor in title to the

grantor's interest; and references in this Act to doing anything with, or without, the consent of

the proprietor of a registered trade mark shall be construed accordingly.

(5) Where the licence so provides, a sub-licence may be granted by the licensee; and

references in this Act to a licence or licensee include a sub-licence or sub-licensee.

Exclusive licences.

33.—(1) In this Act an “exclusive licence” means a licence (whether general or limited)

authorising the licensee, to the

exclusion of all other persons, including the person granting the licence, to use a registered

trade mark in the manner authorised by the licence; and the expression “exclusive licensee

shall be construed accordingly.

(2) An exclusive licensee has the same rights against a successor in title who is bound by the

licence as the exclusive licensee has against the person granting the licence.

General provisions as to rights of licensees in case of infringement.

34.—(1) This section has effect with respect to the rights of a licensee in relation to

infringement of a registered trade mark, except where or to the extent that, by virtue of

section 35 (2), the licensee has a right to bring proceedings in the licensee's own name.

(2) A licensee is entitled, unless the licence, or any licence through which the licensee's

interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to

take infringement proceedings in respect of any matter which affects the licensee's interests.

(3) If the proprietor—

(a) refuses to take proceedings when called upon under subsection (2), or

(b) fails to do so within two months after being so called upon,

the licensee may bring the proceedings in his own name as if he were the proprietor.

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(3) Without prejudice to the provisions of the license or the licensing contract, the licensee

may bring proceedings for infringement of a trade mark only if its proprietor consents

thereto.

(4) Where infringement proceedings are brought by a licensee by virtue of this section, the

licensee may not, without the leave of the Court, proceed with the action unless the

proprietor is either joined as a plaintiff or added as a defendant; but this subsection does not

affect the granting of interlocutory relief on an application by a licensee alone.

(4) Where infringement proceedings have been brought by a licensee under subsection (3),

the licensee may not, without the leave of the Court appropriate court, proceed with the

action unless the proprietor is either joined as a plaintiff or added as a defendant.

(4A) A licensee shall, for the purpose of obtaining compensation for damage suffered by

him, be entitled to intervene in infringement proceedings brought by the proprietor of the

trade mark.*

(5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be

liable for any costs in the action unless he takes part in the proceedings.

(6) In infringement proceedings brought by the proprietor of a registered trade mark the

Court appropriate court† shall take into account any loss suffered or likely to be suffered by

licensees; and the Court appropriate court may give such directions as it thinks fit as to the

extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of

licensees.

(7) The provisions of this section shall apply in relation to an exclusive licensee if or to the

extent that the licensee has, by virtue of section 35 (1), the rights and remedies of an assignee

as if the licensee were the proprietor of the registered trade mark.

Exclusive licensee having rights and remedies of assignee.

35.—(1) An exclusive licence may provide that the licensee shall have, to such extent as

may be provided by the licence, the same rights and remedies in respect of matters occurring

after the grant of the licence as if the licence had been an assignment.

(2) Where or to the extent that provision is made as mentioned in subsection (1), the licensee

shall be entitled, subject to the provisions of the licence and to the following provisions of

this section, to bring infringement proceedings, against any person other than the proprietor,

in the licensee's own name.

(2A) The holder of an exclusive licence may bring infringement proceedings if the proprietor

of the trade mark, after formal notice, does not himself bring infringement proceedings

within an appropriate period.‡

(3) Any such rights and remedies of an exclusive licensee shall be concurrent with those of

the proprietor of the registered trade mark; and references to the proprietor of a registered

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trade mark in the provisions of this Act relating to infringement shall be construed

accordingly.

(4) In an action brought by an exclusive licensee by virtue of this section a defendant may

avail himself of any defence which would have been available to him if the action had been

brought by the proprietor of the registered trade mark.

Exercise of concurrent rights.

36.—(1) Where proceedings for infringement of a registered trade mark brought by the

proprietor or an exclusive licensee relate (wholly or partly) to an infringement in respect of

which they have concurrent rights of action, the proprietor or, as the case may be, the

exclusive licensee may not, without the leave of the Court appropriate court*, proceed with

the action unless the other is either joined as a plaintiff or added as a defendant; but this

subsection does not affect the granting of interlocutory relief on an application by a

proprietor or exclusive licensee alone.

(2) A person who is added as a defendant as mentioned in subsection (1) shall not be liable

for any costs in the action unless he takes part in the proceedings.

(3) Where an action for infringement of a registered trade mark is brought which relates

(wholly or partly) to an infringement in respect of which the proprietor and an exclusive

licensee have or had concurrent rights of action—

(a) the Court appropriate court shall in assessing damages take into account—

(i) the terms of the licence, and

(ii) any pecuniary remedy already awarded or available to either of them in

respect of the infringement;

(b) no account of profits shall be directed if an award of damages has been made, or

an account of profits has been directed, in favour of the other of them in respect of the

infringement; and

(c) the Court appropriate court shall, if an account of profits is directed, apportion the

profits between them as the Court appropriate court considers just, subject to any

agreement between them.

(4) The provisions of subsection (3) apply whether or not the proprietor and the exclusive

licensee are both parties to the action; and if they are not both parties the Court appropriate

court may give such directions as it thinks fit as to the extent to which the party to the

proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.

(5) The proprietor of a registered trade mark shall notify any exclusive licensee who has a

concurrent right of action before applying for an order under section 20 ; and the Court

appropriate court may on the application of the licensee make such order under that section

as it thinks fit having regard to the terms of the licence.

(6) The provisions of this section shall have effect subject to any agreement to the contrary

between the exclusive licensee and the proprietor.

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Application for Registered Trade Mark

Application for registration.

37.—(1) An application for registration of a trade mark shall be made to the Controller in

such manner and containing such information as may be prescribed.

(2) The application shall state that the trade mark is being used, by or with the consent of the

applicant, in relation to the goods or services specified in the application, or that the applicant

has a bona fide intention that it should be so used.

(3) The application shall be subject to the payment of the appropriate fee or fees.

Date of filing.

38.—(1) The date of filing of an application for registration of a trade mark is the date on

which the prescribed documents are furnished to the Controller by the applicant; and if those

documents are furnished on different days, the date of filing is the last of those days.

(2) References in this Act to the date of application for registration are to the date of filing of

the application.

Classification of goods and services.

39.(1) Goods and services shall be classified for the purposes of the registration of trade

marks according to a prescribed system of classification; and every trade mark shall be

registered in respect of particular goods or services or in respect of classes of goods or

services.

(2) Any question arising as to the class within which any goods or services fall shall be

determined by the Controller, whose decision shall be final.*

Designation and Classification of goods and services

39. (1) Goods and services shall be classified for the purposes of the registration of trade

marks in conformity with the Nice Agreement Concerning the International Classification of

Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (herein

referred to as the ‘Nice Classification’).

(2) The goods and services for which protection is sought shall be identified by the applicant

with sufficient clarity and precision to enable the Controller and the public, on that sole basis,

to determine the extent of the protection sought. †

(3) For the purposes of subsection (2), the general indications included in the class headings

of the Nice Classification or other general terms may be used, provided that they comply

with the requisite standards of clarity and precision referred to in this section.

(4) The Controller shall reject an application in respect of indications or terms which are

unclear or imprecise, where the applicant does not suggest an acceptable wording within a

period set by the Controller to that effect.

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(5) The use of general terms, including the general indications of the class headings of the

Nice Classification—

(a) shall be interpreted as including all the goods or services clearly covered by the

literal meaning of the indication or term, and

(b) shall not be interpreted as comprising a claim to goods or services which cannot

be so understood.

(6) Where the applicant requests registration for more than one class, the applicant shall—

(a) group the goods and services according to the classes of the Nice Classification,

(b) precede each group by the number of the class to which that group of goods or

services belongs, and

(c) present them in the order of the classes.

(7) Goods and services shall not be regarded as—

(a) being similar to each other on the ground that they appear in the same class under

the Nice Classification, or

(b) being dissimilar from each other on the ground that they appear in different

classes under the Nice Classification.

(8) Any question arising as to the class within which any goods or services fall shall be

determined by the Controller, whose decision shall be final.*

Priority

Claim to priority of Convention application.

40.—(1) A person who has duly filed an application for protection of a trade mark in a

Convention country (in this Act referred to as a “Convention application”), or the successor

in title to such a person, has a right to priority, for the purpose of registering the same trade

mark under this Act for some or all of the same goods or services, for a period of six months

from the date of filing of the first Convention application.

(2) If the application for registration under this Act is made within the period specified in

subsection (1)

(a) the relevant date for the purposes of establishing which rights take precedence

shall be the date of filing of the first Convention application, and

(b) the registrability of the trade mark shall not be affected by any use of the mark in

the State in the period between that date and the date of the application under this

Act.

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(3) Any filing which in a Convention country is equivalent to a regular national filing, under

its domestic legislation or an international agreement, shall be treated as giving rise to the

right of priority; and for this purpose a “regular national filing” means a filing which is

adequate to establish the date on which the application was filed in that country, irrespective

of the outcome of the application.

(4) A subsequent application concerning the same subject as the first Convention application,

filed in the same Convention country, shall be considered the first Convention application (of

which the filing date is the starting date of the period of priority) if, at the time of the

subsequent application—

(a) the previous application has been withdrawn, abandoned or refused, without

having been laid open to public inspection and without leaving any rights

outstanding; and

(b) it has not yet served as a basis for claiming a right of priority;

and in such a case the previous application may not thereafter serve as a basis for

claiming a right of priority.

(5) Provision may be made by rules as to the manner of claiming a right to priority on the

basis of a Convention application.

(6) A right to priority arising as a result of a Convention application may be assigned or

otherwise transmitted, either with the application or independently; and the reference in

subsection (1) to the applicant's successor in title shall be construed accordingly.

Claim to priority from other relevant overseas application.

41.—(1) This section applies to any country or territory in relation to which the State has

entered into a treaty, convention, arrangement or engagement for the reciprocal protection of

trade marks.

(2) The Government may by order make provision for conferring on a person or the

successor in title to such a person,* who has duly filed an application for protection of a trade

mark in a country or territory to which this section applies a right to priority, for the purpose

of registering the same trade mark under this Act for some or all of the same goods or

services, for a specified period from the date of filing of that application.

(3) In relation to a country or territory to which this section applies, an order under this

section may make provision corresponding to that made by section 40 in relation to

Convention countries or such other provision as appears to the Government to be appropriate.

Registration Procedure

Examination of application.

42.—(1) The Controller shall examine whether an application for registration of a trade mark

satisfies the requirements of this Act (including any requirements imposed by rules); and in

this section those requirements are referred to as “the requirements for registration”.

* Patents Amendment Act 2006 (31/2006)

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(2) If it appears to the Controller that the requirements for registration are not met, the

Controller shall inform the applicant and give the applicant an opportunity, within such

period as the Controller may specify, to make representations or to amend the application.

(3) If the applicant fails to satisfy the Controller that the requirements for registration have

been met, or to amend the application so as to meet them, or fails to respond before the end

of the specified period, the Controller shall refuse to accept the application.

(4) If it appears to the Controller that the requirements for registration are met, the Controller

shall accept the application.

Publication, opposition proceedings and observations.

43.—(1) When an application for registration has been accepted, the Controller shall cause

the application to be published in the Journal.

(2) Any person may, within the prescribed time from the date of the publication of the

application in the Journal, give notice to the Controller of opposition to the registration; and

opposition to the registration on the grounds provided for in section 10 and any such notice shall be

given in writing in the prescribed manner, and shall include a statement of the grounds of

opposition.

(2A) (a) A notice of opposition under subsection (2) may be filed on the basis of one or more

earlier trade marks or other earlier rights, provided that they all belong to the same

proprietor.

(b) A notice of opposition filed on the basis of one or more earlier trade marks or earlier

rights, may be based on part, or the totality, of the goods or services in respect of which

the earlier rights are protected or applied for, and may be directed against part or the totality

of the goods or services in respect of which the contested mark is applied for.

(2B) At any stage following the commencement of opposition proceedings, the parties shall

be granted, at their joint request, a stay in the proceedings for a minimum period of 2 months

from the date of the request, in order to allow for the possibility of a friendly settlement

between the opposing party and the applicant.”,

(3) Where an application has been published in the Journal, any person may, at any time

before the registration of the trade mark, make observations in writing to the Controller as to

whether the trade mark should be registered; and the Controller shall inform the applicant of

any such observations.

(3) Where an application has been published in the Journal, any natural or legal person and

any group or body representing manufacturers, producers, suppliers of services, traders or

consumers may, at any time before the registration of the trade mark, make observations*

in writing to the Controller explaining on which grounds the trade mark should not be

registered; and the Controller shall inform the applicant of any such observations.†

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(4) A person who makes observations as mentioned in subsection (3) shall not thereby

become a party to the proceedings on the application.

(4) Persons and groups or bodies who make observations under subsection (3) shall not be a

party to the proceedings on the application.

Non-use as defence in opposition proceedings

43A. (1) In opposition proceedings pursuant to section 43(2), where at the filing date or date

of priority of the later trade mark, the 5 year period within which the earlier trade mark must

have been put to genuine use as provided for in section 16A had expired, at the request

of the applicant, the proprietor of the earlier trade mark who has given notice of opposition

shall furnish proof—

(a) that the earlier trade mark has been put to genuine use during the 5 year period

preceding the filing date or date of priority of the later trade mark, or

(b) that proper reasons for non-use existed.

(2) In the absence of proof referred to in subsection (1), the opposition shall be rejected.

(3) If the earlier trade mark has been used in relation to only part of the goods or services for

which it is registered, it shall, for the purpose of the examination of the opposition as

provided for in subsection (1), be deemed to be registered in respect of that part of the goods

or services only.

(4) Subsections (1), (2) and (3) shall also apply where the earlier trade mark is an European

Union trade mark and the genuine use of the European Union trade mark shall be determined

in accordance with Article 18 of the European Union trade mark regulation.*

Withdrawal, restriction or amendment of application.

44.—(1) An applicant may at any time by notice in writing withdraw his application or

restrict the goods or services covered by the application; and, if the application has been

published in the Journal, any withdrawal or restriction of the application shall also be

published in the Journal.

(2) Any such withdrawal as is mentioned in subsection (1) shall be irrevocable after the

expiry of three months from the date of notice of the withdrawal.

(3) In a case not falling within subsection (1), an application may be amended, at the request

of the applicant, so long as the amendment does not substantially affect the identity of the

trade mark or extend the goods or services covered by the application and, in particular, an

amendment may be made (subject to that qualification) to correct—

(a) the name or address of the applicant;

(b) errors of wording or of copying; or

(c) obvious mistakes.

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(4) Provision shall be made by rules for the publication of any amendment which affects the

representation of the trade mark, or the goods or services covered by the application, and for

the making of objections by any person claiming to be affected by it.

Registration.

45.—(1) Where an application has been accepted and—

(a) no notice of opposition has been given within the period referred to in section 43

(2), or

(b) all opposition proceedings have been withdrawn or decided in favour of the

applicant,

the Controller shall register the trade mark unless it appears to him, having regard to

matters coming to his notice since accepting the application, that it was accepted in

error.

(2) A trade mark shall not be registered unless any fee prescribed for the registration has been

paid within the prescribed period and, if the fee has not been so paid, the application shall be

deemed to be withdrawn.

(3) A trade mark when registered shall be registered as of the date of filing of the application

for registration; and that date shall be deemed for the purposes of this Act to be the date of

registration.

(4) On the registration of a trade mark the Controller shall publish the registration in the

Journal and issue to the applicant a certificate of registration.

(5) The registration procedure shall be regarded as completed on the date of publication

under subsection (4); and that date shall be entered in the register.

Registration: supplementary provisions.

46.—(1) Provision may be made by rules as to—

(a) the division of an application for the registration of a trade mark into several

applications, each having the same filing date as the original application;*

(a) the division of an application for the registration of a trade mark and for the

division of a registration of a trade mark into several applications or registrations,

each having the same filing date as the original application;†

(b) the merging of separate applications or registrations; and

(c) the registration of a series of trade marks in one registration.

(2) A “series of trade marks” means a number of trade marks which resemble each other as

to their material particulars and differ only in respect of matter of a non-distinctive character

which does not substantially affect the identity of the trade mark.

Duration, Renewal and Alteration of Registered Trade Mark

Duration of registration.

47.—(1) A trade mark shall be registered for a period of ten years from the date of

registration.

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(2) Registration may be renewed in accordance with section 48 for further periods of ten

years.

Renewal of registration.

48.—(1) Subject to payment of the prescribed renewal fee, the registration of a trade mark

may be renewed at the request of the proprietor.

(1A) Where the request is submitted or the fees paid in respect of only some

of the goods or services for which the trade mark is registered, registration shall

be renewed for those goods or services only.*

(2) Provision shall be made by rules for the Controller to inform the proprietor of a registered

trade mark, before the expiry of the registration, of the date of expiry and the manner in

which the registration may be renewed.

(3) Subject to subsection (4), a request for renewal must be made, and the prescribed renewal

fee paid, before the expiry of the registration.

(4) If subsection (3) is not complied with, a request for renewal may be made and the fee

paid within such further period (of not less than six months) as may be prescribed; in which

case the prescribed additional renewal fee must also be paid within that period.

(5) A term of renewal shall take effect from the expiry of the previous registration.

(6) If the registration is not renewed in accordance with the preceding provisions, the

Controller shall remove the trade mark from the register; but provision may be made by rules

for the restoration of the registration of a trade mark which has been removed from the

register, subject to such conditions (if any) as may be prescribed.

(7) The renewal, removal or restoration of the registration of a trade mark shall be published

in the Journal.

Alteration of registered trade mark.

49.—(1) The proprietor of a registered trade mark may apply in the prescribed manner to the

Controller for leave to add to or alter the trade mark in any manner which does not

substantially affect its identity; and the Controller may refuse leave or grant it on such terms

and subject to such limitations as the Controller thinks fit.

(2) In any case where it appears to the Controller expedient to do so, the Controller may

cause an application under subsection (1) to be advertised in the Journal.

(3) If, within the prescribed time from the date of the advertisement of an application under

subsection (2), any person gives notice to the Controller in the prescribed manner of

opposition to the application, the Controller shall, after hearing the parties if so required,

decide the matter.

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(4) Where leave is granted as mentioned in subsection (1) and the trade mark concerned, in

its altered form, has not already been advertised in an advertisement of the application under

subsection (2), the trade mark, in its altered form, shall be advertised in the Journal.

Surrender, Revocation and Invalidity

Surrender of registered trade mark.

50.—(1) A registered trade mark may be surrendered by the proprietor in respect of some or

all of the goods or services for which it is registered.

(2) Provision may be made by rules—

(a) as to the manner and effect of a surrender; and

(b) for protecting the interests of other persons having a right in the registered trade

mark.

Revocation of registration.

51.—(1) The registration of a trade mark may be revoked on any of the following grounds—

(a) that, within the period of five years following the date of publication of the

registration, the trade mark has not been put to genuine use in the State, by or with the

consent of the proprietor, in relation to the goods or services for which it is registered,

and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of five years, and

there are no proper reasons for non-use;

(c) that, in consequence of acts or inactivity of the proprietor, it has become the

common name in the trade for a product or service for which it is registered;

(d) that, in consequence of the use made of it by or with the consent of the proprietor

in relation to the goods or services for which it is registered, it is liable to mislead the

public, particularly as to the nature, quality or geographical origin of those goods or

services.

(2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in

elements which do not alter the distinctive character of the mark in the form in which it was *†registered, in the form in which it was registered, regardless of whether or not the trade

mark in the form as used is also registered in the name of the proprietor ‡and use in the State

includes affixing the trade mark to goods or to the packaging of goods in the State solely for

export purposes.

(3) The registration of a trade mark shall not be revoked on the ground mentioned in

paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is

commenced or resumed after the expiry of the five year period and before the application for

revocation is made; but, for this purpose, any such commencement or resumption of use

occurring after the expiry of the five year period and within the period of three months before

the making of the application shall be disregarded unless preparations for the commencement

or resumption began before the proprietor became aware that the application might be made.

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(4) An application for revocation may be made by any person, and may be made either to the

Controller or to the Court High Court*, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court

High Court, the application must be made to the Court High Court; and

(b) if in any other case the application is made to the Controller, he may at any stage

of the proceedings refer the application to the Court High Court.

(5) Where grounds for revocation exist in respect of only some of the goods or services for

which the trade mark is registered, revocation shall relate to those goods or services only.

(6) Where the registration of a trade mark is revoked to any extent, the rights of the

proprietor shall be deemed to have ceased to that extent as from—

(a) the date of the application for revocation; or

(b) if the Controller or the Court High Court† is satisfied that the grounds for

revocation existed at an earlier date, that date.

(7) Revocation of a trade mark shall be entered in the register and the Controller shall publish

the revocation of a trade mark in the Journal.

Grounds for invalidity of registration.

52.—(1) The registration of a trade mark may be declared invalid on the ground that the trade

mark was registered in breach of section 8 or any of the provisions referred to in that section;

but where a trade mark was registered in breach of subsection (1) (b), (c) or (d) of that

section, it shall not be declared invalid if, in consequence of the use which has been made of

it, it has after registration acquired a distinctive character it has before the date of

application for a declaration of invalidity, acquired a distinctive character in relation to the

goods or services for which it is registered.

(2) The registration of a trade mark may be declared invalid on the grounds—

(a) that there is an earlier trade mark in relation to which any of the conditions set out in

subsections (1) to (3) of section 10 obtains, or subsections (1) to (3A) of section 10 obtains, or”,

(b) that there is an earlier right in relation to which the condition set out in paragraph (a) or

(b) of subsection (4) paragraph (a), (b) or (c) of subsection (4) of that section is satisfied,

unless the proprietor of that earlier trade mark or earlier right has consented to the

registration.

(c) that the trade mark was registered in breach of section 8(4)(a) and section 9, or

(d) that the trade mark was registered in breach of section 10(5A),”‡

(2A) An application for a declaration of invalidity on the basis of an earlier trade mark shall

not succeed at the date of application for invalidation if it would not have been successful at

the filing date or the priority date of the later trade mark for any of the following reasons:

* Copyright and Other Intellectual Property Law Provisions Act 2019 † Copyright and Other Intellectual Property Law Provisions Act 2019 ‡ *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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(a) the earlier trade mark, liable to be declared invalid pursuant to section 8(1)(b), (c)

or (d), had not yet acquired a distinctive character as referred to in section 8(1);

(b) the application for a declaration of invalidity is based on section 10(2) and the

earlier trade mark had not become sufficiently distinctive to support a finding of

likelihood of

confusion within the meaning of section 10(2);

(c) the application for a declaration of invalidity is based on section 10(3) and (3A)

and the earlier trade mark had not yet acquired a reputation within the meaning of

section 10(3) and (3A).

(2B) An application for a declaration of invalidity may be filed on the basis of one or more

earlier rights, provided they all belong to the same proprietor.

(3) An application for a declaration of invalidity may be made by any person, and may be

made either to the Controller or to the Court High Court*, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court

High Court, the application must be made to the Court High Court; and

(b) if in any other case the application is made to the Controller, the Controller may at

any stage of the proceedings refer the application to the Court High Court.

(4) In the case of bad faith in the registration of a trade mark, the Controller may apply to the

Court High Court for a declaration of the invalidity of the registration.

(5) Where the grounds of invalidity exist in respect of only some of the goods or services for

which the trade mark is registered, the trade mark shall be declared invalid as regards those

goods or services only.

(6) Where the registration of a trade mark is declared invalid to any extent, the registration

shall to that extent be deemed never to have been made, provided that this shall not affect

transactions past and closed.

Non-use as defence in proceedings seeking a declaration of invalidity

52A. (1) In proceedings for a declaration of invalidity based on a registered trade mark with

an earlier filing date or priority date, if the proprietor of the later trade mark so requests, the

proprietor of the earlier trade mark shall furnish proof that-

(a) during the 5 year period preceding the date of the application for a declaration of

invalidity, the earlier trade mark has been put to genuine use, as provided for in

section 16A, in connection with the goods or services in respect of which it is

registered and which are cited as justification for the application, or

(b) there are proper reasons for non-use,†

provided that the registration process of the earlier trade mark has at the date of the

application for a declaration of invalidity been completed for not less than 5 years.

* Copyright and Other Intellectual Property Law Provisions Act 2019 † *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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(2) Where, at the filing date or date of priority of the later trade mark, the 5 year period

within which the earlier trade mark was to have been put to genuine use, as provided for in

section 16A, had expired, the proprietor of the earlier trade mark shall, in addition to

the proof required under subsection (1), furnish proof that the earlier trade mark was put to

genuine use during the 5 year period preceding the filing date or date of priority of the later

trade mark, or that proper reasons for non-use existed.

(3) In the absence of the proof referred to in subsections (1) and (2), an application for a

declaration of invalidity on the basis of an earlier trade mark shall be rejected.

(4) If the earlier trade mark has been used in accordance with section 16A in relation to only

part of the goods or services for which it is registered, it shall, for the purpose of the

examination of the application for a declaration of invalidity, be deemed to be registered in

respect of that part of the goods or services only.

(5) Subsections (1) to (4) of this section shall also apply where the earlier trade mark is a

European Union trade mark and genuine use of the European Union trade mark shall be

determined in accordance with Article 18 of the European Union trade mark regulation.*

Effect of acquiescence.

53.—(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced

for a continuous period of five years in the use of a registered trade mark in the State, while

being aware of that use, the proprietor shall no longer be entitled, on the basis of that earlier

trade mark or other right—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in

connection with which it has been so used,

unless the registration of the later trade mark was applied for in bad faith.

(2) Where subsection (1) applies, the proprietor of the later trade mark shall not be entitled to

oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier

right, notwithstanding that the earlier trade mark or right may no longer be invoked against

the proprietor's later trade mark.

Collective Marks

Collective marks.

54.—(1) A collective mark is a mark distinguishing the goods or services of members of the

association which is the proprietor of the mark from those of other undertakings.

(1A) Associations of manufacturers, producers, suppliers of services or traders, which, under

the terms of the law governing them, have the capacity in their own name to have rights and

obligations, to make contracts or accomplish other legal acts, and to sue and be sued, as well

as legal persons governed by public law, may apply for collective marks.†

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(2) The provisions of this Act apply to collective marks subject to the provisions of the First

Schedule .

Certification Marks

Certification marks.

55.—(1) A certification mark is a mark indicating that the goods or services in connection

with which it is used are certified by the proprietor of the mark in respect of origin, material,

mode of manufacture of goods or performance of services, quality, accuracy or other

characteristics.

(2) The provisions of this Act apply to certification marks subject to the provisions of the

Second Schedule.

PART III

Community Trade Marks and International Matters

Community Trade Marks

Meaning of “Community trade mark” and “Community Trade Mark Regulation”.

56.—In this Act—

(a) “Community trade mark” has the meaning given by Article 1 (1) of the

Community Trade Mark Regulation; and

(b) “the Community Trade Mark Regulation” means Council Regulation (EC) No.

40/94 of 20 December, 1993 on the Community trade mark.

Meaning of ‘European Union trade mark’, ‘European Union Trade Mark Regulation’ and

‘Directive’*

56. (1) In this Act—

(a) ‘European Union trade mark’ has the meaning given by Article 1 (1) of the European

Union trade mark regulation;

(b) ‘European Union trade mark regulation’ means regulation (EU) 2017/1001 of the

European Parliament and of the Council of 14 June 20173 on the European Union trade

mark (codification);

(c) ‘Directive’ means Directive (EU) 2015/2436 of the European Parliament and of the

Council of 16 December 20154 to approximate the laws of the Member States relating to

trade marks (Recast).

(2) A word or expression that is used in this Act and that is also used in the EU trade mark

regulation or the Directive shall have the same meaning in this Act as it has in the EU trade

mark regulation or the Directive.*

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Power to make provision in connection with Community Trade Mark Regulation.

57.—(1) The Minister may by regulations make such provision as he considers appropriate in

connection with the operation of the Community Trade Mark Regulation.

(2) Provision may, in particular, be made with respect to—

(a) the filing of applications for Community trade marks through the Patents Office;

(b) the procedures for determining a posteriori the invalidity, or liability to

revocation, of the registration of a trade mark from which a Community trade mark

claims seniority;

(c) the conversion of a Community trade mark or an application

for a Community trade mark into an application for registration under this Act; and

(d) the designation of Courts in the State having jurisdiction over proceedings arising

out of the Community Trade Mark Regulation.

(3) Without prejudice to the generality of subsection (1), provision may be made by

regulations under this section making in relation to the list of professional representatives

maintained in pursuance of Article 89 of the Community Trade Mark Regulation, and

persons on that list, provision corresponding to that made by, or capable of being made

under, sections 84 to 90 in relation to the register of trade mark agents and registered trade

mark agents.

(4) Section 24 (remedy for groundless threats of infringement proceedings) and Part VI

(offences) shall apply in relation to a Community trade mark as they apply in relation to a

registered trade mark.†

The Madrid Protocol: International Registration

The Madrid Protocol.

58.—In this Act—

the Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the

International Registration of Marks, adopted at Madrid on 27th June, 1989;

the International Bureau” has the meaning given by Article 2 (1) of that Protocol; and

international trade mark” means a trade mark which is entitled to protection in the State

under that Protocol.

Power to make provision giving effect to Madrid Protocol.

59.—(1) The Minister may by regulations make such provision as he considers appropriate

for giving effect in the State to the provisions of the Madrid Protocol.

(2) Provision may, in particular, be made with respect to—

(a) the filing of applications for international registrations through the Patents Office

as office of origin;

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(b) the procedures to be followed where the basic application or registration in the

State fails or ceases to be in force;

(c) the procedures to be followed where the Patents Office receives from the

International Bureau a request for extension of protection to the State;

(d) the effects of a successful request for extension of protection to the State;

(e) the transformation of an international registration or an application for an

international registration into a national application for registration;

(f) the communication of information to the International Bureau;

(g) the payment of fees and amounts prescribed in respect of applications for

international registrations, extensions of protection and renewals.

(3) Section 24 (remedy for groundless threats of infringement proceedings); and Part VI

(offences) shall apply in relation to an international trade mark as they apply in relation to a

registered trade mark.

The Paris Convention: Supplementary Provisions

The Paris Convention.

60.—(1) In this Act—

(a) “the Paris Convention” means the Paris Convention for the Protection of

Industrial Property of March 20th, 1883, as amended or supplemented by any

protocol to that Convention which is for the time being in force in the State;

and

(aa) “Agreement establishing the World Trade Organisation” means the

Agreement establishing the World Trade Organisation done at Marrakesh on

15 April 1994, as amended or supplemented by any protocol to that

Agreement which is for the time being in force in the State;**

(b) a “Convention country” means a country, other than the State, which is a

party to that Convention the Paris Convention or the Agreement establishing

the World Trade Organisation.

(2) The Minister may by order make such amendments of this Act and rules made under this

Act as appear to the Minister appropriate in consequence of any revision or amendment of

the Paris Convention or the Agreement establishing the World Trade Organisation after the

passing of this Act.

Protection of well-known trade marks: Article 6bis

61.—(1) References in this Act to a trade mark which is entitled to protection under the Paris

Convention or the Agreement establishing the World Trade Organisation as a well-known

trade mark are to a mark which is well known in the State as being the mark of—

(a) a national of a Convention country, or

(b) a person who is domiciled in, or has a real and effective industrial or commercial

establishment in, a Convention country,

whether or not that person carries on business, or has any goodwill, in the State; and

references to the proprietor of such a mark shall be construed accordingly.

* Patents Amendment Act 2006 (31/2006)

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(2) Subject to section 53 , the proprietor of a trade mark which is entitled to protection under

the Paris Convention or the Agreement establishing the World Trade Organisation* as a well-

known trade mark shall be entitled to restrain by injunction the use in the State of a trade

mark which, or the essential part of which, is identical or similar to the proprietor's mark, in

relation to identical or similar goods or services, where the use is likely to cause confusion.

(3) Nothing in subsection (2) shall affect the continuation of any bona fide use of a trade

mark begun before the commencement of this section.

National emblems &c. of Convention countries: Article 6ter

62.—(1) A trade mark which consists of or contains the flag of a Convention country shall

not be registered without the authorisation of the competent authorities of that country, unless

it appears to the Controller that use of the flag in the manner proposed is permitted without

such authorisation.

(2) A trade mark which consists of or contains the armorial bearings or any other state

emblem of a Convention country which is protected under the Paris Convention or the

Agreement establishing the World Trade Organisation shall not be registered without the

authorisation of the competent authorities of that country.

(3) A trade mark which consists of or contains an official sign or hallmark adopted by a

Convention country and indicating control and warranty shall not, where the sign or hallmark

is protected under the Paris Convention or the Agreement establishing the World Trade

Organisation, be registered in relation to goods or services of the same or a similar kind as

those in relation to which it indicates control and warranty, without the authorisation of the

competent authorities of the country concerned.

(4) The provisions of this section as to national flags and other state emblems and official

signs or hallmarks apply equally to anything which, from a heraldic point of view, imitates

any such flag or other emblem, sign or hallmark.

(5) Nothing in this section prevents the registration of a trade mark on the application of a

national of a country who is authorised to make use of a state emblem or official sign or

hallmark of that country, notwithstanding that it is similar to that of another country.

(6) Where, by virtue of this section, the authorisation of the competent authorities of a

Convention country is or would be required for the registration of a trade mark, those

authorities shall be entitled to restrain by injunction any use of the mark in the State without

their authorisation.

Emblems &c. of certain international organisations: Article 6ter.

63.—(1) This section applies to—

(a) the armorial bearings, flags or other emblems, and

(b) the abbreviations and names,

of international intergovernmental organisations of which one or more Convention

countries are members.

(2) A trade mark which consists of or contains any such emblem, abbreviation or name which

is protected under the Paris Convention or the Agreement establishing the World Trade

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Organisation* shall not be registered without the authorisation of the international

organisation concerned, unless it appears to the Controller that the use of the emblem,

abbreviation or name in the manner proposed—

(a) is not such as to suggest to the public that a connection exists between the

organisation and the trade mark; or

(b) is not likely to mislead the public as to the existence of a connection between the

user and the organisation.

(3) The provisions of this section as to emblems of an international organisation apply

equally to anything which, from a heraldic point of view, imitates any such emblem.

(4) Where, by virtue of this section, the authorisation of an international organisation is or

would be required for the registration of a trade mark, that organisation shall be entitled to

restrain by injunction any use of the mark in the State without its authorisation.

(5) Nothing in this section affects the right of a person whose bona fide use of the trade mark

in question began before 9th June, 1967 (when the relevant provisions of the Paris

Convention entered into force in relation to the State).

Notification under Article 6ter of the Convention.

64.—(1) For the purposes of section 62 state emblems of a Convention country (other than

the national flag) and official signs or hallmarks shall be regarded as protected under the

Paris Convention only if, or to the extent that—

(a) the country in question has notified the State in accordance with Article 6ter (3) of

the Convention that it desires to protect the emblem, sign or hallmark;

(b) the notification remains in force; and

(c) the State has not objected to it in accordance with Article 6ter (4) or any such

objection has been withdrawn.

(2) For the purposes of section 63 , the emblems, abbreviations and names of an international

organisation shall be regarded as protected under the Paris Convention only if, or to the

extent that—

(a) the organisation in question has notified the State in accordance with Article 6ter

(3) of the Convention that it desires to protect that emblem, abbreviation or name;

(b) the notification remains in force; and

(c) the State has not objected to it in accordance with Article 6ter (4) or any such

objection has been withdrawn.

(3) Notification under Article 6ter (3) of the Paris Convention shall have effect only in

relation to applications for registration made more than two months after the receipt of the

notification.

(4) The Controller shall keep and make available for public inspection by any person, at all

reasonable hours and free of charge, a list of—

(a) the state emblems and official signs or hallmarks, and

* Patents Amendment Act 2006 (31/2006)

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(b) the emblems, abbreviations and names of international organisations,

which are for the time being protected under the Paris Convention by virtue of notification

under Article 6ter (3).

(5) A reference in this section to Article 6ter of the Paris Convention shall be read as a

reference to that Article as applied by the Agreement establishing the World Trade

Organisation*.

Acts of agent or representative: Article 6septies.

65.—(1) The following provisions apply where an application for registration of a trade mark

is made by a person who is an agent or representative of a person who is the proprietor of the

mark in a Convention country and the application is made without the proprietor's

authorisation.

(2) Where the proprietor opposes the application, registration shall be refused.

(3) Where the application (not being so opposed) is granted, the proprietor may—

(a) apply for a declaration of the invalidity of the registration; or

(b) apply for the rectification of the register so as to substitute the proprietor's name

as the proprietor of the registered trade mark.

(4) The proprietor may (notwithstanding the rights conferred by this Act in relation to a

registered trade mark) apply to the Court High Court† to restrain by injunction any use of the

trade mark in the State which is not authorised by the proprietor.

(5) Subsections (2), (3) and (4) shall not apply if, or to the extent that, the agent or

representative justifies his action.

(6) An application under subsection (3) (a) or (b) must be made within three years of the

proprietor becoming aware of the registration; and no injunction shall be granted under

subsection (4) in respect of a use in which the proprietor has acquiesced for a continuous

period of three years or more.

PART IV

Administrative Provisions

The Register

The register.

* Patents Amendment Act 2006 (31/2006)

† Copyright and Other Intellectual Property Law Provisions Act 2019

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66.—(1) The Controller shall keep a Register of Trade Marks; and references in this Act to

registration (in particular, in the expression “registered trade mark”) are, unless the context

otherwise requires, to registration in the register.

(2) There shall be entered in the register in accordance with this Act—

(a) registered trade marks;

(b) particulars of registrable transactions affecting a registered trade mark; and

(c) such other matters as may be prescribed.

(3) The register shall be kept in such form as may be prescribed, and provision shall in

particular be made for—

(a) public inspection of the register; and

(b) the supply of certified or uncertified copies of, or extracts from, entries in the

register.

Rectification or correction of the register.

67.—(1) Any person having a sufficient interest may apply for the rectification of an error or

omission in the register:

Provided that an application for rectification may not be made in respect of a matter affecting

the validity of the registration of a trade mark.

(2) An application for rectification may be made either to the Controller or to the Court High

Court*, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court

High Court, the application must be made to the Court High Court; and

(b) if in any other case the application is made to the Controller, he may at any stage

of the proceedings refer the application to the Court High Court.

(3) Unless the Controller or the Court High Court otherwise directs, the effect of rectification

of the register is that the error or omission in question shall be deemed never to have been

made.

(4) The Controller may (of his own motion) correct any error made by him in any entry in the

Register but, before doing so, he shall give notice of the proposed correction to any person

who appears to him to be concerned.

(5) The Controller may, on request made in the prescribed manner by the proprietor of a

registered trade mark—

(a) enter any change in the proprietor's name or address as recorded in the register;

(b) amend the specification of the goods in respect of which a trade mark is

registered, provided that the amendment does not in any way extend the rights given

by the existing registration of the trade mark; or

(c) enter a disclaimer or memorandum relating to a trade mark which does not in any

way extend the rights given by the existing registration of the trade mark.

(6) The Controller may, on request made in the prescribed manner by the licensee of a

registered trade mark, enter any change in the licensee's name or address as recorded in the

register.

* Copyright and Other Intellectual Property Law Provisions Act 2019

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(7) The Controller may remove from the register matter appearing to him to have ceased to

have effect.

Adaptation of entries to new classification.

68.—(1) Provision may be made by rules authorising the Controller to do such things as the

Controller considers necessary to implement any amended or substituted classification of

goods or services for the purposes of the registration of trade marks.

(2) Provision may, in particular, be made for the amendment of existing entries on the

register so as to accord with the new classification.

(3) Any such power of amendment shall not be exercised so as to extend the rights conferred

by the registration, except where it appears to the Controller that compliance with this

requirement would involve undue complexity and that any extension would not be substantial

and would not adversely affect the rights of any person.

(4) The rules may empower the Controller—

(a) to require the proprietor of a registered trade mark, within such time as may be

prescribed, to file a proposal for amendment of the register; and

(b) to cancel or refuse to renew the registration of the trade mark in the event of the

proprietor failing to do so.

(5) A proposal under subsection (4) (a) shall be advertised, and may be opposed, in such

manner as may be prescribed.

Powers and Duties of the Controller

Power to require use of forms.

69.—(1) The Controller may require the use of such forms as he may direct for any purpose

relating to the registration of a trade mark or any other proceedings before the Controller

under this Act.

(2) The forms, and any directions of the Controller with respect to their use, shall be

published in the Journal.

Information about applications and registered trade marks.

70.—(1) After publication of an application for registration of a trade mark, the Controller

shall on request provide a person with such information as may be prescribed and permit him

to inspect such documents as may be prescribed relating to the application or to any

registered trade mark resulting from it.

(2) A request for the purposes of subsection (1) must be made in the prescribed manner and

be accompanied by the appropriate fee (if any).

(3) Before publication of an application for registration of a trade mark, documents or

information constituting or relating to the application shall not be published by the Controller

or communicated by the Controller to any person except—

(a) in such classes of case and to such extent as may be prescribed; or

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(b) with the consent of the applicant;

but subject to the following provisions of this section.

(4) Where a person has been notified—

(a) that an application for registration of a trade mark has been made, and

(b) that the applicant will if the application is granted bring proceedings against that

person in respect of acts done after publication of the application,

that person may make a request under subsection (1) notwithstanding that the application has

not been published and that subsection shall apply accordingly.

Exercise of discretionary powers by Controller.

71.—Where any discretionary power is, by or under this Act, given to the Controller, that

power shall not be exercised adversely to any applicant for or proprietor of a trade mark or to

any party in any proceedings before the Controller, without that applicant, proprietor or party

being given an opportunity of being heard as regards the exercise of that power.

Costs and security for costs.

72.—(1) The Controller may, in any proceeding before him under this Act, order the

payment to any party of such costs (if any) as the Controller may consider reasonable and

direct how and by what party they are to be paid; and any such order may, by leave of the

Court High Court*, be enforced in the same manner as a judgment or order of the Court High

Court to the same effect.

(2) Where, under this Act, a party who neither resides nor carries on business in the State or

in any other state which may be prescribed is a party to any proceedings before the

Controller, the Controller or, in the case of any appeal, the Court High Court, may require

that party to give security for the costs of the proceedings.

(3) If a requirement under subsection (2) is not complied with, the Controller or the Court

High Court, as may be appropriate, may treat the proceedings as abandoned.

Evidence before the Controller.

73.—In subsection (1) of section 92 of the Patents Act, 1992 (which relates to evidence in

proceedings before the Controller under that Act or any other enactment) after the words

“before the Controller” there shall be inserted “(including proceedings under the Trade

Marks Act, 1996)”.

Exclusion of liability in respect of official acts.

74.—(1) The Controller shall not be taken to warrant the validity of the registration of a trade

mark under this Act or under any treaty, convention, arrangement or engagement to which

the State is a party.

(2) The Controller shall not have any liability by reason of, or in connection with, any

examination required or authorised by this Act, or any such treaty, convention, arrangement

or engagement, or any report or other proceedings consequent on such examination.

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(3) No proceedings shall lie against an officer of the Controller in respect of any matter for

which, by virtue of this section, the Controller is not liable.

Content of Controller's annual report.

75.—In the report on the execution of the provisions of this Act included in the Controller's

annual report, prepared in accordance with section 103 of the Patents Act, 1992 , there shall

be included a report on the discharge of the Controller's functions in relation to the Madrid

Protocol.

Legal Proceedings and Appeals

Registration to be prima facie evidence of validity.

76.—In all legal proceedings relating to a registered trade mark (including proceedings for

rectification of the register) the registration of a person as proprietor of a trade mark shall be

prima facie evidence of the validity of the original registration and of any subsequent

assignment or other transmission of it.

Certificate of validity of contested registration.

77.—(1) If, in proceedings before the Court High Court*, the validity of the registration of a

trade mark is contested and it is found by the Court High Court that the trade mark is validly

registered, the Court High Court may give a certificate to that effect.

(2) If the Court High Court gives such a certificate and in subsequent proceedings—

(a) the validity of the registration is again questioned, and

(b) the proprietor obtains a final order or judgment in the proprietor's favour,

the proprietor shall be entitled to his costs as between solicitor and client unless the Court

High Court otherwise directs.

(3) Subsection (2) does not extend to the costs of an appeal in any proceedings.

Controller's appearance in court proceedings.

78.—(1) In any proceedings before the Court High Court (including an appeal) which

involve or relate to—

(a) the revocation of the registration of a trade mark, or

(b) a declaration of the invalidity of the registration of a trade mark, or

(c) the rectification of the register, or

(d) any other matter in which the relief sought would affect the register,

the Controller shall be entitled to appear and be heard, and shall appear if so directed by the

Court High Court.

(2) Unless otherwise directed by the Court High Court, in any proceedings before the Court

High Court the Controller may instead of appearing submit to the Court High Court a

statement in writing signed by the Controller, giving particulars of—

(a) any proceedings before the Controller in relation to the matter in issue;

(b) the grounds of any decision given by the Controller affecting it;

(c) the practice of the Patents Office in like cases; or

* Copyright and Other Intellectual Property Law Provisions Act 2019

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(d) such matters relevant to the issues and within the Controller's knowledge as the

Controller thinks fit;

and the statement shall be deemed to form part of the evidence in the proceedings.

79.—(1) Unless otherwise provided by rules of court, within the period of three months from

the date of a decision of the Controller under this Act, an appeal shall lie from the decision to

the Court.

(1) (a) Save as otherwise provided by this Act and subject to paragraph (b), except by leave

of the Court High Court, an appeal shall lie to the Court High Court from a decision of the

Controller under this Act within three months from the date of the decision.

(b) Where a written statement of the grounds of the decision of the Controller, in the exercise

of his discretionary power, has been requested in the prescribed manner and within the

prescribed period by a party to the proceedings, the period of three months shall begin on the

date on which the written statement is furnished to the party requesting it.*

(2) On an appeal under this section—

(a) the Controller shall be entitled to appear and be heard, and shall appear if so

directed by the Court High Court†: and

(b) the Court High Court may exercise any power which could have been exercised

by the Controller in the proceedings from which the appeal is brought.

(3) By leave of the Court High Court, an appeal from a decision of the Court High Court

under this section shall lie to the Supreme Court on a specified point of law.

No award of costs to or against the Controller.

80.—In any proceedings before the Courts any court under this Act, the Controller shall not

be awarded or be ordered to pay costs.

Rules and Fees

Power of Minister to make rules.

81.—(1) The Minister may make rules—

(a) for the purposes of any provision of this Act authorising the making of rules with

respect to any matter; and

(b) for prescribing anything authorised or required by any provision of this Act to be

prescribed,

and generally for regulating practice and procedure under this Act.

(2) Without prejudice to the generality of subsection (1), provision may, in particular, be

made by rules under this section—

(a) as to the manner of filing of applications and other documents;

(b) requiring and regulating the translation of documents and the filing and

authentication of any translation;

(c) as to the service of documents;

(d) authorising the rectification of irregularities of procedure; and

* Patents Amendment Act 2006 (31/2006)

† Copyright and Other Intellectual Property Law Provisions Act 2019

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(e) prescribing time limits for anything required to be done in connection with any

proceeding under this Act, and providing for the extension of any such limit (whether

or not it has already expired).

Fees.

82.—(1) There shall be charged by the Controller and paid in respect of applications and

registration and other matters under this Act, such fees as may from time to time be

prescribed by the Minister with the sanction of the Minister for Finance.

(2) Provision may be made by rules to enable the payment of a single fee in respect of two or

more matters.

(3) All fees charged by the Controller under this section shall be collected and accounted for

in such manner as shall be determined by the Minister with the consent of the Minister for

Finance.

(4) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under

this section.

PART V

Trade Mark Agents

Authorised agent may act.

83.—(1) Subject to rules made under section 90 , whenever, under this Act, any act has to be

done by or to any person in connection with the registration of a trade mark or any procedure

relating to a registered trade mark, the act may be done by or to an agent—

(a) who is authorised by that person orally or in writing; and

(b) who is a registered trade mark agent.

(b) who is—

(i) a registered trade mark agent, or

(ii) a person referred to in subsection (4A) of section 85 and

the relevant provisions of that section with regard to the person’s acting as

agent in the foregoing circumstances are complied with.”, and*

(2) A person duly authorised by another person under subsection (1) to act as his registered

trade mark agent may (subject to any provision to the contrary in any agreement between the

agent and that person), on giving notice to the Controller and the other person, cease to act as

registered trade mark agent for the other person.

(2) A person referred to in paragraph (b)(i) or (ii) of subsection (1) who is duly authorised by

another person under that section to act as his agent may (subject to any provision to the

* S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

Designs Regulations 2007

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016

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contrary in any agreement between the person so authorised and the other person), on giving

notice to the Controller and the other person, cease to act as agent for the other person*.

Register of Trade Mark Agents.

84.—The Register which, immediately before the commencement of this section, was known

as the Register of Trade Mark Agents shall continue to be known as such and to be

maintained by the Controller; and in this Part—

(a) “the Register” means the Register of Trade Mark Agents;

(b) “registered trade mark agent” means a person whose name is entered in the

Register; and

(c) “registration”, in relation to a person who is or has been a registered trade mark

agent, means the entry of that person's name in the Register.

Business to be carried on only by registered trade mark agents &c.

85.—(1) Subject to the provisions of this section, an individual who is not a registered trade

mark agent shall not—

(a) carry on a business (otherwise than in partnership) under any name or other

description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold himself out, or permit

himself to be described or held out, as a registered trade mark agent.†

(1) Subject to the provisions of the section-

(a) a person established in the State shall not carry on the business of acting as a

trade mark agent in the State unless that person is for the time being registered in the

Register;

(b) a person acting for gain shall not practise, describe himself or hold himself out as

a registered trade mark agent or trade mark agent, or permit himself to be so

described or held out, unless that person is for the time being registered in the

Register.

(2) A partnership shall not—

(a) carry on a business under any name or other description which contains the words

registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold itself out or permit itself to

be described or held out, as a firm of registered trade mark agents,

unless all the partners are registered trade mark agents or the partnership satisfies such

conditions as may be prescribed for the purposes of this section.

(3) A body corporate shall not—

(a) carry on a business (otherwise than in partnership) under any name or other

description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold itself out, or permit itself to

be described or held out, as a registered trade mark agent,

† *S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016

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unless all the directors of the body corporate and any manager who is not also a director are

registered trade mark agents or the body satisfies such conditions as may be prescribed for

the purposes of this section.

(4) With a view to the fulfilment by the Government on behalf of the State of any

international agreement to which the State is a party, the Minister may permit any person

who is not a registered trade mark agent but who is a citizen of a state which is also a party to

that international agreement, upon application made by that person, to act on behalf of others

in relation to trade marks subject to any conditions that the Minister considers appropriate.

(4A) Notwithstanding subsections (1) to (3) but subject to subsections (4B) to (4E), a person

established in a Member State of the European Community (other than the State) and

qualified under the law of that state to act as a trade mark agent in that state may carry on the

business of acting as a trade mark agent for others in connection with the registration of a

trade mark or any procedure relating to a registered trade mark.

(4A) Notwithstanding subsection (1) but subject to subsections (4B) to (4E), a person

established in another EEA state and qualified under the law of that state to act as a trade

mark agent in that state may carry on the business of acting as a trade mark agent for others

in connection with the registration of a trade mark or any procedure relating to a registered

trade mark

(4B) On or before the first occasion on which a person acts, in reliance on subsection (4A),

on behalf of another before the Controller in connection with the registration of a trade mark

or any procedure relating to a registered trade mark, the person shall provide to the Controller

such evidence as may be prescribed relating to—

(a) the person’s being established in another Member State EEA state

(b) the person’s being qualified under the law of that state to act as a trade mark agent

in that state, and

(c) whichever of the following is appropriate—

(i) the person’s nationality, or

(ii) the person’s falling within paragraph (b) of the definition of ‘person’ in

subsection (4F).*

(4C) In acting, in reliance on subsection (4A), on behalf of another in connection with the

registration of a trade mark or any procedure relating to a registered trade mark, the person †shall use the applicable professional title (if any) but its use in the State shall be subject to

the following requirements—‡

(a) the title is to be expressed in the official language or one of the official languages

of the Member State EEA state referred to in subsection (4A), and

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 *

S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

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(b) in a case where the language in which the title is expressed is also an official

language of the State, the use of the title is not such as is likely to be understood as

indicating that the person is a trade mark agent registered under this Act.

(4D) It shall be sufficient compliance with subsection (4C)(b) if the use of the title concerned

is accompanied by an indication of the Member State EEA state in which the person

concerned is established as a trade mark agent.

(4E) If there is no applicable professional title, then the person, in acting as mentioned in

subsection (4C), shall indicate that the person possesses the applicable qualifications and

those qualifications shall be expressed in the official language or one of the official

languages of the Member State EEA state referred to in subsection (4A).

(4F) In this section—

‘applicable professional title’, in relation to a person, means the professional title that, by

virtue of the person’s being qualified to act as a trade mark agent in the Member State EEA

state referred to in subsection (4A), the person is entitled to use in that state;

‘applicable qualifications’, in relation to a person, means the qualifications that the person

must possess, under the law of the Member State EEA state referred to in subsection (4A) so

as to be qualified to act as a trade mark agent in that state;

‘person’ means—

(a) in the case of an individual, a national of a Member State of the European

Community, an EEA state and

(b) in the case of a person which is not an individual, a company or firm (within the

meaning of Article 48 of the Treaty establishing the European Community) formed in

accordance with the law of a Member State of the European Community and having its

registered office, central administration or principal place of business within the European

Community*. an EEA state and having its registered office, central administration or

principal place of business within an EEA state.

(5) The legal personal representative of a deceased registered trade mark agent may carry on

the business or practice of the deceased agent for a period not exceeding three years from the

agent's death, or for such further period (if any) as the Court High Court† allows if the

personal representative—

(a) is authorised by the Court High Court to manage the business or practice; or

(b) employs another person who is so authorised to manage the business or practice

on behalf of the personal representative.

(6) Any person who contravenes any provision of this section shall be liable on summary

conviction to a fine not exceeding £500 class D fine in the case of a first offence and, in the

* S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

Designs) Regulations 2007

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 *

Copyright and Other Intellectual Property Law Provisions Act 2019

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case of a second or subsequent offence, £1,000 a class C fine; and, notwithstanding section

10 (4) of the Petty Sessions (Ireland) Act, 1851, proceedings for an offence under this section

may be commenced at any time within twelve months from the date of the offence.

(7) Nothing in this Act shall be construed as prohibiting solicitors or barristers from taking

such part in proceedings under this Act as has heretofore been taken by solicitors or barristers

in connection with a trade mark or any procedure relating to a trade mark or the registration

thereof.

(8) A registered trade mark agent shall not be guilty of an offence under section 58 of the

Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by

persons not legally qualified), by reason only of the preparation by the agent of—

(a) a deed assigning the property in a trade mark application or trade mark; or

(b) any document (not being a deed) for use in proceedings under this Act before the

Controller or the Court appropriate court.

(9) No offence is committed under any enactment restricting the use of certain expressions in

reference to any person not qualified to act as a solicitor by use of the term “Community

Trade Mark Attorney” “European Union or EEA Trade Mark Attorney”*† in reference to a

Registered Trade Mark Agent.

Entitlement to be registered as trade mark agent.

86.—(1) Any person who—

(a) resides in the State or in such other state as may be prescribed,

(b) has a place of business in the State,

(a) resides in the European Community,

(b) has a place of business in the European Community‡,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be a registered trade mark agent and a partnership shall be so eligible if

every partner is registered in accordance with the provisions of this section; and, on

application in the prescribed form and manner and on payment of the prescribed fee, a person

or partnership so eligible shall be registered.

(a) resides in the State or in an EEA state,

(b) has a place of business in the State or in an EEA state,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be a registered trade mark agent and a person so eligible shall, on

application in the prescribed form and manner and on payment of the prescribed fee, be so

registered.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 † *S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016

Copyright and Other Intellectual Property Law Provisions Act 2019

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(2) Persons and partnerships whose names were entered in the Register under the Act of 1963

immediately before the commencement of this Act shall continue to be registered trade mark

agents.*

A person or partnership whose name was entered in the Register of Trade Mark Agents

immediately before the commencement of these Regulations shall continue to be registered

in the Register of Trade Mark Agents.*

Removal from Register.

87.—The Controller may, upon the application of any person who is a registered trade mark

agent, remove that person's name from the Register.

Suspension and erasure of registration of trade mark agent.

88.—(1) Where, in the opinion of the Controller, a person who is a registered trade mark

agent ceases to be eligible to be registered or has been guilty of conduct disgraceful to that

person in the capacity of a registered trade mark agent, the Controller may, after giving that

person an opportunity to be heard, decide that the name of that person should be erased from

the Register or that, during a period of specified duration, that person's registration should not

have effect.

(2) On making a decision under subsection (1), the Controller shall forthwith send by post to

the person to whom the decision relates (in this section referred to as “the person in default”),

at that person's address as stated in the Register, a notice in writing stating the decision, the

date thereof and the reason therefor.

(3) On giving notice to the Controller in the prescribed manner, the person in default may,

within the period of 21 days beginning on the date of the decision in question, apply to the

Court High Court† for cancellation of the decision; and, if that person so applies, the Court

High Court, on hearing the application, may either—

(a) cancel the decision, or

(b) declare that it was proper for the Controller to make a decision under subsection

(1) in relation to the person in default and either (as the Court High Court may

consider proper)—

(i) direct the Controller to erase the name of the person in default from the

Register; or

(ii) direct that, during a specified period (beginning not earlier than 7 days

after the decision of the Court High Court), the registration of the person in

default shall not have effect.

(4) If at any time the Controller satisfies the Court High Court‡ that the person in default has

delayed unduly in proceeding with an application under subsection (3), the Court High Court

shall, unless it sees good reason to the contrary, declare that it was proper for the Controller

to make a decision under subsection (1) in relation to the person in default and either (as the

Court High Court may consider proper)—

* *S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 * Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

(a) direct the Controller to erase the name of the person in default from the Register;

or

(b) direct that, during a specified period (beginning not earlier than 7 days after the

decision of the Court High Court), the registration of the person in default shall not

have effect.

(5) Where the person in default does not, within the period of 21 days beginning on the date

of the decision in question, apply to the Court High Court* for cancellation of the decision,

the Controller may apply exparte to the Court High Court for confirmation of the decision;

and, if the Controller so applies, the Court High Court on the hearing of the application shall,

unless it sees good reason to the contrary, declare accordingly and either (as the Court High

Court may consider proper)—

(a) direct the Controller to erase the name of the person in default from the Register;

or

(b) direct that, during a specified period (beginning not earlier than 7 days after the

decision of the Court High Court), the registration of the person in default shall not

have effect.

(6) The decision of the Court High Court on an application under subsection (3) or

subsection (5) shall be final, save that, by leave of the Court High Court or the Supreme

Court, an appeal by the Controller or the person in default from the decision shall lie to the

Supreme Court on a specified question of law.

Notice of erasure or suspension: subsequent restoration.

89.—(1) Upon the erasure of the name of a person from the Register the Controller shall

forthwith send by pre-paid post to that person, at that person's address as stated in the

Register, notice in writing of the erasure.

(2) Where a decision is made under section 88 that, during a specified period, a person's

registration shall not have effect, the Controller shall, before the commencement of that

period, send by pre-paid post to that person, at that person's address as stated in the Register,

notice in writing of the decision.

(3) The name of any person which has been erased from the Register may at any time be

restored to the Register by direction of the Controller but not otherwise; and, when a person's

name is so restored to the Register, the Controller may attach to the restoration such

conditions (including the payment of a fee not exceeding the fee which would be payable by

the person for registration if that person was being registered for the first time) as the

Controller thinks fit.

(4) Where a person's registration has ceased to have effect under section 88 for a specified

period, the Controller may, if he so thinks fit, on application made to him by that person,

terminate the suspension.

Rules relating to trade mark agents.

90.—(1) The Minister may make rules for the management of the Register and may, by those

rules, prescribe any matter or thing referred to in this section or section 85 and, in particular,

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 * Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

may so prescribe the educational and professional qualifications and the conditions

(including conditions relating to nationality or citizenship) for eligibility for registration and

the maximum fees which may be charged by any person who is registered for such services

in connection with trade marks as may be specified in the rules.*

(1) The Minister may make rules for the management of the Register and may by

such rules prescribe any matter or thing referred to in this section, section 86 or section 88,

and in particular may so prescribe—

(a) the educational and professional qualifications and the conditions (including conditions

relating to nationality or citizenship), which must be satisfied for eligibility for registration

in the Register;

(b) the conditions which must be satisfied by a partnership, body corporate or unincorporated

body of persons for eligibility for registration in the Register, including conditions relating†

to the following:

(i) evidence of establishment as a partnership, body corporate or unincorporated body;

(ii) evidence that a trade mark agent established in an EEA state (other than the State) is

acting as a trade mark agent in accordance with the law of that state;

(iii) evidence that the partnership, body corporate or unincorporated body is performing the

services of a trade mark agent in the State;‡

(c) the maximum fees which may be charged by any person registered in the Register for

such services in connection with the obtaining of trade marks as may be specified in such

rules.

(2) Rules under subsection (1) may authorise the Controller to refuse to recognise as agent in

respect of any business under this Act any person who does not satisfy the requirements of

section 85 .

(3) Rules under this section may authorise the Controller to refuse to recognise as agent in

respect of any business under this Act a company or firm of which any director, manager or

partner (as the case may be) is an individual whom the Controller could refuse to recognise

as an agent.

Privileged communications.

91.—(1) This section applies to communications in respect of any matter relating to the

protection of a trade mark or in respect of any matter involving passing off.

(2) Any communication to which this section applies—

(a) between a person and his registered agent, or

(b) for the purposes of obtaining or in response to a request for information which a

person is seeking for the purpose of instructing his registered agent,

is privileged from disclosure in legal proceedings in the State in the same way as a

communication between a person and his solicitor or, as the case may be, a communication

† S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 † S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

Designs) Regulations 2007

Unofficial consolidated version

for the purpose of obtaining or in response to a request for information which a person seeks

for the purpose of instructing his solicitor.

(3) In subsection (2) registered agent” means—*

(a) a registered trade mark agent;

(b) a partnership entitled to describe itself as a firm of registered trade mark agents; or

(c) a body corporate entitled to describe itself as a registered trade mark agent.

(3) In this section ‘registered agent’ means—

(a) a registered trade mark agent;

(b) a partnership entitled to describe itself as a firm of registered trade mark agents;

(c) a body corporate entitled to describe itself as a registered trade mark agent; or

(d) a person to whom section 85(4A) applies.*

PART VI

Offences

Fraudulent application or use of trade mark in relation to goods.

92.—(1) Subject to the provisions of subsection (3), it shall be an offence for any person—

(a) to apply a mark identical to or nearly resembling a registered trade mark to goods

or to material used or intended to be used for labelling, packaging or advertising

goods,

(b) to sell, let for hire, offer or expose for sale or hire or distribute—

(i) goods bearing such a mark, or

(ii) material bearing such a mark which is used or intended to be used for

labelling, packaging or advertising goods,

(c) to use material bearing such a mark in the course of a business for labelling,

packaging or advertising goods, or

(d) to possess in the course of a business goods or material bearing such a mark with

a view to doing any of the things mentioned in paragraph (a) to (c),

when that person is not entitled to use the mark in relation to the goods in question or

authorised by a person who is so entitled.

(2) Subject to the provisions of subsection (3), it shall be an offence for any person to possess

in the course of a business goods or material bearing a mark identical to or nearly resembling

a registered trade mark with a view to enabling or assisting another person to do any of the

things mentioned in subsection (1) (a), (b) or (c), knowing or having reason to believe that

the other person is not entitled to use the mark in relation to the goods in question or

authorised by a person who is so entitled.

(3) Any person who contravenes the provisions of subsection (1) or (2) shall be guilty of an

offence if, but only if that person acts with a view to gain, for himself or another, or with

intent to cause a loss to another and it shall be a defence for a person charged with an offence

* S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

Designs) Regulations 2007

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under subsection (1) to show that he believed, on reasonable grounds, that he was entitled to

use the trade mark in relation to the goods in question.

(4) A person who commits an offence under this section shall be liable—

(a) on summary conviction to imprisonment for a term not exceeding six months or to

a fine not exceeding £1,000 class C fine*, or to both;

(e) on conviction on indictment to imprisonment for a term not exceeding five years or to

a fine not exceeding £100,000 €130,000, or to both.

Falsification of register, &c.

93.—(1) It shall be an offence for a person to make, or cause to be made, an entry in the

register which that person knows or has reason to believe to be false.

(2) It shall be an offence for a person—

(a) to make or cause to be made anything falsely purporting to be a copy of an entry

in the register, or

(b) to produce or tender or cause to be produced or tendered in evidence any such

thing,

knowing or having reason to believe that it is false.

(3) A person who commits an offence under this section shall be liable—

(a) on summary conviction, to imprisonment for a term not exceeding six months or

to a fine not exceeding £1,000 class C fine†, or to both,

(b) on conviction on indictment, to imprisonment for a term not exceeding two years

or to a fine not exceeding £200,000 €255,000, or to both.

Falsely representing trade mark as registered.

94.—(1) It shall be an offence for a person—

(a) falsely to represent that a mark is a registered trade mark, or

(b) to make a false representation as to the goods or services for which a trade mark is

registered,

knowing or having reason to believe that the representation is false.

(2) For the purposes of this section, the use in the State in relation to a trade mark—

(a) of the word “registered”, or

(b) of any other word or symbol importing a reference (express or implied) to

registration”,

shall be deemed to be a representation as to registration under this Act unless it is shown

that the reference is to registration elsewhere than in the State and that the trade mark is in

fact so registered for the goods or services in question.

(3) A person guilty of an offence under this section shall be liable on summary conviction to

a fine not exceeding £1,000 class C fine and, in the case of a continuing offence, to a further

fine not exceeding £100 class E fine, for every day on which the offence continues.

Offences committed by partnerships and bodies corporate.

† Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

95.—(1) Without prejudice to any liability of a partner under subsection (3), proceedings for

an offence under this Act alleged to have been committed by a partnership shall be brought

against the partnership in the name of the firm and not in that of the partners.

(2) A fine imposed on a partnership on its conviction in proceedings brought in accordance

with subsection (1) shall be paid out of the assets of the partnership.

(3) Where a partnership is guilty of an offence under this Act, every partner, other than a

partner who is proved to have been ignorant of or to have attempted to prevent the

commission of the offence, shall also be guilty of the offence and liable to be proceeded

against and punished accordingly.

(4) Where an offence under this Act which is committed by a body corporate is proved to

have been committed with the consent or connivance of, or to be attributable to any neglect

on the part of, any person who, when the offence was committed, was a director, manager,

secretary or other similar officer of the body corporate or a person who was purporting to act

in any such capacity, that person (as well as the body corporate) shall be guilty of an offence

and liable to be proceeded against and punished as if guilty of the offence committed by the

body corporate.

PART VII

Miscellaneous and General

Jurisdiction of the Circuit Court.

96.—Without prejudice to the powers conferred by this Act upon the Court, proceedings for

an order under section 20 or section 23 may be brought in the Circuit Court in the county in

which the infringing goods, material or articles are situated or in the county in which resides

any person having those goods, material or articles in his possession, custody or control.*

Unauthorised use of State emblems of Ireland.

97.—(1) A person shall not, without the authority of the Minister, use in connection with any

business the State emblems of Ireland notified under Article 6ter of the Paris Convention or

emblems so closely resembling the State emblems as to be calculated to deceive in such a

manner as to be calculated to lead to the belief that that person is duly authorised to use the

State emblems.

(2) A person who contravenes the provisions of subsection (1) shall be guilty of an offence

and shall be liable on summary conviction to a fine not exceeding £1,000 class C fine and, in

the case of a continuing offence, to a further fine not exceeding £100 class E fine for every

day the offence continues.

(3) The Minister may apply to the Court High Court† for an injunction to restrain any person

from contravening the provisions of subsection (1).

* Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

(4) Nothing in this section shall affect any right of the proprietor of a registered trade mark

containing any such emblem to use that trade mark.

(5) In any proceedings to restrain any action prohibited under subsection (1) or any

prosecution under subsection (2) a certificate purporting to be signed by the Controller that

the emblem is a State emblem shall be sufficient evidence of its contents unless the contrary

is proved.

Misuse of trade marks indicative of Irish origin.

98.—The Minister may take, in any place outside the State, such lawful steps, whether by

way of action or prosecution at law or otherwise, as he shall think proper to prevent, restrain,

or to secure punishment for, the registration, use or application, in relation to or in respect of

goods not grown, produced or manufactured in the State, of any trade mark or other mark or

description indicating or suggesting, or likely to lead to the belief, that the goods in respect of

which or to which that trade mark, mark or description is used or applied were grown,

produced or manufactured in the State.

Burden of proving use of trade mark.

99.—Where, in any civil proceedings under this Act, an issue arises as to the use made by

any person of any registered trade mark, the onus of proving such use shall lie with the

proprietor.

Transitional provisions.

100.—The provisions of the Third Schedule shall have effect with respect to transitional

matters, including the treatment of trade marks registered under the Act of 1963, and

applications for registration and other proceedings pending under that Act, on the

commencement of this Act.

Territorial waters and continental shelf.

101.—For the avoidance of doubt, it is hereby declared that this Act applies to the following

waters, namely, the waters in the portion of the sea which comprises the territorial seas of the

State, the waters in all areas of the sea to which the internal or inland waters of the State are

extended by section 5 of the Maritime Jurisdiction Act, 1959 and the waters in any area

which is for the time being a designated area within the meaning of section 1 of the

Continental Shelf Act, 1968.

Amendment and adaptation of existing statutes.

102.—(1) In any enactment passed before, and in any provision made under any enactment

before, the commencement of this Act, any reference to trade marks or registered trade

marks, within the meaning of the Act of 1963, shall, unless the context otherwise requires, be

construed after the commencement of this Act as a reference to trade marks or registered

trade marks, within the meaning of this Act.

(2) In section 24 of the Consumer Information Act, 1978 —

(a) for the words “the Trade Marks Act, 1963 ”, in each place where they occur

except in paragraph (c), there shall be substituted “the Trade Marks Act, 1996”; and

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(b) in paragraph (c) for the words “a person registered under section 36 of the Trade

Marks Act, 1963 as a registered user of a trade mark” there shall be substituted “in

the case of a registered trade mark, a person licensed to use it”.

FIRST SCHEDULE

Collective Marks Section 54 .

General

1. The provisions of this Act shall apply in relation to collective marks subject to the

following provisions of this Schedule.

Signs of which a collective mark may consist

2. In relation to a collective mark, the reference in section 6 (1) to distinguishing goods or

services of one undertaking from those of other undertakings shall be construed as a

reference to distinguishing goods or services of members of the association which is the

proprietor of the mark from those of other undertakings.

Indication of geographical origin

3. (1) Notwithstanding the provisions of section 8 (1) (c), a collective mark may be registered

which consists of signs or indications which may serve, in trade, to designate the

geographical origin of the goods or service.

(2) However, the proprietor of a mark referred to in subparagraph (1) shall not be entitled to

prohibit the use of the signs or indications in accordance with honest practices in industrial or

commercial matters (in particular, in the case of a person who is entitled to use a

geographical name).

Mark not to be misleading as to character or significance

4. (1) A collective mark shall not be registered if the public is liable to be misled as regards

the character or significance of the mark, in particular, if it is likely to be taken to be

something other than a collective mark.

(2) The Controller may, accordingly, require that a mark in respect of which an application is

made for registration as a collective mark shall comprise some indication that it is a

collective mark, and, notwithstanding section 44 (3), an application may be amended so as to

comply with any such requirement.

Regulations governing use of collective mark

5. (1) An applicant for registration of a collective mark shall file with the Controller

regulations governing the use of the mark.

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(2) The regulations shall specify the persons authorised to use the mark, the conditions of

membership of the association and, where they exist, the conditions of use of the mark,

including any sanctions against misuse of the mark.*

(2A) The regulations governing the use of the mark shall authorise any person whose goods

or services originate in the geographical area concerned to become a member of the

association which is the proprietor of the mark, provided that the person fulfils all the other

conditions of the regulations.†

(3) Provision may be made by rules for further matters in respect of which regulations are

required.

Approval of regulations by Controller

6. (1) A collective mark shall not be registered unless the regulations governing the use of the

mark—

(a) comply with paragraph 5 (2) and any further requirements imposed by rules; and

(b) are not contrary to public policy or to accepted principles of morality.

(2) Before the end of the prescribed period after the date of the application for registration of

a collective mark, the applicant must file the regulations with the Controller and pay the

prescribed fee; and if the applicant does not do so, the application shall be deemed to be

withdrawn.

7. (1) If it appears to the Controller that the requirements (other than those specified in

paragraph 6) for registration have been met, the Controller shall consider the matters

specified in paragraph 6 (1) and may—

(a) accept the application;

(b) accept it subject to conditions (including amendment of the regulations or

otherwise); or

(c) refuse to accept it.

(2) Where the Controller accepts an application subject to specified conditions, and those

conditions are complied with within the prescribed period, the Controller shall proceed with

the publication in the Journal in accordance with section 43 .

(3) Where the Controller accepts an application subject to specified conditions and those

conditions are not complied with within the prescribed period, the application shall be

deemed to be withdrawn.

8. (1) The regulations governing the use of the mark shall be open to public inspection and

notice of opposition may be given, and observations may be made, relating to the matters

specified in paragraph 6 (1).

(2) The provisions of this paragraph are in addition to any other grounds on which an

application may be opposed or observations made.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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Regulations to be open to inspection

9. The regulations governing the use of a registered collective mark shall, in like manner as

the register, be open to public inspection.

Amendment of regulations

10. Where the regulations governing the use of a registered collective mark are amended, the

regulations, as amended, shall not be effective unless and until the amended regulations are

filed with and accepted by the Controller the Controller and the mention of the amendment of

the regulations is entered in the register.*

Infringement proceedings: rights of authorised users

11. (1) Subject to any agreement to the contrary between an authorised user and the

proprietor, the provisions of this paragraph shall have effect in relation to the infringement of

a registered collective mark.

(2) An authorised user shall be entitled to call on the proprietor to take infringement

proceedings in respect of any matter which affects the authorised user's interests.

(3) Where the proprietor refuses or fails to take infringement proceedings in accordance with

subparagraph (2) within two months after being called upon to do so, the authorised user

may bring the proceedings in the authorised user's name as if the authorised user were the

proprietor.

(3) Without prejudice to the provisions of any agreement, the authorised user may bring

proceedings for infringement of a trade mark only if its proprietor consents thereto.”,†

(4) Where the infringement proceedings are brought by virtue of subparagraph (3)

(a) the authorised user may not, without the leave of the Court appropriate court‡,

proceed with the action unless the proprietor is either joined as a plaintiff or added as

a defendant; and

(b) a proprietor who is so added as a defendant shall not be liable for any costs in the

action unless he takes part in the proceedings.

(5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an

application by an authorised user alone.

(6) In the course of infringement proceedings brought by the proprietor of a registered

collective mark, any loss suffered or likely to be suffered by authorised users shall be taken

into account by the Court appropriate court; and the Court appropriate court may give such

directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of

any pecuniary remedy on behalf of such users.

† *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 ‡ Copyright and Other Intellectual Property Law Provisions Act 2019

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(7) An authorised user shall for the purpose of obtaining compensation for damage suffered

by him or her, be entitled to intervene in infringement proceedings brought by the proprietor

of a registered collective mark.

Grounds for revocation of registration

12. Apart from the grounds of revocation provided for in section 51 , the registration of a

collective mark may shall be revoked on the ground that—

(a) the manner in which the mark has been used by the proprietor persons authorised

to use it has made it misleading to the public in the manner referred to in paragraph 4

(1); or

(b) the proprietor has failed to observe, or to secure the observance of the regulations

governing the use of the mark; or

(b) the proprietor has not taken reasonable steps to prevent the mark being used in a

manner that is incompatible with the conditions of use laid down in the regulations

governing the use of the mark, including any amendments thereto mentioned in the

register; or”,

(c) an amendment of the regulations has been made so that the regulations—

(i) no longer comply with paragraph 5 (2) and any further conditions imposed

by rules; or

(i) no longer comply with paragraph 5(2) and any further conditions imposed

by rules unless the proprietor of the mark, by further amending the regulations

governing use, complies with the requirements of the First Schedule; or”,

(ii) are contrary to public policy or to accepted principles of morality.

Grounds for invalidity of registration

13. Apart from the grounds of invalidity provided for in section 52 , the registration of a

collective mark may be declared invalid on the ground that the mark was registered contrary

to the provisions of paragraph 4 (1) or 6 (1).

13. In addition to the grounds of invalidity provided for in section 52, where appropriate with

the exception of section 8(1)(c), concerning signs or indications which may serve, in trade, to

designate the geographical origin of the goods or services, the registration of a collective

mark shall be declared invalid on the ground that the mark was registered contrary to the

provisions of paragraph 4(1) or 6(1), unless the proprietor of the mark, by further amending

the regulations governing use, complies with the requirements of the First Schedule.*

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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SECOND SCHEDULE

Certification Marks Section 55 .

General

1. The provisions of this Act shall apply in relation to certification marks subject to the

following provisions of this Schedule.

Signs of which a certification mark may consist

2. In relation to a certification mark, the reference in section 6 (1) to distinguishing goods or

services of one undertaking from those of other undertakings shall be construed as a

reference to distinguishing goods or services which are certified from those which are not

certified.

Indication of geographical origin

3. Notwithstanding the provisions of section 8 (1) (c), a certification mark may be registered

which consists of signs or indications which may serve, in trade, to designate the

geographical origin of the goods or services:

Provided that the proprietor of such a mark shall not be entitled to restrain the use of the

signs or indications in accordance with honest practices in industrial or commercial matters,

in particular, by a person who is entitled to use a geographical name.

Nature of proprietor's business

4. A certification mark shall not be registered if the proprietor carries on a business involving

the supply of goods or services of the kind certified.

4. Any natural or legal person, including institutions, authorities and bodies governed by

public law, may apply for certification marks provided that such person does not carry on a

business involving the supply of goods or services of the kind certified*.

Mark not to be misleading as to character or significance

5. (1) A certification mark shall not be registered if the public is liable to be misled as regards

the character or significance of the mark, in particular, if it is likely to be taken to be

something other than a certification mark.

(2) The Controller may, accordingly, require that a mark in respect of which an application is

made for registration as a certification mark shall comprise some indication that it is a

certification mark; and notwithstanding section 44 (3), an application may be amended so as

to comply with any such requirement.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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Regulations governing use of certification mark

6. (1) An applicant for registration of a certification mark shall file with the Controller

regulations governing the use of the mark.

6A. The requirement of use referred to in section 16A shall be satisfied where genuine use of

a certification mark is made by any person who has the authority to use it.*

(2) The regulations shall indicate who is authorised to use the mark, the characteristics to be

certified by the mark, how the certifying body is to test those characteristics and to supervise

the use of the mark, the fees (if any) to be paid in connection with the operation of the mark

and the procedures for resolving disputes.

(3) Provision may be made by rules for further matters in respect of which regulations are

required.

Approval of regulations, &c. by Minister

7. (1) A certification mark shall not be registered unless the Minister is satisfied that—

(a) the regulations governing the use of the mark—

(i) comply with paragraph 6 (2) and any further requirements imposed by

rules; and

(ii) are not contrary to public policy or to accepted principles of morality; and

(b) the applicant is competent to certify the goods or services for which the mark is to

be registered.

(2) If it appears to the Controller that the requirements for registration other than those in

subparagraph (1) are met, the Controller shall authorise the applicant to proceed with the

application.

(3) Within the prescribed period of authorisation to proceed, the applicant must file the

regulations (if this has not already been done) and pay the prescribed fee, failing which, the

application shall be deemed to be withdrawn.

8. (1) The Minister shall consider the matters mentioned in paragraph 7 (1) and may direct

that the application for registration be accepted, be accepted subject to conditions (as to

amendment of the regulations or otherwise), or be not accepted.

(2) Where the Minister directs that the application be accepted, and any conditions are

complied with within the prescribed period, the Controller shall proceed in accordance with

section 43 .

(3) Where the Minister directs that an application be accepted subject to specified conditions

and those conditions are not complied with within the prescribed period, the application shall

be deemed to be withdrawn.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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9. The regulations shall be published and notice of opposition may be given, and

observations may be made, relating to the matters mentioned in paragraph 7 (1), in addition

to any other grounds on which an application may be opposed or observations made.

Regulations to be open to inspection

10. The regulations governing the use of a registered certification mark shall, in like manner

as the register, be open to public inspection.

Amendment of regulations

11. (1) An amendment of the regulations governing the use of a registered certification mark

shall not be effective unless and until the Minister consents to the amendment and the

amended regulations are filed with the Controller.

(2) The Minister may cause an application for consent under subparagraph (1) to be

published in any case where it appears expedient to do so.

(3) Any person may, within the prescribed time from the date of the publication of the

application, give notice to the Minister of opposition to the application and any such notice

shall be given in writing in the prescribed manner and shall include a statement of the

grounds of opposition.

(4) After the Minister has consented to such an amendment as is mentioned in subparagraph

(1), the Controller shall publish notice in the Journal when the amended regulations are filed

with him.

Consent to assignment of registered certification mark

12. The assignment or other transmission of a registered certification mark shall not be

effective without the consent of the Minister.

Infringement proceedings: rights of authorised users

13. (1) Subject to any agreement to the contrary between an authorised user and the

proprietor, the provisions of this paragraph shall have effect in relation to the infringement of

a registered certification mark.

(2) An authorised user shall be entitled to call on the proprietor to take infringement

proceedings in respect of any matter which affects the authorised user's interests.

(3) Where the proprietor refuses or fails to take infringement proceedings in accordance with

subparagraph (2) within two months after being called upon to do so, the authorised user

may bring the proceedings in the authorised user's own name as if the authorised user were

the proprietor.

(4) Where infringement proceedings are brought by virtue of subparagraph (3)

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(a) the authorised user may not, without the leave of the Court appropriate court*,

proceed with the action unless the proprietor is either joined as a plaintiff or added as

a defendant; and

(b) a proprietor who is so added as a defendant shall not be liable for any costs in the

action unless the proprietor takes part in the proceedings.

(5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an

application by an authorised user alone.

(6) In the course of infringement proceedings brought by the proprietor of a registered

certification mark, any loss suffered or likely to be suffered by authorised users shall be taken

into account by the Court appropriate court; and the Court appropriate court may give such

directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of

any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

14. (1) Apart from the grounds of revocation provided for in section 51 , the registration of a

certification mark may be revoked on the ground that—

(a) the proprietor has begun to carry on such a business as is mentioned in paragraph

4; or

(b) the manner in which the mark has been used by the proprietor has made it

misleading to the public in the manner referred to in paragraph 5 (1); or

(c) the proprietor has failed to observe, or to secure the observance of, the regulations

governing the use of the mark; or

(d) an amendment of the regulations has been made so that the regulations—

(i) no longer comply with paragraph 6 (2) and any further conditions imposed

by rules; or

(ii) are contrary to public policy or to accepted principles of morality; or

(e) the proprietor is no longer competent to certify the goods or services for which the

mark is registered.

(2) An application for revocation on the ground mentioned in subparagraph (1) (c), (d) or (e)

shall be made to the Minister.

(3) For the purposes of this paragraph the reference in section 51 (6) to the Controller or the

Court High Court† shall be construed as a reference to the Minister.

Grounds for invalidity of registration

15. (1) Apart from the grounds of invalidity provided for in section 52, the registration of a

certification mark may be declared invalid on the ground that the mark was registered

contrary to the provisions of paragraph 4, 5 (1) or 7 (1).

(2) An application for a declaration of invalidity on the ground that the registration was made

contrary to the provisions of paragraph 7 (1) shall be made to the Minister.

* Copyright and Other Intellectual Property Law Provisions Act 2019

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General provisions as to functions of Minister

16. (1) The provisions of sections 69 to 74 shall apply in relation to the Minister and the

Minister's functions under this Schedule as they apply in relation to the Controller and the

Controller's functions.

(2) Section 79 shall apply in relation to a decision of the Minister under this Schedule as they

apply in relation to a decision of the Controller.

(3) The Minister may, for the purpose of discharging any of his functions under this

Schedule, refer any matter to a body or person appearing to the Minister to have experience

of matters of that description, and may take their report or advice into account in reaching his

decision.

THIRD SCHEDULE

Transitional Provisions Section 100 .

Introductory

1. (1) In this Schedule—

commencement” means the commencement of this Act; “existing registered mark” means a

trade mark or certification trade mark, within the meaning of the Act of 1963, registered

under that Act immediately before commencement;

the former register” means the register of trade marks kept under the Act of 1963;

the old law” means the Act of 1963 and any other enactment or rule of law applying to

existing registered marks immediately before commencement;

the new register” means the Register of Trade Marks kept under this Act.

(2) For the purposes of this Schedule an application shall be treated as pending at

commencement if it was made but not finally determined before commencement.

Existing registered marks

2. (1) Existing registered marks (whether registered in Part A or Part B of the former register)

shall, on commencement, be deemed to be transferred to the new register and shall have

effect, subject to the provisions of this Schedule, as if registered under this Act.

(2) Subparagraph (1) shall apply to all entries relating to existing registered marks as it

applies to the marks themselves.

(3) Entries indicating that existing registered marks are associated with other marks shall

cease to have effect on commencement.

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(4) A condition entered on the former register in relation to an existing registered mark

immediately before commencement shall cease to have effect on commencement; and

proceedings under section 41 of the Act of 1963 (application to expunge or vary registration

for breach of condition) which are pending at commencement shall be dealt with under the

old law (with any necessary alteration being made in the new register).

(5) A disclaimer or limitation entered on the former register in relation to an existing

registered mark and in force immediately before commencement shall be deemed to be

transferred to the new register and have effect as if entered on the new register in pursuance

of section 17 .

Effects of registration: infringement

3. (1) Sections 13 to 16 (effects of registration) apply in relation to an existing registered

mark as from commencement and section 18 (action for infringement) applies in relation to

infringement of an existing registered mark after commencement, subject to subparagraph

(3).

(2) Without prejudice to the operation of the Interpretation Act, 1937 , the old law shall

continue to apply in relation to infringements committed before commencement.

(3) It shall not be an infringement of—

(a) an existing registered mark, or

(b) a registered trade mark of which the distinctive elements are the same or

substantially the same as those of an existing registered mark and which is registered

for the same goods or services,

to continue after commencement any use which did not amount to infringement of the

existing registered mark under the old law.

Infringing goods, material or articles

4. Section 20 (order for delivery up of infringing goods, material or articles) shall apply to

infringing goods, material or articles made before, as well as after, commencement.

Rights and remedies of licensee or authorised user

5. (1) Section 34 (general provisions as to rights of licensees in case of infringement) shall

apply to licences granted before commencement, but only as regards infringements

committed after commencement.

(2) Paragraph 13 (6) of the Second Schedule shall apply only in relation to infringements

committed after commencement.

Assignment &c. of registered trade marks

6. (1) Section 28 (assignment or other transmission of registered mark) shall apply only in

relation to transactions and events occurring after commencement in relation to an existing

registered mark; and the old law shall continue to apply in relation to transactions and events

occurring before commencement.

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(2) An application for registration under section 33 of the Act of 1963 (registration of

assignments and transmissions) which is pending at commencement shall be treated as an

application for registration under section 29 and shall proceed accordingly, except that the

Controller may require the applicant to amend the application so as to conform with the

requirements of this Act.

(3) An application for registration under section 33 of the Act of 1963 which has been

determined by the Controller but not finally determined before commencement shall be dealt

with under the old law.

(4) Where, before commencement, a person became entitled by assignment or transmission

to an existing registered mark but did not make an application to register his title, any

application for registration after commencement shall be made under section 29 .

(5) Any entry falling to be made in the old register as a result of subparagraph (3) shall be

treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

Licensing of registered mark

7. (1) Sections 32 and 33 (2) (licensing of registered trade mark: rights of exclusive licensee

against grantor's successor in title) shall apply only in relation to licences granted after

commencement; and the old law shall continue to apply in relation to licences granted before

commencement.

(2) Existing entries under section 36 of the Act of 1963 (registered users) shall be deemed to

be transferred on commencement to the new register and shall have effect as if made under

section 29 .

(3) An application for registration as a registered user which is pending at commencement

shall be treated as an application for registration of a licence under section 29 (1) and shall

proceed accordingly, except that the Controller may require an applicant to amend the

application so as to conform with the requirements of this Act.

(4) An application for registration as a registered user which has been determined by the

Controller but not finally determined before commencement shall be dealt with under the old

law, and any entry falling to be made in the old register as a result of this subparagraph shall

be treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

(5) Any proceedings pending on commencement under section 36 (7) or (9) of the Act of

1963 (variation or cancellation of registration of registered user) shall be dealt with under the

old law (with any necessary alteration being made to the new register).

Pending applications for registration

8. (1) The provisions of this paragraph apply where an application for registration of a trade

mark, within the meaning of the Act of 1963, is pending at commencement.

(2) Subject to paragraph 9, the application shall be dealt with (and the registrability of the

mark shall be determined) in accordance with the old law and any mark which, on that

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determination, falls to be registered shall be treated for the purpose of this Schedule as an

existing registered mark.

(3) Provision may be made by rules to enable pending applications for registration to

continue in accordance with the procedural provisions of this Act.

Conversion of pending application

9. (1) This paragraph applies if an application which was pending at commencement has not

been advertised under section 26 of the Act of 1963.

(2) If, in case where subparagraph (1) applies, the applicant gives notice to the Controller

requesting that the registrability of the mark be determined in accordance with the provisions

of this Act, the Controller shall deal with the application accordingly.

(3) Notice under subparagraph (2) shall be in the prescribed form, shall be accompanied by

the appropriate fee and shall be given no later than six months after commencement.

(4) Notice given under subparagraph (2) shall be irrevocable and the application to which

the notice relates shall be treated as if it were made at commencement and as if the date of

filing were the date of commencement.

Duration and renewal of registration

10. (1) Section 47 (1) (duration of original period of registration) applies in any case where

the registrability of a trade mark is determined in accordance with the provisions of this Act;

and the old law applies in any other case.

(2) Sections 47 (2) and 48 (renewal of registration) apply when the renewal falls due at or

after commencement; and the old law applies in any other case.

(3) For the purposes of this paragraph it is immaterial when the application is made or when

the fee is paid.

Revocation for non-use

11. (1) An application under section 34 of the Act of 1963 (removal from register or

imposition of limitation on ground of non-use) which is pending at commencement shall be

dealt with under the old law (with any necessary alteration being made to the new register).

(2) Subject to subparagraph (3), an application under section 51 (4) on the grounds specified

in section 51 (1) (a) or (b) (revocation for non-use) may be made in relation to an existing

registered mark at any time after commencement.

(3) No application for the revocation of the registration of an existing registered mark which

was registered by virtue of section 35 of the Act of 1963 (defensive registration of well-

known trade marks) may be made under section 51 until more than five years after

commencement.

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Application for rectification &c.

12. An application under section 40 or 42 of the Act of 1963 (rectification or correction of

the register) which is pending at commencement shall be dealt with under the old law (with

any necessary alteration being made to the new register).

Validity of existing registered marks

13. The old law shall continue to apply as regards the validity of the registration of an

existing registered mark; and no objection to the validity of such a registration may be taken

on the ground of failure to satisfy the requirements of this Act.

Certification marks

14. (1) If, at commencement, a request is pending for the amendment of the regulations

governing the use of an existing certification mark, that request shall be dealt with under the

old law.

(2) In subparagraph (1) existing certification mark” means a certification trade mark

registered under the Act of 1963 immediately before commencement.

Pre-commencement applications in respect of trade marks for services.

15. (1) If, at any time between 1st January, 1993 and commencement, an application was

made to the Controller for the registration of a trade mark in respect of services, this Act shall

have effect, subject to subparagraph (2), as if—

(a) the application were made at commencement; and

(b) the date of filing were the date of commencement;

and the Controller shall deal with the application accordingly.

(2) Section 20 (3) of the Act of 1963 (separate applications for registration of identical trade

marks in respect of goods, etc.) shall apply in relation to applications falling within

subparagraph (1)

(a) with the substitution of a reference to services for the reference to goods or a

description of goods; and

(b) with the omission of the proviso.

16. The amendment effected by section 45 of the Patents (Amendment) Act 2006 to section

61(2) shall not affect the continuation of any bona fide use of a trade mark begun before 1

January 1996.

17. The amendment effected by section 43 (c) of the Patents (Amendment) Act 2006 and the

amendment effected by section 45 of the said Act to section 63 shall not affect the rights of a

person whose bona fide use of a trade mark to which section 63 applies and which is

protected under the Agreement establishing the World Trade Organisation began before 1

January 1996.*

* Patents Amendment Act 2006 (31/2006)

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18. The amendments to this Act effected by the European Union (Trade Marks) Regulations

2018 shall not apply to any application for registration of a trade mark made under this Act

before the coming into operation of those Regulations.*

Acts

Referred to

Copyright Act, 1963 1963, No. 10

Consumer Information Act, 1978 1978, No. 1

Continental Shelf Act, 1968 1968, No. 14

Interpretation Act, 1937 1937, No. 38

Maritime Jurisdiction Act, 1959 1959, No. 22

Partnership Act, 1890 53 & 54 Vict., c. 39

Patents Act, 1992 1992, No. 1

Petty Sessions (Ireland) Act, 1851 14 & 15 Vict., c. 93

Public Offices Fees Act, 1879 42 & 43 Vict., c. 58

Solicitors Act, 1954 1954, No. 36

Statute of Limitations, 1957 1957, No. 6

Trade Marks Act, 1963 1963, No. 9

OJ No. L40 of 11th February, 1989

OJ No. Lll of 14th February, 1994

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*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

Additional Text(s) WTO Notifications Coversheet (3 text(s)) WTO Notifications Coversheet (3 text(s)) Spanish Versión Consolidada No Oficial de la Ley de 1996 de Marcas (modificada)  
French Version non-officielle consolidée de la loi sur les marques de 1996 (telle que modifiée)  
English Unofficial Consolidated Version of Trade Marks Act 1996 (as amended)  

Unofficial consolidated version

TRADE MARKS

ACT 1996

(as amended)

Note to users: This is an unofficial consolidation of the Trade Marks Act 1996 and amendments up to and including the 2 December 2019 and is produced here as a reference document only. This document has no legal force. The Trade Marks Act, 1996 has been updated on a number of occasions since it was enacted on the 16th March 1996, but the amending laws have not been officially consolidated into a single text. Whilst every effort has been made to ensure the accuracy of the information/material contained on this document, the State, the Department of Business, Enterprise and Innovation, its servants or agents assume no responsibility for and give no guarantees, undertakings or warranties concerning the accuracy, completeness or up to date nature of the information provided and do not accept any liability whatsoever arising nor for any errors or omissions in this document.

Amended by:

Copyright and Related Rights

Act, 2000 (28/2000)

Patents (Amendments) Act

2006 (31/2006)

S.I. No. 622 of 2007

European Communities

(Provision of services

concerning Trade Marks and

Industrial Designs)

Regulations 2007

Intellectual Property

(Miscellaneous Provisions)

Act 2014

S.I. No. 47 of 2016

European Communities

(Trade Mark Agents)

Regulations 2016

S.I. No. 561 of 2018 European

Union (Trade Marks)

Regulations 2018

Copyright and Other

Intellectual Property Law

Provisions Act 2019

Repealed or Deleted

Copyright and Other

Intellectual Property Law

Provisions Act 2019

Unofficial consolidated version

Number 6 of 1996

TRADE MARKS ACT, 1996

As amended – changes tracked

ARRANGEMENT OF SECTIONS

PART I

Preliminary and General

Section

1. Short title and commencement.

2. Interpretation. (Amended by  )

3. Orders, regulations and rules.

4. Expenses.

5. Repeal.

PART II

Registered Trade Marks

6 Trade marks. (Amended by )

7. Registered trade marks.

8. Absolute grounds for refusal of registration. (Amended by )

9. Specially protected emblems.

10. Relative grounds for refusal of registration. (Amended by )

11. Meaning of “earlier trade mark”. (Amended by  )

12. Raising of relative grounds in case of honest concurrent use.

13. Rights conferred by registered trade mark. (Amended by )

14. Infringement of registered trade mark. (Amended by  )

15. Limits on effect of registered trade mark. (Amended by )

16. Exhaustion of rights conferred by registered trade mark. (Amended by )

17. Registration subject to disclaimer or limitation.

18. Action for infringement. (Amended by )

19. Order for erasure &c. of offending sign ).

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20. Order for delivery up of infringing goods, material or articles .

21. Meaning of “infringing goods, material or articles”.

22. Period after which remedy of delivery up not available.

23. Order as to disposal of infringing goods, material or articles .

(Amended by )

24. Remedy for groundless threats of infringement proceedings .

25. Infringing goods, material or articles: powers of seizure and search.

(Amended by )

26. Nature of registered trade mark.

27. Jointly owned trade marks.

28. Assignment &c. of registered trade mark. (Amended by )

29. Registration of transactions affecting registered trade mark. (Amended by

)

30. Trusts and equities.

31. Application for registration of trade mark as an object of property. (Amended by

)

32. Licensing of registered trade mark.

33. Exclusive licences.

34. General provisions as to rights of licensees in case of infringement. (Amended by

 )

35. Exclusive licensee having rights and remedies of assignee. (Amended by )

36. Exercise of concurrent rights .

37. Application for registration.

38. Date of filing.

39. Classification of goods and services. (Amended by )

40. Claim to priority of Convention application.

41. Claim to priority from other relevant overseas application. (Amended by )

42. Examination of application.

43. Publication, opposition proceedings and observations. (Amended by )

44. Withdrawal, restriction or amendment of application.

45. Registration.

46. Registration: supplementary provisions. (Amended by )

47. Duration of registration.

48. Renewal of registration. (Amended by )

49. Alteration of registered trade mark.

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50. Surrender of registered trade mark.

51. Revocation of registration. (Amended by  )

52. Grounds for invalidity of registration. (Amended by  )

53. Effect of acquiescence.

54. Collective marks. (Amended by )

55. Certification marks.

PART III

Community Trade Marks and International Matters

56. Meaning of “Community trade mark” and “Community Trade Mark Regulation”.

Meaning of “European Union Trade Mark”, “European Union Trade Mark

Regulation” and “Directive” (Amended by )

57. Power to make provision in connection with Community Trade Mark Regulation.

(Repealed by )

58. The Madrid Protocol.

59. Power to make provision giving effect to Madrid Protocol.

60. The Paris Convention. (Amended by )

61. Protection of well-known trade marks: Article 6bis. (Amended by )

62. National emblems &c. of Convention countries: Article 6ter.

(Amended by )

63. Emblems &c. of certain international organisations: Article 6ter.

(Amended by )

64. Notification under Article 6ter of the Convention.

(Amended by )

65. Acts of agent or representative: Article 6septies .

PART IV

Administrative Provisions

66. The register.

67. Rectification or correction of the register .

68. Adaptation of entries to new classification.

69. Power to require use of forms.

70. Information about applications and registered trade marks.

71. Exercise of discretionary powers by Controller.

72. Costs and security for costs .

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73. Evidence before the Controller.

74. Exclusion of liability in respect of official acts.

75. Content of Controller's annual report.

76. Registration to be prima facie evidence of validity.

77. Certificate of validity of contested registration .

78. Controller's appearance in court proceedings .

79. Appeals from the Controller. (Amended by  )

80. No award of costs to or against the Controller .

81. Power of Minister to make rules.

82. Fees.

PART V

Trade Mark Agents

83. Authorised agent may act. (Amended by )

84. Register of Trade Mark Agents.

85. Business to be carried on only by registered trade mark agents &c.

(Amended by  )

86. Entitlement to be registered as trade mark agent. (Amended by )

87. Removal from Register.

88. Suspension and erasure of registration of trade mark agent .

89. Notice of erasure or suspension: subsequent restoration.

90. Rules relating to trade mark agents. (Amended by )

91. Privileged communications. (Amended by )

PART VI

Offences

92. Fraudulent application or use of trade mark in relation to goods .

93. Falsification of register, &c .

94. Falsely representing trade mark as registered .

95. Offences committed by partnerships and bodies corporate.

PART VII

Miscellaneous and General

Unofficial consolidated version

96. Jurisdiction of the Circuit Court.

97. Unauthorised use of State emblems of Ireland .

98. Misuse of trade marks indicative of Irish origin.

99. Burden of proving use of trade mark.

100. Transitional provisions.

101. Territorial waters and continental shelf.

102. Amendment and adaptation of existing statutes.

FIRST SCHEDULE

Collective Marks (Amended by  )

SECOND SCHEDULE

Certification Marks (Amended by  )

THIRD SCHEDULE

Transitional Provisions (Amended by  )

____________________________________________________________________

Number 6 of 1996

____________________________________________________________________

TRADE MARKS ACT, 1996

____________________________________________________________________

AN ACT TO MAKE NEW PROVISION FOR REGISTERED TRADE MARKS,

IMPLEMENTING COUNCIL DIRECTIVE NO. 89/104/EEC OF 21st DECEMBER, 1988,

TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADE

MARKS(1) ; TO MAKE PROVISION IN CONNECTION WITH COUNCIL

REGULATION (EC) NO. 40/94 OF 20 DECEMBER, 1993, ON THE COMMUNITY

TRADE MARK(2) ; TO GIVE EFFECT TO THE MADRID PROTOCOL RELATING TO

THE INTERNATIONAL REGISTRATION OF MARKS OF 27th JUNE, 1989, AND TO

CERTAIN PROVISIONS OF THE PARIS CONVENTION FOR THE PROTECTION OF

INDUSTRIAL PROPERTY OF 20th MARCH, 1883, AS REVISED AND AMENDED; TO

PERMIT THE REGISTRATION OF TRADE MARKS IN RELATION TO SERVICES

AND FOR CONNECTED PURPOSES. [16th March, 1996]

BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:

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PART I

Preliminary and General

Short title and commencement

1.—(1) This Act may be cited as the Trade Marks Act, 1996.

(2) The provisions of the Act shall come into operation on such day as the

Minister may by order fix.

(3) Different days may be so fixed for different provisions and different

purposes.

Interpretation.

2.—(1) In this Act, except where the context otherwise requires—

the Act of 1963”means the Trade Marks Act, 1963 ;

Agreement establishing the World Trade Organisation” has the meaning assigned by

section 60;*

“ appropriate court” means—

(a) the District Court, where the damages or the value of the other relief sought in any action

to which the application relates is not liable to exceed such sum as stands specified by an

enactment to be the jurisdiction of the District Court for actions in contract or tort,

(b) the Circuit Court, where the damages or the value of the other relief sought in any action

to which the application relates is not liable to exceed such sum as stands specified by an

enactment to be the jurisdiction of the Circuit Court for actions in contract or tort, and

(c) in any other case, the High Court;”.†

assignment” means assignment by act of the parties concerned;

business” includes a trade or profession;

Community trade mark”, and “Community Trade Mark Regulation” have the

meanings assigned by section 56 ;

the Controller” means the Controller of Patents, Designs and Trade Marks Intellectual

Property;

Convention country” has the meaning assigned by section 60 ;

the Court” means the High Court;

“directive” has the meaning assigned by section 56;

director”, in relation to a body corporate whose affairs are managed by its

members, means any member of the body;

earlier trade mark” has the meaning assigned by section 11 ;

“ ’EEA Agreement’ means the Agreement on the European Economic Area signed at Oporto

on 2 May 1992, as adjusted by all subsequent amendments to that Agreement;

‘EEA state’ means-

(a) a Member State (other than the State), or

(b) a state (other than a Member State) that is a contracting party to the EEA

agreement;”*

* Patents Amendment Act 2006 (31/2006)

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016

*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 † Copyright and Other Intellectual Property Law Provisions Act 2019

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“European Union trade mark” has the meaning assigned by section 56;

“European Union Trade Mark Regulation” has the meaning assigned by section 56;*

exclusive licence” and “exclusive licensee” have the meanings assigned by section

33;

infringement proceedings”, in relation to a registered trade mark, include

proceedings under section 20 ;

the Journal” means the Patents Office Journal;

the Minister” means the Minister for Enterprise and Employment;

the Office” means the Patents Office Intellectual Property Office of Ireland;

the Paris Convention” has the meaning assigned by section 60 ;

partnership” has the meaning assigned by section 1 of the Partnership Act, 1890;

prescribed” means, in relation to proceedings before the Court the appropriate courti,

prescribed by rules

of court and, in any other case, prescribed by this Act or orders, rules or regulations

made hereunder;

publish” means make available to the public, and references to publication—

(a) in relation to an application for registration, are to publication under section 43

(1), and

(b) in relation to registration, are to publication under section 45 (4);

the register”, except in Part V , means the Register of Trade Marks kept under this

Act;

rules”, except in relation to rules of court, mean rules made by the Minister under

section 81 ;

State emblem of Ireland” means any emblem notified as such under Article 6ter of

the Paris Convention;

trade” includes any business or profession;

trade mark” has the meaning assigned by section 6 .

(2) References in this Act to use (or any particular description of use) of a trade

mark, or of a sign identical with, similar to, or likely to be mistaken for a trade

mark, include use (or that description of use) otherwise than by means of a

graphic representation.

(3) Any reference in this Act to a Community European Union† instrument includes a

reference to any instrument amending or replacing that instrument.

(4) In this Act—

(a) a reference to a Part or section is to a Part or section of this Act, unless it is

indicated that reference to some other enactment is intended; and

(b) a reference to a subsection or paragraph is to the subsection or paragraph of

the provision in which the reference occurs, unless it is indicated that some

other provision is intended.

(5) In this Act a reference to an enactment includes a reference to that enactment as

amended by or under any other enactment, including this Act.

† *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

Copyright and Other Intellectual Property Law Provisions Act 2019

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Orders, regulations and rules.

3.—(1) Where a power to make orders, regulations or rules is conferred by this Act, such

orders, regulations or rules may be made either in respect of all, or in respect of any one or

more, of the matters to which the power relates, and different provisions may be made by any

such orders, regulations or rules in respect of matters which are of different classes or

descriptions.

(2) Subject to subsection (3), every order, regulation or rule made under this Act shall be laid

before each House of the Oireachtas as soon as may be after it is made and, if a resolution

annulling the order, regulation or rule is passed by either such House within the next twenty-

one days on which that House has sat after the order, regulation or rule is laid before it, the

order, regulation or rule shall be annulled accordingly, but without prejudice to the validity of

anything previously done thereunder.

(3) Where—

(a) a regulation is proposed to be made under section 57 or section 59 , or

(b) an order is proposed to be made under section 60 subsection (2) shall not apply and a

draft of the order or regulation shall be laid before both Houses of the Oireachtas, and the

order or regulation shall not be made until a resolution approving the draft has been passed

by each House.*

(4) As soon as may be after any order, regulation or rule is made under this Act, notice of the

making thereof and of the place where copies thereof may be obtained, shall be published in

the Journal.

(5) Any power under this Act to make an order includes power to amend or revoke an order

made in the exercise of that power except in the case of an order under section 1 (2).

Expenses.

4.—The expenses incurred by the Minister in the administration of this Act shall, to such

extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by

the Oireachtas.

Repeal.

5.—Subject to the provisions of section 100 , the Act of 1963 is hereby repealed.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 †

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PART II

Register Trade Marks

Introductory

Trade marks.

6.—(1) In this Act a “trade mark” means any sign capable of being represented graphically

which is capable of distinguishing goods or services of one undertaking from those of other

undertakings.

(2) Without prejudice to subsection (1), a trade mark may, in particular, consist of words

(including personal names), designs, letters, numerals or the shape of goods or of their

packaging.

(2) Without prejudice to subsection (1), a trade mark may, in particular, consist of words

(including personal names) or designs, letters, numerals, colours, the shape of goods or of the

packaging of goods, or sounds, provided that such signs are capable of being represented on

the register in a manner which enables the Controller and the public to determine the clear

and precise subject matter of the protection afforded to its proprietor.*

(3) References in this Act to a trade mark include, unless the context otherwise requires,

references to a collective mark within the meaning of section 54 or a certification mark

within the meaning of section 55.

Registered trade marks.

7.—(1) A registered trade mark is a property right obtained by the registration of the trade

mark under this Act and the proprietor of a registered trade mark shall have the rights and

remedies provided by this Act.

(2) No proceedings shall lie to prevent or recover damages for the infringement of an

unregistered trade mark as such; but nothing in this Act shall affect the law relating to

passing off.

Grounds for Refusal of Registration

Absolute grounds for refusal of registration.

8.—(1) The following shall not be registered as trade marks:

(a) signs which do not satisfy the requirements of section 6 (1);

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in

trade, to designate the kind, quality, quantity, intended purpose, value, geographical

origin, the time of production of goods or of rendering of services, or other

characteristics of goods or services;

(d) trade marks which consist exclusively of signs or indications which have become

customary in the current language or in the bona fide and established practices of the

trade:

* * *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or

(d) if, before the date of application for registration, it has in fact acquired a distinctive

character as a result of the use made of it.

(2) A sign shall not be registered as a trade mark if it consists exclusively of—

(a) the shape shape or another characteristic which results from the nature of the

goods themselves; or

(b) the shape shape or another characteristic of goods which is necessary to obtain a

technical result; or

(c) the shape shape or another characteristic which gives substantial value to the

goods

(3) A trade mark shall not be registered if—

(a) it is contrary to public policy or to accepted principles of morality; or

(b) it is of such a nature as to deceive the public, for instance as to the nature, quality

or geographical origin of the goods or service.

(4) A trade mark shall not be registered if or to the extent that—*

(a) its use is prohibited in the State by any enactment or rule of law or by any

provision of Community law; or

(b) the application for registration is made in bad faith by the applicant.†

(4) A trade mark shall not be registered if or to the extent that—

(a) its use is prohibited in the State by any enactment or rule of law or by any provision of

European Union law including those for the protection of designations of origin and

*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

geographical indications or where the State or the European Union is party to an international

agreement protecting designations of origin and geographical indications; or

(b) its use is prohibited in the State by any European Union legislation or international

agreements to which the European Union is party, providing for protection of traditional

terms for wine; or

(c) its use is prohibited in the State by any European Union legislation or international

agreements to which the European Union is party, providing for protection of traditional

specialties guaranteed; or

(d) it consists of, or reproduces in its essential elements, an earlier plant variety denomination

registered in accordance with the law of the State or European Union legislation, or

international agreements to which the European Union or the State is party, providing

protection for plant variety rights, and which are in respect of plant varieties of the same or

† *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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closely related species; or

(e) the application for registration is made in bad faith by the applicant.*

Specially protected emblems.

9.—(1) A trade mark which consists of or contains any State emblem of Ireland or any

insignia or device so nearly resembling such emblem that it may be mistaken for such

emblem shall not be registered unless the Controller is satisfied that consent for its

registration has been given by the Minister.

(2) A trade mark which consists of or contains a representation of the national flag of the

State, as defined by Article 7 of the Constitution, shall not be registered if it appears to the

Controller that the use of the trade mark would be misleading or grossly offensive.

(3) The Controller may refuse to register a trade mark which consists of or contains any

badge, device or emblem of a public authority unless such consent as is required by rules is

obtained.

Relative grounds for refusal of registration.

10.—(1) A trade mark shall not be registered if it is identical with an earlier trade mark and

the goods or services for which the trade mark is applied for are identical with the goods or

services for which the earlier trade mark is protected.

(2) A trade mark shall not be registered if because—

(a) it is identical with an earlier trade mark and would be registered for goods or

services similar to those for which the earlier trade mark is protected, or†

(b) it is similar to an earlier trade mark and would be registered for goods or services

identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood

of association of the later trade mark with the earlier trade mark.

(3) A trade mark which—

(a) is identical with or similar to an earlier ‡trade mark, and

(b) is to be registered for goods or services which are not similar to those for which

the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the

State (or, in the case of a Community trade mark, in the Community) and the use of the later

trade mark without due cause would take unfair advantage of, or be detrimental to, the

distinctive character or reputation of the earlier trade mark.

(3) A trade mark which is identical with or similar to an earlier trade mark shall not be

registered if, or to the extent that, the earlier trade mark has a reputation in the State (or, in

the case of a Community trade mark, in the Community) (or, in the case of an EU trade mark,

in the European Union) and the use of the later trade mark without due cause would take

* Patents Amendment Act 2006 (31/2006) † *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier

trade mark.

(3A) Subsection (3) applies irrespective of whether the goods and services for which the

trade mark is to be registered are identical with, similar to, or not similar to those for which

the earlier trade mark is protected.

(4) A trade mark shall not be registered if, or to the extent that, its use in the State is liable to

be prevented—

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an

unregistered trade mark or other sign used in the course of trade; or course of trade, subject

to the condition that the rights to the unregistered trade mark or other sign were acquired

prior to the date of application for registration of the trade mark or date of the priority

claimed for that application and that unregistered trade mark or other sign confers on its

proprietor the right to prohibit the use of a subsequent trade mark; or

(b) by virtue of an earlier right, other than those referred to in subsections (1) to (3) and

paragraph (a), in particular by virtue of the law of copyright, registered designs or any other

law relating to a right to a name, a right of personal portrayal or an industrial property right

property right; or

(c) and to the extent pursuant to European Union legislation or the law of the State providing

for protections of designations of origin and geographical indications—

(i) by virtue of an earlier application for a designation of origin or a geographical indication

prior to the date of application for registration of the trade mark or the date of the priority

claimed for the application, subject to its subsequent registration, and*

(ii) that designation of origin or geographical indication confers on the person authorised

under the relevant law to exercise the rights arising therefrom the right to prohibit the use of

a subsequent trade mark.”, and

(5) Where by virtue of any such rule of law or earlier right as is referred to in subsection (4) a

person would be entitled to prevent the use of a trade mark, that person is in this Act referred

to as the proprietor of an “earlier right” in relation to the trade mark.

(5A) Where an agent or representative of the proprietor of a trade mark applies in his or her

own name, without the proprietor’s consent, for the registration of the trade mark, the

application is to be refused unless the agent or representative justifies that action.

(6) Nothing in this section shall prevent the registration of a trade mark where the proprietor

of the earlier trade mark or other earlier right consents to the registration.

Grounds for refusal or invalidity relating to only some of the goods or services

10A. Where grounds for refusal of registration of a trade mark exist in respect of only some

of the goods or services for which that trade mark has been applied, refusal of registration

shall cover those goods or services only.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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Meaning of “earlier trade mark”.

11.—(1) In this Act an “earlier trade mark” means—

(a) a registered trade mark, an international trade mark or a Community trade mark

which has a date of application for registration earlier than that of the trade mark in

question, taking account (where appropriate) of the priorities claimed in respect of the

trade marks;

(a) a registered trade mark, an international trade mark, a European Union trade mark

or a designation of origin or a geographical indication which has a date of

application for registration earlier than that of the trade mark in question,

taking account (where appropriate) of the priorities claimed in respect of the trade

marks*

(b) a Community trade mark which has a valid claim to seniority from an earlier

registered trade mark or international trade mark, even when the latter trade mark has

been surrendered or allowed to lapse; or

(c) a trade mark which, at the date of application for registration of the trade mark in

question or (where appropriate) of the priority claimed in respect of the application,

was entitled to protection under the Paris Convention or the Agreement establishing

the World Trade Organisation* as a well-known trade mark.

(2) References in this Act to an earlier trade mark include references to a trade mark in

respect of which an application for registration has been made and which, subject to its being

registered, would be an earlier trade mark by virtue of subsection (1) (a) or (b).†

(3) Where the registration of a trade mark specified in subsection (1) (a) or (b) expires, the

trade mark shall continue to be taken into account in determining the registrability of a later

mark for a period of one year after the expiry unless the Controller is satisfied that there was

no bona fide use of the trade mark during the two years immediately preceding the expiry.

Raising of relative grounds in case of honest concurrent use.

12.—(1) This section applies where on an application for the registration of a trade mark it

appears to the Controller—

(a) that there is an earlier trade mark in relation to which any of the conditions set out

in subsections (1) to (3) of section 10 obtains, or

(b) that there is an earlier right in relation to which the condition set out in section 10

(4) is satisfied,

but the applicant shows to the satisfaction of the Controller that there has been honest

concurrent use of the trade mark for which registration is sought.

(2) In a case to which this section applies, the Controller shall not refuse the application by

reason of the earlier trade mark or other earlier right unless objection on that ground is raised

in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(3) For the purposes of this section “honest concurrent use” means such use in the State, by

the applicant or with his consent, as would formerly have amounted to honest concurrent use

for the purposes of section 20 (2) of the Trade Marks Act, 1963 .

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 * Patents Amendment Act 2006 (31/2006)

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(4) Nothing in this section affects—

(a) the refusal of registration on the grounds mentioned in section 8 ; or

(b) the making of an application for a declaration of invalidity under section 52 (2).

Effects of Registered Trade Mark

Rights conferred by registered trade mark.

13.—(1) The proprietor of a registered trade mark Without prejudice to the

rights of proprietors acquired before the filing date or the priority date of the registered trade

mark, the proprietor of that registered trade mark* shall have exclusive rights in the trade

mark and such rights shall be infringed by the use of that trade mark in the State without the

proprietor's consent; and the acts referred to in section 14 , if done without that consent, shall

constitute infringement of the proprietor's rights.

(2) References in this Act to the infringement of a registered trade mark are references to any

infringement of the rights of the proprietor of the registered trade mark.

(2A) (a) Without prejudice to the rights of proprietors acquired before the filing date or the

priority date of the registered trade mark, the proprietor of that registered trade mark

shall be entitled to prevent all third parties from bringing goods, in the course of trade, into

the State, without being released for free circulation there, where such goods, including

the packaging thereof, come from third countries and bear without authorisation a trade mark

which is identical with the trade mark registered in the State, in respect of such goods, or

which cannot be distinguished in its essential aspects from that trade mark.

(b) The entitlement of the trade mark proprietor pursuant to paragraph (a) shall lapse if

during the proceedings to determine whether the registered trade mark has been infringed,

initiated in accordance with the European Union (Customs enforcement of Intellectual

Property Rights) Regulations 2013 (S.I. No. 562 of 2013), evidence is provided by the

declarant or the holder of the goods that the proprietor of the registered trade mark is not

entitled to prohibit the placing of the goods on the market in the country of final destination

(3) The rights of the proprietor of a registered trade mark shall have effect from the date of

registration of the trade mark (as determined under section 45 (3)).

(4) Notwithstanding subsection (3)

(a) no infringement proceedings may be begun before the date of publication of the

registration of the trade mark; and

(b) no offence shall be regarded as committed under section 92 by anything done

before that date.

Reproduction of trademarks in dictionaries

13A. If the reproduction of a trade mark in a dictionary, encyclopaedia or similar reference

work, in print or electronic form, gives the impression that it constitutes the generic name of

the goods or services for which the trade mark is registered, the publisher of the work shall,

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at the request of the proprietor of the trade mark, ensure that the reproduction of the trade

mark is, without delay, and in the case of works in printed form at the latest in the next

edition of the publication, accompanied by an indication that it is a registered trade mark.*

Infringement of registered trade mark.

14.—(1) A person shall infringe a registered trade mark if that person uses in the course of

trade a sign which is identical with the trade mark in relation to goods or services which are

identical with those for which it is registered.

(2) A person shall infringe a registered trade mark if that person uses in the course of trade a

sign where because—

(a) the sign is identical with the trade mark and is used in relation to goods or services

similar to those for which the trade mark is registered, or

(b) the sign is similar to the trade mark and is used in relation to goods or services

identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood

of association of the sign with the trade mark.

(3) A person shall infringe a registered trade mark if that person uses in the course of trade a

sign which—

(a) is identical with or similar to the trade mark, and

(b) is used in relation to goods or services which are not similar to those for which

the trade mark is registered,

where the trade mark has a reputation in the State and the use of the sign, being without due

cause, takes unfair advantage of, or is detrimental to, the distinctive character or the

reputation of the trade mark.

(3) A person shall infringe a registered trade mark if that person uses in the course of trade in

relation to goods or services a sign which is identical with or similar to the trade mark where

a sign which is identical with, or similar to, the trade mark irrespective of whether it is used

in relation to goods or services which are identical with, similar to, or not similar to, those for

which the trade mark is registered where the trade mark has a reputation in the State and the use

of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the

distinctive character or the reputation of the trade mark.†

(4) For the purposes of this section, use of a sign shall include, in particular—

(a) affixing it to goods or the packaging thereof;

(b) offering or exposing goods for sale, putting them on the market or stocking them

for those purposes under the sign, or offering or supplying services under the sign;

(c) importing or exporting goods under the sign; or sign

(d) using the sign on business papers or in advertising.

(e) using the sign as a trade or company name or part of a trade or company name; or

(f) using the sign in comparative advertising in a manner that is contrary to the

European Communities (Misleading and Comparative Marketing Communications)

Regulations 2007 (S.I. No. 774 of 2007).”, and

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(4A) Where the risk exists that the packaging, labels, tags, security or authenticity features or

devices, or any other means to which the trade mark is affixed, could be used in relation to

goods or services and that use would constitute an infringement of the rights of the proprietor

of a trade mark under section 13(1) and 14(4), the proprietor of that trade mark shall have the

right to prohibit the following acts if carried out in the course of trade:

(a) affixing a sign identical with, or similar to, the trade mark on packaging, labels, tags,

security or authenticity features or devices, or any other means to which the mark may be

affixed;

(b) offering or placing on the market, or stocking for those purposes, or importing or

exporting, packaging, labels, tags, security or authenticity features or devices, or any other

means to which the mark is affixed.*

(5) A person who applies a registered trade mark to material intended to be used for labelling

or packaging goods, as a business paper, or for advertising goods or services shall be treated

as a party to any use of the material which infringes the registered trade mark if, when that

person applied the mark, that person knew or had reason to believe that the application of the

mark was not duly authorised by the proprietor or a licensee of the registered trade mark.

(6) Nothing in the preceding provisions of this section shall be construed as preventing the

use of a registered trade mark by any person for the purpose of identifying goods or services

as those of the proprietor or licensee of the registered trade mark; but any such use, otherwise

than in accordance with honest practices in industrial or commercial matters, shall be treated

as infringing the registered trade mark if the use without due cause takes unfair advantage of,

or is detrimental to, the distinctive character or reputation of the trade mark.

Limits on effect of registered trade mark.

15.—(1) A registered trade mark shall not be infringed by the use of another registered trade

mark in relation to goods or services for which the latter is registered, but subject to section

52 (6).

(2) A registered trade mark shall not be infringed by—

(a) the use by a person of his own name or address;

(a) the use of the name or address of a third party, where that third party is a natural

person;

(b) the use of indications concerning the kind, quality, quantity, intended purpose,

value, geographical origin, the time of production of goods or of rendering of the

service or other characteristics of goods or services; or

(b) the use of signs or indications which are not distinctive or which concern the kind,

quality, quantity, intended purpose, value, geographical origin, the time of production

of goods or of rendering of the service or other characteristics of goods or services;

(c) the use of the trade mark where it for the purpose of identifying or referring to

goods or services as those of the proprietor of that trade mark, in particular where that

use is necessary to indicate the intended purpose of a product or service, in particular,

as accessories or spare parts: Provided that such use Provided that such use is in the

course of trade† in accordance with honest practices in industrial and commercial

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matters.

(3) A registered trade mark shall not be infringed by the use in the course of trade in a

particular locality of an earlier right which applies only in that locality.

(4) For the purpose of subsection (3) an “earlier right” means an unregistered trade mark or

other sign continuously used in relation to goods or services by, or by a predecessor in title

of, a person from a date prior to whichever is the earlier of—

(a) the use of the first-mentioned trade mark in relation to those goods or services by

the proprietor or a predecessor in title of the proprietor; and

(b) the registration of the first-mentioned trade mark in respect of those goods or

services in the name of the proprietor or a predecessor in title of the proprietor;

and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use

in that locality is protected by any rule of law, in particular the law of passing off.

Exhaustion of rights conferred by registered trade mark

16.—(1) A registered trade mark shall not be infringed by the use of the trade mark in

relation to goods which have been put on the market in the European Economic Area under

that trade mark by the proprietor of the trade mark or with the consent of the proprietor.

(2) The provisions of subsection (1) shall not apply where there exist legitimate reasons for

the proprietor of the trade mark to oppose further dealings in the goods, in particular, where

the condition of the goods has been changed or impaired after they have been put on the

market.

Use of trade marks*

16A. (1) If, within a period of 5 years following the date of the completion of the registration

procedure, the proprietor has not put the trade mark to genuine use in the State in connection

with the goods or services in respect of which it is registered, or if such use has been

suspended during a continuous 5 year period, the trade mark shall be subject to the provisions

of sections 18A, 43A, 51(1)(a) or 52A(3) and (4), unless there are proper reasons for non-

use.

(2) With regard to trade marks registered under international arrangements and having effect

in the State, the 5 year period referred to in subsection (1) shall be calculated—

(a) from the date when the mark can no longer be rejected or opposed, or

(b) where an opposition has been lodged or when an objection on absolute or relative

grounds has been notified, from the date when a decision terminating the opposition

proceedings or a ruling on absolute or relative grounds for refusal became final or the

opposition was withdrawn.

(3) The date of commencement of the 5 year period in subsection (1) shall be entered in the

register.

(4) Use within the meaning of subsection (1) shall include—

(a) use of the trade mark in a form differing in elements which do not alter the distinctive

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* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

character of the mark in the form in which it was registered, regardless of whether or not the

trade mark as used is also registered in the name of the proprietor, or

(b) affixing of the trade mark to goods or to the packaging thereof in the State solely for

export purposes.

(5) Use of the trade mark with the consent of the proprietor shall be deemed to constitute use

by the proprietor.*

Registration subject to disclaimer or limitation.

17.—(1) A person who applies for the registration of a trade mark or the proprietor of a

registered trade mark may—

(a) disclaim any right to the exclusive use of any specified element of the trade mark,

or

(b) agree that the rights conferred by the registration shall be subject to a specified

territorial or other limitation;

and where the registration of a trade mark is subject to a disclaimer or limitation, the rights

conferred by section 13 shall be restricted accordingly.

(2) If on an application for the registration of a trade mark, it appears to the Controller that

any particular element of the trade mark is not distinctive and the inclusion of the element in

the trade mark could give rise to doubts as to the scope of protection of the trade mark, he

may refuse to accept the application unless the applicant agrees to make a disclaimer in

respect of that element under subsection (1) (a) within such period as the Controller may

specify.

(3) Particulars of any disclaimer or limitation shall be entered in the register.

Infringement Proceedings

Action for infringement.

18.—(1) Where a registered trade mark is infringed, the infringement shall be actionable by

the proprietor of the trade mark.

(2) In an action for infringement of a registered trade mark all such relief by way of damages,

injunctions, accounts or otherwise shall be available to the proprietor as is available in

respect of the infringement of any other property right.

Non-use as defence in action for infringement

18A. (1) The proprietor of a trade mark shall be entitled to prohibit the use of a sign only to

the extent that the proprietor’s rights are not liable to be revoked pursuant to section 51 at the

time the action for infringement is brought.

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(2) If the defendant so requests, the proprietor of the trade mark shall furnish proof that,

during the 5 year period preceding the date of bringing the action for infringement—

(a) the trade mark has been put to genuine use as provided in section 16A, in

connection with the goods or services in respect of which it is registered and which

are cited as justification for the action, or

(b) that there are proper reasons for non-use,

provided that the registration procedure of the trade mark has, at the date of bringing the

action, been completed for not less than 5 years.

Intervening right of the proprietor of a later registered trade mark as

defence in action for infringement

18B. (1) In an action for infringement, the proprietor of a trade mark shall not be entitled to

prohibit the use of a later registered trade mark where that later trade mark would not be

declared invalid pursuant to sections 10(4)(a), 10(4)(b), 52(2A), 53(1), or 52A (3).*

(2) In an action for infringement, the proprietor of a trade mark shall not be entitled to

prohibit the use of a later registered European Union trade mark where that later trade mark

would not be declared invalid pursuant to Articles 60(1), (3) or (4), 61(1) or (2) or 64(2) of

the European Union trade mark regulation.†

(3) Where the proprietor of a trade mark is not entitled to prohibit the use of a later registered

trade mark pursuant to subsection (1) or (2), the proprietor of that later registered trade mark

shall not be entitled to prohibit the use of the earlier trade mark in an action for infringement,

even though that earlier right may no longer be invoked against the later trade mark.‡

Order for erasure &c. of offending sign.

19.—(1) Where a person is found to have infringed a registered trade mark, the Court

appropriate court may make an order requiring him—

(a) to cause the offending sign to be erased, removed or obliterated from any

infringing goods, material or articles in his possession, custody or control, or

(b) if it is not reasonably practicable for the offending sign to be erased, removed or

obliterated, to secure the destruction of the infringing goods, materials or articles in

question.

(2) If an order under subsection (1) is not complied with, or it appears to the Court

appropriate court likely that such an order would not be complied with, the Court appropriate

court may order that the infringing goods, material or articles be delivered to such person as

the Court appropriate court may direct for erasure, removal or obliteration of the sign, or for

destruction, as the case may be.

Order for delivery up of infringing goods, material or articles.

20.—(1) The proprietor of a registered trade mark may apply to the Court appropriate court

for an order for the delivery up to the proprietor, or such other person as the Court

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appropriate court may direct, of any infringing goods, material or articles of which a person

has possession, custody or control in the course of a business or otherwise for the purpose of

dealing in any way (including offering or exposing for sale or hire).

(2) An application for the delivery up of any infringing goods, material or articles shall not

be made after the end of the period specified in section 22 ; and no order shall be made

unless the Court appropriate court also makes, or it appears to the Court appropriate court

that there are grounds for making, an order under section 23 .

(3) A person to whom any infringing goods, material or articles are delivered up in pursuance

of an order under this section shall, if an order under section 23 is not made, retain them

pending the making of an order or the decision not to make an order under that section.

(4) Nothing in this section shall affect any other power of the Court appropriate court*.

Meaning of “infringing goods, material or articles”.

21.—(1) In this Act the expressions “infringing goods”, “infringing material” and “infringing

articles” shall be construed as defined herein.

(2) Goods shall be “infringing goods”, in relation to a registered trade mark, if they or their

packaging bear a sign identical or similar to that mark and either—

(a) the application of the sign to the goods or their packaging was an infringement of

the registered trade mark, or

(b) they have been or are proposed to be imported into the State and the application of

the mark in the State to the goods or their packaging would constitute an infringement

of the registered trade mark, or

(c) the sign has otherwise been used in relation to the goods in such a way as to

infringe the registered trade mark.

(3) Nothing in subsection (2) (b) shall be construed as applying to goods which may lawfully

be imported into the State by virtue of any right created or arising under or by virtue of the

treaties governing the European Union.

(4) Material shall be “infringing material”, in relation to a registered trade mark, if it bears a

sign identical or similar to that mark and either—

(a) it is used for labelling or packaging goods, as a business paper, or for advertising

goods or services, in such a way as to infringe the registered trade mark, or

(b) it is intended to be so used and such use would infringe the registered trade mark.

(5) “Infringing articles”, in relation to a registered trade mark, means articles—

(a) which are specifically designed or adapted for making copies of a sign identical or

similar to that mark, and

(b) which are in the possession, custody or control, of a person who knows or has

reason to believe that they have been or are to be used to produce infringing goods or

material.

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Period after which remedy of delivery up not available.

22.—(1) Subject to the provisions of this section, an application for an order under section 20

may not be made after the end of the period of six years from—

(a) in the case of infringing goods, the date on which the trade mark was applied to

the goods or their packaging;

(b) in the case of infringing material, the date on which the trade mark was applied to

the material; or

(c) in the case of infringing articles, the date on which they were made.

(2) If during the whole or part of the period referred to in subsection (1) the proprietor of the

registered trade mark—

(a) is under a disability, or

(b) is prevented by fraud or concealment from discovering the facts entitling the

proprietor to apply for an order,

an application may be made at any time before the end of the period of six years from the

date on which the proprietor ceased to be under a disability or, as the case may be, could with

reasonable diligence have discovered those facts.

(3) For the purposes of subsection (2) a person is under a disability if he is so for the

purposes of the Statute of Limitations, 1957 .

Order as to disposal of infringing goods, material or articles

23.—(1) Where infringing goods, material or articles have been delivered up in pursuance of

an order under section 20 , an application may be made to the Court appropriate court* —

(a) for an order that they be destroyed or forfeited to such person as the Court

appropriate court thinks fit, or

(b) for a decision that no such order should be made.

(2) In considering what order (if any) should be made, the Court appropriate court shall

consider whether other remedies available in an action for infringement of the registered

trade mark would be adequate to compensate and protect the interests of the proprietor and

any licensee.

(3) Provision may be made by rules of court as to the service of notice on any person having

an interest in the goods, material or articles, and any such person shall be entitled—

(a) to appear in proceedings for an order under this section, whether or not he was

served with notice, and

(b) to appeal against any order made, whether or not he appeared;

and, unless the Court appropriate court otherwise directs, an order shall not take effect until

the end of the period within which notice of an appeal may be given or, if before the end of

that period notice of appeal is duly given, until the final determination or abandonment of the

proceedings on the appeal.

(4) Where there is more than one person interested in the goods, material or articles, the

Court appropriate court shall make such order as it thinks just.

(5) If the Court appropriate court decides that no order should be made under this section, the

person in whose possession, custody or control the goods, material or articles were before

being delivered up shall be entitled to their return.

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(6) References in this section to a person having an interest in goods, material or articles

include references to any person in whose favour an order could be made under section 27 of

the Copyright Act, 1963 . *

(6) References in this section to a person having an interest in goods, material or articles

include references to any person in whose favour an order could have been made under

sections 145 and 264 of the Copyright and Related Rights Act, 2000*

Remedy for groundless threats of infringement proceedings

24.—(1) Where a person threatens another with proceedings for infringement of a registered

trade mark other than in relation to—

(a) the application of the mark to goods,

(b) the importation of goods to which the mark has been applied, or

any person aggrieved may apply to the Court appropriate court† for relief under this section.

(2) The relief which may be applied for as mentioned in subsection (1) is any of the

following:

(a) a declaration that the threats are unjustifiable;

(b) an injunction against the continuance of the threats;

(c) damages in respect of any loss sustained by the threats.

(3) A plaintiff shall be entitled to such relief as is referred to in subsection (2) unless the

defendant shows that the acts in respect of which proceedings were threatened constitute (or

if done would constitute) an infringement of the registered trade mark concerned.

(4) Notwithstanding the provisions of subsection (3), the plaintiff shall be entitled to such

relief as is referred to in subsection (2) if the plaintiff shows that the registration of the trade

mark is invalid or liable to be revoked in a relevant respect.

(5) Notification that a trade mark is registered or that an application for registration has been

made shall not of itself constitute a threat of proceedings for the purposes of this section.

Infringing goods, material or articles: powers of seizure and search.

25.—(1) If the District Court is satisfied by evidence that there is reasonable ground for

believing that infringing goods, material or articles are in the possession, custody or control

of any person in the course of business or otherwise for the purpose of dealing in any way

(including offering or exposing for sale), the District Court may by order authorise a member

of the Garda Síochána to seize the goods, material or articles without warrant and to bring

them before the court.

(2) ‡If a Judge of the District Court is satisfied by information on oath that there is reasonable

ground for suspecting that infringing goods, material or articles are on any premises in the

course of business or otherwise for the purpose of dealing in any way, the Judge may grant a

* S.I. No. 28/2000 Copyright and Related Rights Act, 2000 † Copyright and Other Intellectual Property Law Provisions Act 2019

‡ Patents Amendment Act 2006 (31/2006)

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search warrant authorising a named member of the Garda Síochána not below the rank of

inspector, accompanied by such other members of the Garda Síochána as may be necessary,

to enter on the premises, if need be by force, and to seize any such goods, material or articles

and bring them before the court.

(2) If a Judge of the District Court is satisfied by information on oath that there is reasonable

ground for suspecting that infringing goods, material or articles are on any premises or place

in the course of business or otherwise for the purpose of dealing in any way, the Judge may

grant a search warrant authorising a member of the Garda Síochána, accompanied by such

other members of the Garda Síochána or other person or persons as that member thinks

proper, at any time or times within 28 days from the date of the issue of the warrant on

production, where requested, of that warrant, to enter and search the premises or place *specified in the warrant using reasonable force where necessary, and to do all or any of the

following acts:

(a) to seize any such goods, material or articles;

(b) to make an inventory or prepare other evidence of infringement of a registered trade mark

or potential infringement of a registered trade mark;†

(c) to seize anything found there which that member believes on reasonable grounds may be

required to be used in evidence in any proceedings brought in respect of an offence under this

Act;

(b) to make an inventory or prepare other evidence of infringement of a registered trade mark

or potential infringement of a registered trade mark;

(2A) A warrant issued under this section may authorise persons, including the registered

proprietor or his or her designated representative, to accompany and assist any member of the

Garda Síochána in executing the warrant or in collating any inventory or other evidence.‡

(3) On proof to the District Court that any goods, material or articles brought before the court

under subsection (1) or (2) are infringing goods, material or articles, the court may—

(a) order them to be delivered up to the proprietor of the registered trade mark

concerned;

(b) order them to be destroyed or forfeited to such person as the court thinks fit; or

(c) order them to be dealt with in such other way as the court thinks fit.

(4) The powers of the District Court under this section shall be exercisable by the Judge of

the District Court for the district in which the goods, material or articles are for the time

being or, as the case may be, where the premises or place* concerned are situated.

Registered Trade Mark as Object of Property

Nature of registered trade mark.

26.—A registered trade mark is personal property.

† Patents Amendment Act 2006 (31/2006)

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Jointly owned trade marks.

27.—(1) Where the relations between two or more persons interested in a trade mark are such

that no one of them is entitled, as between himself and the other or others, to use it except—

(a) on behalf of both or all of them, or

(b) in relation to an article with which both or all of them are connected in the course

of trade,

those persons may be registered as joint proprietors of the trade mark.

(2) Except as provided by subsection (1), nothing in this Act shall permit the registration as

joint proprietors of a trade mark of two or more persons who use, or propose to use, the trade

mark independently.

(3) Subject to subsection (4), where, in accordance with subsection (1), two or more persons

are registered as joint proprietors of a trade mark, this Act shall have effect in relation to any

rights to the use of the trade mark vested in those persons as if those rights were vested in a

single person.

(4) The rights of any one of the persons who are registered as joint proprietors of a trade

mark (in this subsection referred to as “the joint owners”) shall be deemed to be infringed by

any other of the joint owners who uses the trade mark in physical or other relation to goods

or services—

(a) in respect of which the trade mark is so registered; but

(b) with which both or all of the joint owners are not and have not been connected in

the course of trade.

Assignment &c. of registered trade mark.

28.— (1) A registered trade mark is transmissible by assignment, testamentary disposition or

operation of law in the same way as other personal property, and shall be so transmissible

either in connection with the goodwill of a business or independently.*

(1) A registered trade mark may be transferred by assignment, testamentary disposition or

operation of law in the same way as other personal property, and shall be so transferrable

either in connection with the goodwill of a business or independently.

(1A) A transfer of a whole business shall include the transfer of the trade mark, except where

there is agreement to the contrary, or circumstances clearly dictate otherwise.

(1B) Subsection (1A) shall apply to the contractual obligation to transfer the undertaking.

(2) An assignment or other transmission other transfer of a registered trade mark may be

partial, that is, limited so as to apply—

(a) in relation to some but not all of the goods or services for which the trade mark is

registered; or

(b) in relation to use of the trade mark in a particular manner or a particular locality.

(3) An assignment of a registered trade mark, or a vesting assent relating to a registered trade

mark, shall not be effective unless it is in writing signed by or on behalf of the assignor or, as

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the case may be, a personal representative; and this requirement may be satisfied in a case

where the assignor or personal representative is a body corporate by the affixing of its seal.

(4) Subsections (1) to (3) shall apply to assignment by way of security as in relation to any

other assignment.

(5) A registered trade mark may be the subject of a charge in the same way as other personal

property.

(6) Nothing in this Act shall be construed as affecting the assignment or other transmission

other transfer* of an unregistered trade mark as part of the goodwill of a business.

Registration of transactions affecting registered trade mark.

29.—(1) On application being made to the Controller in the prescribed manner by—

(a) a person claiming to be entitled to an interest in or under a registered trade mark

by virtue of a registrable transaction, or

(b) any other person claiming to be affected by such a transaction,

particulars of the transaction shall be entered in the register in the prescribed manner.

(2) The following are registrable transactions for the purposes of this Act—

(a) an assignment of a registered trade mark or any right in it;

(b) the grant or assignment of a licence under a registered trade mark;

(c) the granting of any security interest (whether fixed or floating) over a registered

trade mark or any right in or under it;

(ca) matters arising from the operation of law which affect the proprietorship of a

registered trade mark†

(d) the making by a personal representative of a vesting assent in relation to a

registered trade mark or any right in or under it; and

(e) an order of a court the appropriate court‡ or other competent authority transferring

a registered trade mark or any right in or under it.

(3) Until an application has been made for registration of the prescribed particulars of a

registrable transaction—

(a) the transaction shall be ineffective as against a person acquiring a conflicting

interest in or under the registered trade mark in ignorance of it; and

(b) a person claiming to be a licensee by virtue of the transaction shall not have the

protection of section 34 or 35 .

(3) Until an application has been made to enter the particulars of a registrable transaction in

the register pursuant to subsection (1), the transaction shall be ineffective as against a

person acquiring a conflicting interest in or under the registered trade mark in ignorance of

that transaction.§

(4) Where a person becomes the proprietor or a licensee of a registered trade mark by virtue

of a registrable transaction, then unless—

*

† Patents Amendment Act 2006 (31/2006) ‡ Intellectual Property (Miscellaneous Provisions) Act 2014 §§ Copyright and Other Intellectual Property Law Provisions Act 2019

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(a) an application for registration of the prescribed particulars of the transaction is

made before the end of the period of six months beginning with the date of the

transaction, or

(b) the Court is satisfied that it was not practicable for such an application to be made

before the end of that period and that an application was made as soon as practicable

thereafter,

that person shall not be entitled to damages or an account of profits in respect of any

infringement of the registered trade mark occurring after the date of the transaction and

before the application for registration of the prescribed particulars is made.

(4) Where a person becomes the proprietor or a licensee of a registered trade mark by

virtue of a registrable transaction and the trade mark is infringed—

(a) on or after the date of the registrable transaction, and

(b) at a time when no application has been made to enter the particulars of the

registrable transaction in the register pursuant to subsection (1),

the Court the appropriate court* shall not award the person his or her costs in

proceedings for such an infringement of the trade mark unless—

(i) an application for registration of the particulars of the registrable transaction was

made not later than 6 months from the date of the transaction, or

(ii) the Court appropriate court is satisfied that it was not practicable for such an

application to be made in the period referred to in paragraph (i) and that an application

was made as soon as practicable after the expiry of that period.*

(5) Provision may be made by rules with respect to the amendment or deletion of particulars

of registrable transactions entered in the register by virtue of this section.

Trusts and equities.

30.—(1) No notice of any trust (express, implied or constructive) shall be entered in the

register; and the Controller shall not be affected by any such notice.

(2) Subject to the provisions of this Act, equities in respect of a registered trade mark may be

enforced in like manner as in respect of other personal property.

Application for registration of trade mark as an object of property.

31.—(1) The provisions of sections 26 to 30 sections 26 to 30 and 32 to 35 †shall apply, with

the necessary modifications, in relation to an application for the registration of a trade mark

as they apply in relation to a registered trade mark.

(2) In section 29 as it applies in relation to a transaction affecting an application for the

registration of a trade mark, the references to the entry of particulars in the register, and to the

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making of an application to register particulars, shall be construed as references to the giving

of notice to the Controller of those particulars.

(3) The procedure subsequent to the giving of notice as mentioned in subsection (2) shall be

such as may be prescribed by rules.

Licensing

Licensing of registered trade mark.

32.—(1) A licence to use a registered trade mark may be general or limited.

(2) A limited licence may, in particular, apply—

(a) in relation to some but not all of the goods or services for which the trade mark is

registered; or

(b) in relation to use of the trade mark in a particular manner or a particular locality.

(3) A licence shall not be effective unless it is in writing signed by or on behalf of the grantor

and this requirement may be satisfied in a case where the grantor is a body corporate by the

affixing of its seal.

(4) Unless the licence provides otherwise, it shall be binding on a successor in title to the

grantor's interest; and references in this Act to doing anything with, or without, the consent of

the proprietor of a registered trade mark shall be construed accordingly.

(5) Where the licence so provides, a sub-licence may be granted by the licensee; and

references in this Act to a licence or licensee include a sub-licence or sub-licensee.

Exclusive licences.

33.—(1) In this Act an “exclusive licence” means a licence (whether general or limited)

authorising the licensee, to the

exclusion of all other persons, including the person granting the licence, to use a registered

trade mark in the manner authorised by the licence; and the expression “exclusive licensee

shall be construed accordingly.

(2) An exclusive licensee has the same rights against a successor in title who is bound by the

licence as the exclusive licensee has against the person granting the licence.

General provisions as to rights of licensees in case of infringement.

34.—(1) This section has effect with respect to the rights of a licensee in relation to

infringement of a registered trade mark, except where or to the extent that, by virtue of

section 35 (2), the licensee has a right to bring proceedings in the licensee's own name.

(2) A licensee is entitled, unless the licence, or any licence through which the licensee's

interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to

take infringement proceedings in respect of any matter which affects the licensee's interests.

(3) If the proprietor—

(a) refuses to take proceedings when called upon under subsection (2), or

(b) fails to do so within two months after being so called upon,

the licensee may bring the proceedings in his own name as if he were the proprietor.

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(3) Without prejudice to the provisions of the license or the licensing contract, the licensee

may bring proceedings for infringement of a trade mark only if its proprietor consents

thereto.

(4) Where infringement proceedings are brought by a licensee by virtue of this section, the

licensee may not, without the leave of the Court, proceed with the action unless the

proprietor is either joined as a plaintiff or added as a defendant; but this subsection does not

affect the granting of interlocutory relief on an application by a licensee alone.

(4) Where infringement proceedings have been brought by a licensee under subsection (3),

the licensee may not, without the leave of the Court appropriate court, proceed with the

action unless the proprietor is either joined as a plaintiff or added as a defendant.

(4A) A licensee shall, for the purpose of obtaining compensation for damage suffered by

him, be entitled to intervene in infringement proceedings brought by the proprietor of the

trade mark.*

(5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be

liable for any costs in the action unless he takes part in the proceedings.

(6) In infringement proceedings brought by the proprietor of a registered trade mark the

Court appropriate court† shall take into account any loss suffered or likely to be suffered by

licensees; and the Court appropriate court may give such directions as it thinks fit as to the

extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of

licensees.

(7) The provisions of this section shall apply in relation to an exclusive licensee if or to the

extent that the licensee has, by virtue of section 35 (1), the rights and remedies of an assignee

as if the licensee were the proprietor of the registered trade mark.

Exclusive licensee having rights and remedies of assignee.

35.—(1) An exclusive licence may provide that the licensee shall have, to such extent as

may be provided by the licence, the same rights and remedies in respect of matters occurring

after the grant of the licence as if the licence had been an assignment.

(2) Where or to the extent that provision is made as mentioned in subsection (1), the licensee

shall be entitled, subject to the provisions of the licence and to the following provisions of

this section, to bring infringement proceedings, against any person other than the proprietor,

in the licensee's own name.

(2A) The holder of an exclusive licence may bring infringement proceedings if the proprietor

of the trade mark, after formal notice, does not himself bring infringement proceedings

within an appropriate period.‡

(3) Any such rights and remedies of an exclusive licensee shall be concurrent with those of

the proprietor of the registered trade mark; and references to the proprietor of a registered

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trade mark in the provisions of this Act relating to infringement shall be construed

accordingly.

(4) In an action brought by an exclusive licensee by virtue of this section a defendant may

avail himself of any defence which would have been available to him if the action had been

brought by the proprietor of the registered trade mark.

Exercise of concurrent rights.

36.—(1) Where proceedings for infringement of a registered trade mark brought by the

proprietor or an exclusive licensee relate (wholly or partly) to an infringement in respect of

which they have concurrent rights of action, the proprietor or, as the case may be, the

exclusive licensee may not, without the leave of the Court appropriate court*, proceed with

the action unless the other is either joined as a plaintiff or added as a defendant; but this

subsection does not affect the granting of interlocutory relief on an application by a

proprietor or exclusive licensee alone.

(2) A person who is added as a defendant as mentioned in subsection (1) shall not be liable

for any costs in the action unless he takes part in the proceedings.

(3) Where an action for infringement of a registered trade mark is brought which relates

(wholly or partly) to an infringement in respect of which the proprietor and an exclusive

licensee have or had concurrent rights of action—

(a) the Court appropriate court shall in assessing damages take into account—

(i) the terms of the licence, and

(ii) any pecuniary remedy already awarded or available to either of them in

respect of the infringement;

(b) no account of profits shall be directed if an award of damages has been made, or

an account of profits has been directed, in favour of the other of them in respect of the

infringement; and

(c) the Court appropriate court shall, if an account of profits is directed, apportion the

profits between them as the Court appropriate court considers just, subject to any

agreement between them.

(4) The provisions of subsection (3) apply whether or not the proprietor and the exclusive

licensee are both parties to the action; and if they are not both parties the Court appropriate

court may give such directions as it thinks fit as to the extent to which the party to the

proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.

(5) The proprietor of a registered trade mark shall notify any exclusive licensee who has a

concurrent right of action before applying for an order under section 20 ; and the Court

appropriate court may on the application of the licensee make such order under that section

as it thinks fit having regard to the terms of the licence.

(6) The provisions of this section shall have effect subject to any agreement to the contrary

between the exclusive licensee and the proprietor.

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Application for Registered Trade Mark

Application for registration.

37.—(1) An application for registration of a trade mark shall be made to the Controller in

such manner and containing such information as may be prescribed.

(2) The application shall state that the trade mark is being used, by or with the consent of the

applicant, in relation to the goods or services specified in the application, or that the applicant

has a bona fide intention that it should be so used.

(3) The application shall be subject to the payment of the appropriate fee or fees.

Date of filing.

38.—(1) The date of filing of an application for registration of a trade mark is the date on

which the prescribed documents are furnished to the Controller by the applicant; and if those

documents are furnished on different days, the date of filing is the last of those days.

(2) References in this Act to the date of application for registration are to the date of filing of

the application.

Classification of goods and services.

39.(1) Goods and services shall be classified for the purposes of the registration of trade

marks according to a prescribed system of classification; and every trade mark shall be

registered in respect of particular goods or services or in respect of classes of goods or

services.

(2) Any question arising as to the class within which any goods or services fall shall be

determined by the Controller, whose decision shall be final.*

Designation and Classification of goods and services

39. (1) Goods and services shall be classified for the purposes of the registration of trade

marks in conformity with the Nice Agreement Concerning the International Classification of

Goods and Services for the Purposes of the Registration of Marks of 15 June 1957 (herein

referred to as the ‘Nice Classification’).

(2) The goods and services for which protection is sought shall be identified by the applicant

with sufficient clarity and precision to enable the Controller and the public, on that sole basis,

to determine the extent of the protection sought. †

(3) For the purposes of subsection (2), the general indications included in the class headings

of the Nice Classification or other general terms may be used, provided that they comply

with the requisite standards of clarity and precision referred to in this section.

(4) The Controller shall reject an application in respect of indications or terms which are

unclear or imprecise, where the applicant does not suggest an acceptable wording within a

period set by the Controller to that effect.

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(5) The use of general terms, including the general indications of the class headings of the

Nice Classification—

(a) shall be interpreted as including all the goods or services clearly covered by the

literal meaning of the indication or term, and

(b) shall not be interpreted as comprising a claim to goods or services which cannot

be so understood.

(6) Where the applicant requests registration for more than one class, the applicant shall—

(a) group the goods and services according to the classes of the Nice Classification,

(b) precede each group by the number of the class to which that group of goods or

services belongs, and

(c) present them in the order of the classes.

(7) Goods and services shall not be regarded as—

(a) being similar to each other on the ground that they appear in the same class under

the Nice Classification, or

(b) being dissimilar from each other on the ground that they appear in different

classes under the Nice Classification.

(8) Any question arising as to the class within which any goods or services fall shall be

determined by the Controller, whose decision shall be final.*

Priority

Claim to priority of Convention application.

40.—(1) A person who has duly filed an application for protection of a trade mark in a

Convention country (in this Act referred to as a “Convention application”), or the successor

in title to such a person, has a right to priority, for the purpose of registering the same trade

mark under this Act for some or all of the same goods or services, for a period of six months

from the date of filing of the first Convention application.

(2) If the application for registration under this Act is made within the period specified in

subsection (1)

(a) the relevant date for the purposes of establishing which rights take precedence

shall be the date of filing of the first Convention application, and

(b) the registrability of the trade mark shall not be affected by any use of the mark in

the State in the period between that date and the date of the application under this

Act.

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(3) Any filing which in a Convention country is equivalent to a regular national filing, under

its domestic legislation or an international agreement, shall be treated as giving rise to the

right of priority; and for this purpose a “regular national filing” means a filing which is

adequate to establish the date on which the application was filed in that country, irrespective

of the outcome of the application.

(4) A subsequent application concerning the same subject as the first Convention application,

filed in the same Convention country, shall be considered the first Convention application (of

which the filing date is the starting date of the period of priority) if, at the time of the

subsequent application—

(a) the previous application has been withdrawn, abandoned or refused, without

having been laid open to public inspection and without leaving any rights

outstanding; and

(b) it has not yet served as a basis for claiming a right of priority;

and in such a case the previous application may not thereafter serve as a basis for

claiming a right of priority.

(5) Provision may be made by rules as to the manner of claiming a right to priority on the

basis of a Convention application.

(6) A right to priority arising as a result of a Convention application may be assigned or

otherwise transmitted, either with the application or independently; and the reference in

subsection (1) to the applicant's successor in title shall be construed accordingly.

Claim to priority from other relevant overseas application.

41.—(1) This section applies to any country or territory in relation to which the State has

entered into a treaty, convention, arrangement or engagement for the reciprocal protection of

trade marks.

(2) The Government may by order make provision for conferring on a person or the

successor in title to such a person,* who has duly filed an application for protection of a trade

mark in a country or territory to which this section applies a right to priority, for the purpose

of registering the same trade mark under this Act for some or all of the same goods or

services, for a specified period from the date of filing of that application.

(3) In relation to a country or territory to which this section applies, an order under this

section may make provision corresponding to that made by section 40 in relation to

Convention countries or such other provision as appears to the Government to be appropriate.

Registration Procedure

Examination of application.

42.—(1) The Controller shall examine whether an application for registration of a trade mark

satisfies the requirements of this Act (including any requirements imposed by rules); and in

this section those requirements are referred to as “the requirements for registration”.

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(2) If it appears to the Controller that the requirements for registration are not met, the

Controller shall inform the applicant and give the applicant an opportunity, within such

period as the Controller may specify, to make representations or to amend the application.

(3) If the applicant fails to satisfy the Controller that the requirements for registration have

been met, or to amend the application so as to meet them, or fails to respond before the end

of the specified period, the Controller shall refuse to accept the application.

(4) If it appears to the Controller that the requirements for registration are met, the Controller

shall accept the application.

Publication, opposition proceedings and observations.

43.—(1) When an application for registration has been accepted, the Controller shall cause

the application to be published in the Journal.

(2) Any person may, within the prescribed time from the date of the publication of the

application in the Journal, give notice to the Controller of opposition to the registration; and

opposition to the registration on the grounds provided for in section 10 and any such notice shall be

given in writing in the prescribed manner, and shall include a statement of the grounds of

opposition.

(2A) (a) A notice of opposition under subsection (2) may be filed on the basis of one or more

earlier trade marks or other earlier rights, provided that they all belong to the same

proprietor.

(b) A notice of opposition filed on the basis of one or more earlier trade marks or earlier

rights, may be based on part, or the totality, of the goods or services in respect of which

the earlier rights are protected or applied for, and may be directed against part or the totality

of the goods or services in respect of which the contested mark is applied for.

(2B) At any stage following the commencement of opposition proceedings, the parties shall

be granted, at their joint request, a stay in the proceedings for a minimum period of 2 months

from the date of the request, in order to allow for the possibility of a friendly settlement

between the opposing party and the applicant.”,

(3) Where an application has been published in the Journal, any person may, at any time

before the registration of the trade mark, make observations in writing to the Controller as to

whether the trade mark should be registered; and the Controller shall inform the applicant of

any such observations.

(3) Where an application has been published in the Journal, any natural or legal person and

any group or body representing manufacturers, producers, suppliers of services, traders or

consumers may, at any time before the registration of the trade mark, make observations*

in writing to the Controller explaining on which grounds the trade mark should not be

registered; and the Controller shall inform the applicant of any such observations.†

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(4) A person who makes observations as mentioned in subsection (3) shall not thereby

become a party to the proceedings on the application.

(4) Persons and groups or bodies who make observations under subsection (3) shall not be a

party to the proceedings on the application.

Non-use as defence in opposition proceedings

43A. (1) In opposition proceedings pursuant to section 43(2), where at the filing date or date

of priority of the later trade mark, the 5 year period within which the earlier trade mark must

have been put to genuine use as provided for in section 16A had expired, at the request

of the applicant, the proprietor of the earlier trade mark who has given notice of opposition

shall furnish proof—

(a) that the earlier trade mark has been put to genuine use during the 5 year period

preceding the filing date or date of priority of the later trade mark, or

(b) that proper reasons for non-use existed.

(2) In the absence of proof referred to in subsection (1), the opposition shall be rejected.

(3) If the earlier trade mark has been used in relation to only part of the goods or services for

which it is registered, it shall, for the purpose of the examination of the opposition as

provided for in subsection (1), be deemed to be registered in respect of that part of the goods

or services only.

(4) Subsections (1), (2) and (3) shall also apply where the earlier trade mark is an European

Union trade mark and the genuine use of the European Union trade mark shall be determined

in accordance with Article 18 of the European Union trade mark regulation.*

Withdrawal, restriction or amendment of application.

44.—(1) An applicant may at any time by notice in writing withdraw his application or

restrict the goods or services covered by the application; and, if the application has been

published in the Journal, any withdrawal or restriction of the application shall also be

published in the Journal.

(2) Any such withdrawal as is mentioned in subsection (1) shall be irrevocable after the

expiry of three months from the date of notice of the withdrawal.

(3) In a case not falling within subsection (1), an application may be amended, at the request

of the applicant, so long as the amendment does not substantially affect the identity of the

trade mark or extend the goods or services covered by the application and, in particular, an

amendment may be made (subject to that qualification) to correct—

(a) the name or address of the applicant;

(b) errors of wording or of copying; or

(c) obvious mistakes.

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(4) Provision shall be made by rules for the publication of any amendment which affects the

representation of the trade mark, or the goods or services covered by the application, and for

the making of objections by any person claiming to be affected by it.

Registration.

45.—(1) Where an application has been accepted and—

(a) no notice of opposition has been given within the period referred to in section 43

(2), or

(b) all opposition proceedings have been withdrawn or decided in favour of the

applicant,

the Controller shall register the trade mark unless it appears to him, having regard to

matters coming to his notice since accepting the application, that it was accepted in

error.

(2) A trade mark shall not be registered unless any fee prescribed for the registration has been

paid within the prescribed period and, if the fee has not been so paid, the application shall be

deemed to be withdrawn.

(3) A trade mark when registered shall be registered as of the date of filing of the application

for registration; and that date shall be deemed for the purposes of this Act to be the date of

registration.

(4) On the registration of a trade mark the Controller shall publish the registration in the

Journal and issue to the applicant a certificate of registration.

(5) The registration procedure shall be regarded as completed on the date of publication

under subsection (4); and that date shall be entered in the register.

Registration: supplementary provisions.

46.—(1) Provision may be made by rules as to—

(a) the division of an application for the registration of a trade mark into several

applications, each having the same filing date as the original application;*

(a) the division of an application for the registration of a trade mark and for the

division of a registration of a trade mark into several applications or registrations,

each having the same filing date as the original application;†

(b) the merging of separate applications or registrations; and

(c) the registration of a series of trade marks in one registration.

(2) A “series of trade marks” means a number of trade marks which resemble each other as

to their material particulars and differ only in respect of matter of a non-distinctive character

which does not substantially affect the identity of the trade mark.

Duration, Renewal and Alteration of Registered Trade Mark

Duration of registration.

47.—(1) A trade mark shall be registered for a period of ten years from the date of

registration.

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(2) Registration may be renewed in accordance with section 48 for further periods of ten

years.

Renewal of registration.

48.—(1) Subject to payment of the prescribed renewal fee, the registration of a trade mark

may be renewed at the request of the proprietor.

(1A) Where the request is submitted or the fees paid in respect of only some

of the goods or services for which the trade mark is registered, registration shall

be renewed for those goods or services only.*

(2) Provision shall be made by rules for the Controller to inform the proprietor of a registered

trade mark, before the expiry of the registration, of the date of expiry and the manner in

which the registration may be renewed.

(3) Subject to subsection (4), a request for renewal must be made, and the prescribed renewal

fee paid, before the expiry of the registration.

(4) If subsection (3) is not complied with, a request for renewal may be made and the fee

paid within such further period (of not less than six months) as may be prescribed; in which

case the prescribed additional renewal fee must also be paid within that period.

(5) A term of renewal shall take effect from the expiry of the previous registration.

(6) If the registration is not renewed in accordance with the preceding provisions, the

Controller shall remove the trade mark from the register; but provision may be made by rules

for the restoration of the registration of a trade mark which has been removed from the

register, subject to such conditions (if any) as may be prescribed.

(7) The renewal, removal or restoration of the registration of a trade mark shall be published

in the Journal.

Alteration of registered trade mark.

49.—(1) The proprietor of a registered trade mark may apply in the prescribed manner to the

Controller for leave to add to or alter the trade mark in any manner which does not

substantially affect its identity; and the Controller may refuse leave or grant it on such terms

and subject to such limitations as the Controller thinks fit.

(2) In any case where it appears to the Controller expedient to do so, the Controller may

cause an application under subsection (1) to be advertised in the Journal.

(3) If, within the prescribed time from the date of the advertisement of an application under

subsection (2), any person gives notice to the Controller in the prescribed manner of

opposition to the application, the Controller shall, after hearing the parties if so required,

decide the matter.

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(4) Where leave is granted as mentioned in subsection (1) and the trade mark concerned, in

its altered form, has not already been advertised in an advertisement of the application under

subsection (2), the trade mark, in its altered form, shall be advertised in the Journal.

Surrender, Revocation and Invalidity

Surrender of registered trade mark.

50.—(1) A registered trade mark may be surrendered by the proprietor in respect of some or

all of the goods or services for which it is registered.

(2) Provision may be made by rules—

(a) as to the manner and effect of a surrender; and

(b) for protecting the interests of other persons having a right in the registered trade

mark.

Revocation of registration.

51.—(1) The registration of a trade mark may be revoked on any of the following grounds—

(a) that, within the period of five years following the date of publication of the

registration, the trade mark has not been put to genuine use in the State, by or with the

consent of the proprietor, in relation to the goods or services for which it is registered,

and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of five years, and

there are no proper reasons for non-use;

(c) that, in consequence of acts or inactivity of the proprietor, it has become the

common name in the trade for a product or service for which it is registered;

(d) that, in consequence of the use made of it by or with the consent of the proprietor

in relation to the goods or services for which it is registered, it is liable to mislead the

public, particularly as to the nature, quality or geographical origin of those goods or

services.

(2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in

elements which do not alter the distinctive character of the mark in the form in which it was *†registered, in the form in which it was registered, regardless of whether or not the trade

mark in the form as used is also registered in the name of the proprietor ‡and use in the State

includes affixing the trade mark to goods or to the packaging of goods in the State solely for

export purposes.

(3) The registration of a trade mark shall not be revoked on the ground mentioned in

paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is

commenced or resumed after the expiry of the five year period and before the application for

revocation is made; but, for this purpose, any such commencement or resumption of use

occurring after the expiry of the five year period and within the period of three months before

the making of the application shall be disregarded unless preparations for the commencement

or resumption began before the proprietor became aware that the application might be made.

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(4) An application for revocation may be made by any person, and may be made either to the

Controller or to the Court High Court*, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court

High Court, the application must be made to the Court High Court; and

(b) if in any other case the application is made to the Controller, he may at any stage

of the proceedings refer the application to the Court High Court.

(5) Where grounds for revocation exist in respect of only some of the goods or services for

which the trade mark is registered, revocation shall relate to those goods or services only.

(6) Where the registration of a trade mark is revoked to any extent, the rights of the

proprietor shall be deemed to have ceased to that extent as from—

(a) the date of the application for revocation; or

(b) if the Controller or the Court High Court† is satisfied that the grounds for

revocation existed at an earlier date, that date.

(7) Revocation of a trade mark shall be entered in the register and the Controller shall publish

the revocation of a trade mark in the Journal.

Grounds for invalidity of registration.

52.—(1) The registration of a trade mark may be declared invalid on the ground that the trade

mark was registered in breach of section 8 or any of the provisions referred to in that section;

but where a trade mark was registered in breach of subsection (1) (b), (c) or (d) of that

section, it shall not be declared invalid if, in consequence of the use which has been made of

it, it has after registration acquired a distinctive character it has before the date of

application for a declaration of invalidity, acquired a distinctive character in relation to the

goods or services for which it is registered.

(2) The registration of a trade mark may be declared invalid on the grounds—

(a) that there is an earlier trade mark in relation to which any of the conditions set out in

subsections (1) to (3) of section 10 obtains, or subsections (1) to (3A) of section 10 obtains, or”,

(b) that there is an earlier right in relation to which the condition set out in paragraph (a) or

(b) of subsection (4) paragraph (a), (b) or (c) of subsection (4) of that section is satisfied,

unless the proprietor of that earlier trade mark or earlier right has consented to the

registration.

(c) that the trade mark was registered in breach of section 8(4)(a) and section 9, or

(d) that the trade mark was registered in breach of section 10(5A),”‡

(2A) An application for a declaration of invalidity on the basis of an earlier trade mark shall

not succeed at the date of application for invalidation if it would not have been successful at

the filing date or the priority date of the later trade mark for any of the following reasons:

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(a) the earlier trade mark, liable to be declared invalid pursuant to section 8(1)(b), (c)

or (d), had not yet acquired a distinctive character as referred to in section 8(1);

(b) the application for a declaration of invalidity is based on section 10(2) and the

earlier trade mark had not become sufficiently distinctive to support a finding of

likelihood of

confusion within the meaning of section 10(2);

(c) the application for a declaration of invalidity is based on section 10(3) and (3A)

and the earlier trade mark had not yet acquired a reputation within the meaning of

section 10(3) and (3A).

(2B) An application for a declaration of invalidity may be filed on the basis of one or more

earlier rights, provided they all belong to the same proprietor.

(3) An application for a declaration of invalidity may be made by any person, and may be

made either to the Controller or to the Court High Court*, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court

High Court, the application must be made to the Court High Court; and

(b) if in any other case the application is made to the Controller, the Controller may at

any stage of the proceedings refer the application to the Court High Court.

(4) In the case of bad faith in the registration of a trade mark, the Controller may apply to the

Court High Court for a declaration of the invalidity of the registration.

(5) Where the grounds of invalidity exist in respect of only some of the goods or services for

which the trade mark is registered, the trade mark shall be declared invalid as regards those

goods or services only.

(6) Where the registration of a trade mark is declared invalid to any extent, the registration

shall to that extent be deemed never to have been made, provided that this shall not affect

transactions past and closed.

Non-use as defence in proceedings seeking a declaration of invalidity

52A. (1) In proceedings for a declaration of invalidity based on a registered trade mark with

an earlier filing date or priority date, if the proprietor of the later trade mark so requests, the

proprietor of the earlier trade mark shall furnish proof that-

(a) during the 5 year period preceding the date of the application for a declaration of

invalidity, the earlier trade mark has been put to genuine use, as provided for in

section 16A, in connection with the goods or services in respect of which it is

registered and which are cited as justification for the application, or

(b) there are proper reasons for non-use,†

provided that the registration process of the earlier trade mark has at the date of the

application for a declaration of invalidity been completed for not less than 5 years.

* Copyright and Other Intellectual Property Law Provisions Act 2019 † *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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(2) Where, at the filing date or date of priority of the later trade mark, the 5 year period

within which the earlier trade mark was to have been put to genuine use, as provided for in

section 16A, had expired, the proprietor of the earlier trade mark shall, in addition to

the proof required under subsection (1), furnish proof that the earlier trade mark was put to

genuine use during the 5 year period preceding the filing date or date of priority of the later

trade mark, or that proper reasons for non-use existed.

(3) In the absence of the proof referred to in subsections (1) and (2), an application for a

declaration of invalidity on the basis of an earlier trade mark shall be rejected.

(4) If the earlier trade mark has been used in accordance with section 16A in relation to only

part of the goods or services for which it is registered, it shall, for the purpose of the

examination of the application for a declaration of invalidity, be deemed to be registered in

respect of that part of the goods or services only.

(5) Subsections (1) to (4) of this section shall also apply where the earlier trade mark is a

European Union trade mark and genuine use of the European Union trade mark shall be

determined in accordance with Article 18 of the European Union trade mark regulation.*

Effect of acquiescence.

53.—(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced

for a continuous period of five years in the use of a registered trade mark in the State, while

being aware of that use, the proprietor shall no longer be entitled, on the basis of that earlier

trade mark or other right—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in

connection with which it has been so used,

unless the registration of the later trade mark was applied for in bad faith.

(2) Where subsection (1) applies, the proprietor of the later trade mark shall not be entitled to

oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier

right, notwithstanding that the earlier trade mark or right may no longer be invoked against

the proprietor's later trade mark.

Collective Marks

Collective marks.

54.—(1) A collective mark is a mark distinguishing the goods or services of members of the

association which is the proprietor of the mark from those of other undertakings.

(1A) Associations of manufacturers, producers, suppliers of services or traders, which, under

the terms of the law governing them, have the capacity in their own name to have rights and

obligations, to make contracts or accomplish other legal acts, and to sue and be sued, as well

as legal persons governed by public law, may apply for collective marks.†

† *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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(2) The provisions of this Act apply to collective marks subject to the provisions of the First

Schedule .

Certification Marks

Certification marks.

55.—(1) A certification mark is a mark indicating that the goods or services in connection

with which it is used are certified by the proprietor of the mark in respect of origin, material,

mode of manufacture of goods or performance of services, quality, accuracy or other

characteristics.

(2) The provisions of this Act apply to certification marks subject to the provisions of the

Second Schedule.

PART III

Community Trade Marks and International Matters

Community Trade Marks

Meaning of “Community trade mark” and “Community Trade Mark Regulation”.

56.—In this Act—

(a) “Community trade mark” has the meaning given by Article 1 (1) of the

Community Trade Mark Regulation; and

(b) “the Community Trade Mark Regulation” means Council Regulation (EC) No.

40/94 of 20 December, 1993 on the Community trade mark.

Meaning of ‘European Union trade mark’, ‘European Union Trade Mark Regulation’ and

‘Directive’*

56. (1) In this Act—

(a) ‘European Union trade mark’ has the meaning given by Article 1 (1) of the European

Union trade mark regulation;

(b) ‘European Union trade mark regulation’ means regulation (EU) 2017/1001 of the

European Parliament and of the Council of 14 June 20173 on the European Union trade

mark (codification);

(c) ‘Directive’ means Directive (EU) 2015/2436 of the European Parliament and of the

Council of 16 December 20154 to approximate the laws of the Member States relating to

trade marks (Recast).

(2) A word or expression that is used in this Act and that is also used in the EU trade mark

regulation or the Directive shall have the same meaning in this Act as it has in the EU trade

mark regulation or the Directive.*

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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Power to make provision in connection with Community Trade Mark Regulation.

57.—(1) The Minister may by regulations make such provision as he considers appropriate in

connection with the operation of the Community Trade Mark Regulation.

(2) Provision may, in particular, be made with respect to—

(a) the filing of applications for Community trade marks through the Patents Office;

(b) the procedures for determining a posteriori the invalidity, or liability to

revocation, of the registration of a trade mark from which a Community trade mark

claims seniority;

(c) the conversion of a Community trade mark or an application

for a Community trade mark into an application for registration under this Act; and

(d) the designation of Courts in the State having jurisdiction over proceedings arising

out of the Community Trade Mark Regulation.

(3) Without prejudice to the generality of subsection (1), provision may be made by

regulations under this section making in relation to the list of professional representatives

maintained in pursuance of Article 89 of the Community Trade Mark Regulation, and

persons on that list, provision corresponding to that made by, or capable of being made

under, sections 84 to 90 in relation to the register of trade mark agents and registered trade

mark agents.

(4) Section 24 (remedy for groundless threats of infringement proceedings) and Part VI

(offences) shall apply in relation to a Community trade mark as they apply in relation to a

registered trade mark.†

The Madrid Protocol: International Registration

The Madrid Protocol.

58.—In this Act—

the Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the

International Registration of Marks, adopted at Madrid on 27th June, 1989;

the International Bureau” has the meaning given by Article 2 (1) of that Protocol; and

international trade mark” means a trade mark which is entitled to protection in the State

under that Protocol.

Power to make provision giving effect to Madrid Protocol.

59.—(1) The Minister may by regulations make such provision as he considers appropriate

for giving effect in the State to the provisions of the Madrid Protocol.

(2) Provision may, in particular, be made with respect to—

(a) the filing of applications for international registrations through the Patents Office

as office of origin;

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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(b) the procedures to be followed where the basic application or registration in the

State fails or ceases to be in force;

(c) the procedures to be followed where the Patents Office receives from the

International Bureau a request for extension of protection to the State;

(d) the effects of a successful request for extension of protection to the State;

(e) the transformation of an international registration or an application for an

international registration into a national application for registration;

(f) the communication of information to the International Bureau;

(g) the payment of fees and amounts prescribed in respect of applications for

international registrations, extensions of protection and renewals.

(3) Section 24 (remedy for groundless threats of infringement proceedings); and Part VI

(offences) shall apply in relation to an international trade mark as they apply in relation to a

registered trade mark.

The Paris Convention: Supplementary Provisions

The Paris Convention.

60.—(1) In this Act—

(a) “the Paris Convention” means the Paris Convention for the Protection of

Industrial Property of March 20th, 1883, as amended or supplemented by any

protocol to that Convention which is for the time being in force in the State;

and

(aa) “Agreement establishing the World Trade Organisation” means the

Agreement establishing the World Trade Organisation done at Marrakesh on

15 April 1994, as amended or supplemented by any protocol to that

Agreement which is for the time being in force in the State;**

(b) a “Convention country” means a country, other than the State, which is a

party to that Convention the Paris Convention or the Agreement establishing

the World Trade Organisation.

(2) The Minister may by order make such amendments of this Act and rules made under this

Act as appear to the Minister appropriate in consequence of any revision or amendment of

the Paris Convention or the Agreement establishing the World Trade Organisation after the

passing of this Act.

Protection of well-known trade marks: Article 6bis

61.—(1) References in this Act to a trade mark which is entitled to protection under the Paris

Convention or the Agreement establishing the World Trade Organisation as a well-known

trade mark are to a mark which is well known in the State as being the mark of—

(a) a national of a Convention country, or

(b) a person who is domiciled in, or has a real and effective industrial or commercial

establishment in, a Convention country,

whether or not that person carries on business, or has any goodwill, in the State; and

references to the proprietor of such a mark shall be construed accordingly.

* Patents Amendment Act 2006 (31/2006)

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(2) Subject to section 53 , the proprietor of a trade mark which is entitled to protection under

the Paris Convention or the Agreement establishing the World Trade Organisation* as a well-

known trade mark shall be entitled to restrain by injunction the use in the State of a trade

mark which, or the essential part of which, is identical or similar to the proprietor's mark, in

relation to identical or similar goods or services, where the use is likely to cause confusion.

(3) Nothing in subsection (2) shall affect the continuation of any bona fide use of a trade

mark begun before the commencement of this section.

National emblems &c. of Convention countries: Article 6ter

62.—(1) A trade mark which consists of or contains the flag of a Convention country shall

not be registered without the authorisation of the competent authorities of that country, unless

it appears to the Controller that use of the flag in the manner proposed is permitted without

such authorisation.

(2) A trade mark which consists of or contains the armorial bearings or any other state

emblem of a Convention country which is protected under the Paris Convention or the

Agreement establishing the World Trade Organisation shall not be registered without the

authorisation of the competent authorities of that country.

(3) A trade mark which consists of or contains an official sign or hallmark adopted by a

Convention country and indicating control and warranty shall not, where the sign or hallmark

is protected under the Paris Convention or the Agreement establishing the World Trade

Organisation, be registered in relation to goods or services of the same or a similar kind as

those in relation to which it indicates control and warranty, without the authorisation of the

competent authorities of the country concerned.

(4) The provisions of this section as to national flags and other state emblems and official

signs or hallmarks apply equally to anything which, from a heraldic point of view, imitates

any such flag or other emblem, sign or hallmark.

(5) Nothing in this section prevents the registration of a trade mark on the application of a

national of a country who is authorised to make use of a state emblem or official sign or

hallmark of that country, notwithstanding that it is similar to that of another country.

(6) Where, by virtue of this section, the authorisation of the competent authorities of a

Convention country is or would be required for the registration of a trade mark, those

authorities shall be entitled to restrain by injunction any use of the mark in the State without

their authorisation.

Emblems &c. of certain international organisations: Article 6ter.

63.—(1) This section applies to—

(a) the armorial bearings, flags or other emblems, and

(b) the abbreviations and names,

of international intergovernmental organisations of which one or more Convention

countries are members.

(2) A trade mark which consists of or contains any such emblem, abbreviation or name which

is protected under the Paris Convention or the Agreement establishing the World Trade

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Organisation* shall not be registered without the authorisation of the international

organisation concerned, unless it appears to the Controller that the use of the emblem,

abbreviation or name in the manner proposed—

(a) is not such as to suggest to the public that a connection exists between the

organisation and the trade mark; or

(b) is not likely to mislead the public as to the existence of a connection between the

user and the organisation.

(3) The provisions of this section as to emblems of an international organisation apply

equally to anything which, from a heraldic point of view, imitates any such emblem.

(4) Where, by virtue of this section, the authorisation of an international organisation is or

would be required for the registration of a trade mark, that organisation shall be entitled to

restrain by injunction any use of the mark in the State without its authorisation.

(5) Nothing in this section affects the right of a person whose bona fide use of the trade mark

in question began before 9th June, 1967 (when the relevant provisions of the Paris

Convention entered into force in relation to the State).

Notification under Article 6ter of the Convention.

64.—(1) For the purposes of section 62 state emblems of a Convention country (other than

the national flag) and official signs or hallmarks shall be regarded as protected under the

Paris Convention only if, or to the extent that—

(a) the country in question has notified the State in accordance with Article 6ter (3) of

the Convention that it desires to protect the emblem, sign or hallmark;

(b) the notification remains in force; and

(c) the State has not objected to it in accordance with Article 6ter (4) or any such

objection has been withdrawn.

(2) For the purposes of section 63 , the emblems, abbreviations and names of an international

organisation shall be regarded as protected under the Paris Convention only if, or to the

extent that—

(a) the organisation in question has notified the State in accordance with Article 6ter

(3) of the Convention that it desires to protect that emblem, abbreviation or name;

(b) the notification remains in force; and

(c) the State has not objected to it in accordance with Article 6ter (4) or any such

objection has been withdrawn.

(3) Notification under Article 6ter (3) of the Paris Convention shall have effect only in

relation to applications for registration made more than two months after the receipt of the

notification.

(4) The Controller shall keep and make available for public inspection by any person, at all

reasonable hours and free of charge, a list of—

(a) the state emblems and official signs or hallmarks, and

* Patents Amendment Act 2006 (31/2006)

Unofficial consolidated version

(b) the emblems, abbreviations and names of international organisations,

which are for the time being protected under the Paris Convention by virtue of notification

under Article 6ter (3).

(5) A reference in this section to Article 6ter of the Paris Convention shall be read as a

reference to that Article as applied by the Agreement establishing the World Trade

Organisation*.

Acts of agent or representative: Article 6septies.

65.—(1) The following provisions apply where an application for registration of a trade mark

is made by a person who is an agent or representative of a person who is the proprietor of the

mark in a Convention country and the application is made without the proprietor's

authorisation.

(2) Where the proprietor opposes the application, registration shall be refused.

(3) Where the application (not being so opposed) is granted, the proprietor may—

(a) apply for a declaration of the invalidity of the registration; or

(b) apply for the rectification of the register so as to substitute the proprietor's name

as the proprietor of the registered trade mark.

(4) The proprietor may (notwithstanding the rights conferred by this Act in relation to a

registered trade mark) apply to the Court High Court† to restrain by injunction any use of the

trade mark in the State which is not authorised by the proprietor.

(5) Subsections (2), (3) and (4) shall not apply if, or to the extent that, the agent or

representative justifies his action.

(6) An application under subsection (3) (a) or (b) must be made within three years of the

proprietor becoming aware of the registration; and no injunction shall be granted under

subsection (4) in respect of a use in which the proprietor has acquiesced for a continuous

period of three years or more.

PART IV

Administrative Provisions

The Register

The register.

* Patents Amendment Act 2006 (31/2006)

† Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

66.—(1) The Controller shall keep a Register of Trade Marks; and references in this Act to

registration (in particular, in the expression “registered trade mark”) are, unless the context

otherwise requires, to registration in the register.

(2) There shall be entered in the register in accordance with this Act—

(a) registered trade marks;

(b) particulars of registrable transactions affecting a registered trade mark; and

(c) such other matters as may be prescribed.

(3) The register shall be kept in such form as may be prescribed, and provision shall in

particular be made for—

(a) public inspection of the register; and

(b) the supply of certified or uncertified copies of, or extracts from, entries in the

register.

Rectification or correction of the register.

67.—(1) Any person having a sufficient interest may apply for the rectification of an error or

omission in the register:

Provided that an application for rectification may not be made in respect of a matter affecting

the validity of the registration of a trade mark.

(2) An application for rectification may be made either to the Controller or to the Court High

Court*, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court

High Court, the application must be made to the Court High Court; and

(b) if in any other case the application is made to the Controller, he may at any stage

of the proceedings refer the application to the Court High Court.

(3) Unless the Controller or the Court High Court otherwise directs, the effect of rectification

of the register is that the error or omission in question shall be deemed never to have been

made.

(4) The Controller may (of his own motion) correct any error made by him in any entry in the

Register but, before doing so, he shall give notice of the proposed correction to any person

who appears to him to be concerned.

(5) The Controller may, on request made in the prescribed manner by the proprietor of a

registered trade mark—

(a) enter any change in the proprietor's name or address as recorded in the register;

(b) amend the specification of the goods in respect of which a trade mark is

registered, provided that the amendment does not in any way extend the rights given

by the existing registration of the trade mark; or

(c) enter a disclaimer or memorandum relating to a trade mark which does not in any

way extend the rights given by the existing registration of the trade mark.

(6) The Controller may, on request made in the prescribed manner by the licensee of a

registered trade mark, enter any change in the licensee's name or address as recorded in the

register.

* Copyright and Other Intellectual Property Law Provisions Act 2019

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(7) The Controller may remove from the register matter appearing to him to have ceased to

have effect.

Adaptation of entries to new classification.

68.—(1) Provision may be made by rules authorising the Controller to do such things as the

Controller considers necessary to implement any amended or substituted classification of

goods or services for the purposes of the registration of trade marks.

(2) Provision may, in particular, be made for the amendment of existing entries on the

register so as to accord with the new classification.

(3) Any such power of amendment shall not be exercised so as to extend the rights conferred

by the registration, except where it appears to the Controller that compliance with this

requirement would involve undue complexity and that any extension would not be substantial

and would not adversely affect the rights of any person.

(4) The rules may empower the Controller—

(a) to require the proprietor of a registered trade mark, within such time as may be

prescribed, to file a proposal for amendment of the register; and

(b) to cancel or refuse to renew the registration of the trade mark in the event of the

proprietor failing to do so.

(5) A proposal under subsection (4) (a) shall be advertised, and may be opposed, in such

manner as may be prescribed.

Powers and Duties of the Controller

Power to require use of forms.

69.—(1) The Controller may require the use of such forms as he may direct for any purpose

relating to the registration of a trade mark or any other proceedings before the Controller

under this Act.

(2) The forms, and any directions of the Controller with respect to their use, shall be

published in the Journal.

Information about applications and registered trade marks.

70.—(1) After publication of an application for registration of a trade mark, the Controller

shall on request provide a person with such information as may be prescribed and permit him

to inspect such documents as may be prescribed relating to the application or to any

registered trade mark resulting from it.

(2) A request for the purposes of subsection (1) must be made in the prescribed manner and

be accompanied by the appropriate fee (if any).

(3) Before publication of an application for registration of a trade mark, documents or

information constituting or relating to the application shall not be published by the Controller

or communicated by the Controller to any person except—

(a) in such classes of case and to such extent as may be prescribed; or

Unofficial consolidated version

(b) with the consent of the applicant;

but subject to the following provisions of this section.

(4) Where a person has been notified—

(a) that an application for registration of a trade mark has been made, and

(b) that the applicant will if the application is granted bring proceedings against that

person in respect of acts done after publication of the application,

that person may make a request under subsection (1) notwithstanding that the application has

not been published and that subsection shall apply accordingly.

Exercise of discretionary powers by Controller.

71.—Where any discretionary power is, by or under this Act, given to the Controller, that

power shall not be exercised adversely to any applicant for or proprietor of a trade mark or to

any party in any proceedings before the Controller, without that applicant, proprietor or party

being given an opportunity of being heard as regards the exercise of that power.

Costs and security for costs.

72.—(1) The Controller may, in any proceeding before him under this Act, order the

payment to any party of such costs (if any) as the Controller may consider reasonable and

direct how and by what party they are to be paid; and any such order may, by leave of the

Court High Court*, be enforced in the same manner as a judgment or order of the Court High

Court to the same effect.

(2) Where, under this Act, a party who neither resides nor carries on business in the State or

in any other state which may be prescribed is a party to any proceedings before the

Controller, the Controller or, in the case of any appeal, the Court High Court, may require

that party to give security for the costs of the proceedings.

(3) If a requirement under subsection (2) is not complied with, the Controller or the Court

High Court, as may be appropriate, may treat the proceedings as abandoned.

Evidence before the Controller.

73.—In subsection (1) of section 92 of the Patents Act, 1992 (which relates to evidence in

proceedings before the Controller under that Act or any other enactment) after the words

“before the Controller” there shall be inserted “(including proceedings under the Trade

Marks Act, 1996)”.

Exclusion of liability in respect of official acts.

74.—(1) The Controller shall not be taken to warrant the validity of the registration of a trade

mark under this Act or under any treaty, convention, arrangement or engagement to which

the State is a party.

(2) The Controller shall not have any liability by reason of, or in connection with, any

examination required or authorised by this Act, or any such treaty, convention, arrangement

or engagement, or any report or other proceedings consequent on such examination.

* Copyright and Other Intellectual Property Law Provisions Act 2019

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(3) No proceedings shall lie against an officer of the Controller in respect of any matter for

which, by virtue of this section, the Controller is not liable.

Content of Controller's annual report.

75.—In the report on the execution of the provisions of this Act included in the Controller's

annual report, prepared in accordance with section 103 of the Patents Act, 1992 , there shall

be included a report on the discharge of the Controller's functions in relation to the Madrid

Protocol.

Legal Proceedings and Appeals

Registration to be prima facie evidence of validity.

76.—In all legal proceedings relating to a registered trade mark (including proceedings for

rectification of the register) the registration of a person as proprietor of a trade mark shall be

prima facie evidence of the validity of the original registration and of any subsequent

assignment or other transmission of it.

Certificate of validity of contested registration.

77.—(1) If, in proceedings before the Court High Court*, the validity of the registration of a

trade mark is contested and it is found by the Court High Court that the trade mark is validly

registered, the Court High Court may give a certificate to that effect.

(2) If the Court High Court gives such a certificate and in subsequent proceedings—

(a) the validity of the registration is again questioned, and

(b) the proprietor obtains a final order or judgment in the proprietor's favour,

the proprietor shall be entitled to his costs as between solicitor and client unless the Court

High Court otherwise directs.

(3) Subsection (2) does not extend to the costs of an appeal in any proceedings.

Controller's appearance in court proceedings.

78.—(1) In any proceedings before the Court High Court (including an appeal) which

involve or relate to—

(a) the revocation of the registration of a trade mark, or

(b) a declaration of the invalidity of the registration of a trade mark, or

(c) the rectification of the register, or

(d) any other matter in which the relief sought would affect the register,

the Controller shall be entitled to appear and be heard, and shall appear if so directed by the

Court High Court.

(2) Unless otherwise directed by the Court High Court, in any proceedings before the Court

High Court the Controller may instead of appearing submit to the Court High Court a

statement in writing signed by the Controller, giving particulars of—

(a) any proceedings before the Controller in relation to the matter in issue;

(b) the grounds of any decision given by the Controller affecting it;

(c) the practice of the Patents Office in like cases; or

* Copyright and Other Intellectual Property Law Provisions Act 2019

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(d) such matters relevant to the issues and within the Controller's knowledge as the

Controller thinks fit;

and the statement shall be deemed to form part of the evidence in the proceedings.

79.—(1) Unless otherwise provided by rules of court, within the period of three months from

the date of a decision of the Controller under this Act, an appeal shall lie from the decision to

the Court.

(1) (a) Save as otherwise provided by this Act and subject to paragraph (b), except by leave

of the Court High Court, an appeal shall lie to the Court High Court from a decision of the

Controller under this Act within three months from the date of the decision.

(b) Where a written statement of the grounds of the decision of the Controller, in the exercise

of his discretionary power, has been requested in the prescribed manner and within the

prescribed period by a party to the proceedings, the period of three months shall begin on the

date on which the written statement is furnished to the party requesting it.*

(2) On an appeal under this section—

(a) the Controller shall be entitled to appear and be heard, and shall appear if so

directed by the Court High Court†: and

(b) the Court High Court may exercise any power which could have been exercised

by the Controller in the proceedings from which the appeal is brought.

(3) By leave of the Court High Court, an appeal from a decision of the Court High Court

under this section shall lie to the Supreme Court on a specified point of law.

No award of costs to or against the Controller.

80.—In any proceedings before the Courts any court under this Act, the Controller shall not

be awarded or be ordered to pay costs.

Rules and Fees

Power of Minister to make rules.

81.—(1) The Minister may make rules—

(a) for the purposes of any provision of this Act authorising the making of rules with

respect to any matter; and

(b) for prescribing anything authorised or required by any provision of this Act to be

prescribed,

and generally for regulating practice and procedure under this Act.

(2) Without prejudice to the generality of subsection (1), provision may, in particular, be

made by rules under this section—

(a) as to the manner of filing of applications and other documents;

(b) requiring and regulating the translation of documents and the filing and

authentication of any translation;

(c) as to the service of documents;

(d) authorising the rectification of irregularities of procedure; and

* Patents Amendment Act 2006 (31/2006)

† Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

(e) prescribing time limits for anything required to be done in connection with any

proceeding under this Act, and providing for the extension of any such limit (whether

or not it has already expired).

Fees.

82.—(1) There shall be charged by the Controller and paid in respect of applications and

registration and other matters under this Act, such fees as may from time to time be

prescribed by the Minister with the sanction of the Minister for Finance.

(2) Provision may be made by rules to enable the payment of a single fee in respect of two or

more matters.

(3) All fees charged by the Controller under this section shall be collected and accounted for

in such manner as shall be determined by the Minister with the consent of the Minister for

Finance.

(4) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under

this section.

PART V

Trade Mark Agents

Authorised agent may act.

83.—(1) Subject to rules made under section 90 , whenever, under this Act, any act has to be

done by or to any person in connection with the registration of a trade mark or any procedure

relating to a registered trade mark, the act may be done by or to an agent—

(a) who is authorised by that person orally or in writing; and

(b) who is a registered trade mark agent.

(b) who is—

(i) a registered trade mark agent, or

(ii) a person referred to in subsection (4A) of section 85 and

the relevant provisions of that section with regard to the person’s acting as

agent in the foregoing circumstances are complied with.”, and*

(2) A person duly authorised by another person under subsection (1) to act as his registered

trade mark agent may (subject to any provision to the contrary in any agreement between the

agent and that person), on giving notice to the Controller and the other person, cease to act as

registered trade mark agent for the other person.

(2) A person referred to in paragraph (b)(i) or (ii) of subsection (1) who is duly authorised by

another person under that section to act as his agent may (subject to any provision to the

* S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

Designs Regulations 2007

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016

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contrary in any agreement between the person so authorised and the other person), on giving

notice to the Controller and the other person, cease to act as agent for the other person*.

Register of Trade Mark Agents.

84.—The Register which, immediately before the commencement of this section, was known

as the Register of Trade Mark Agents shall continue to be known as such and to be

maintained by the Controller; and in this Part—

(a) “the Register” means the Register of Trade Mark Agents;

(b) “registered trade mark agent” means a person whose name is entered in the

Register; and

(c) “registration”, in relation to a person who is or has been a registered trade mark

agent, means the entry of that person's name in the Register.

Business to be carried on only by registered trade mark agents &c.

85.—(1) Subject to the provisions of this section, an individual who is not a registered trade

mark agent shall not—

(a) carry on a business (otherwise than in partnership) under any name or other

description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold himself out, or permit

himself to be described or held out, as a registered trade mark agent.†

(1) Subject to the provisions of the section-

(a) a person established in the State shall not carry on the business of acting as a

trade mark agent in the State unless that person is for the time being registered in the

Register;

(b) a person acting for gain shall not practise, describe himself or hold himself out as

a registered trade mark agent or trade mark agent, or permit himself to be so

described or held out, unless that person is for the time being registered in the

Register.

(2) A partnership shall not—

(a) carry on a business under any name or other description which contains the words

registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold itself out or permit itself to

be described or held out, as a firm of registered trade mark agents,

unless all the partners are registered trade mark agents or the partnership satisfies such

conditions as may be prescribed for the purposes of this section.

(3) A body corporate shall not—

(a) carry on a business (otherwise than in partnership) under any name or other

description which contains the words “registered trade mark agent”, or

(b) in the course of a business otherwise describe or hold itself out, or permit itself to

be described or held out, as a registered trade mark agent,

† *S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016

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unless all the directors of the body corporate and any manager who is not also a director are

registered trade mark agents or the body satisfies such conditions as may be prescribed for

the purposes of this section.

(4) With a view to the fulfilment by the Government on behalf of the State of any

international agreement to which the State is a party, the Minister may permit any person

who is not a registered trade mark agent but who is a citizen of a state which is also a party to

that international agreement, upon application made by that person, to act on behalf of others

in relation to trade marks subject to any conditions that the Minister considers appropriate.

(4A) Notwithstanding subsections (1) to (3) but subject to subsections (4B) to (4E), a person

established in a Member State of the European Community (other than the State) and

qualified under the law of that state to act as a trade mark agent in that state may carry on the

business of acting as a trade mark agent for others in connection with the registration of a

trade mark or any procedure relating to a registered trade mark.

(4A) Notwithstanding subsection (1) but subject to subsections (4B) to (4E), a person

established in another EEA state and qualified under the law of that state to act as a trade

mark agent in that state may carry on the business of acting as a trade mark agent for others

in connection with the registration of a trade mark or any procedure relating to a registered

trade mark

(4B) On or before the first occasion on which a person acts, in reliance on subsection (4A),

on behalf of another before the Controller in connection with the registration of a trade mark

or any procedure relating to a registered trade mark, the person shall provide to the Controller

such evidence as may be prescribed relating to—

(a) the person’s being established in another Member State EEA state

(b) the person’s being qualified under the law of that state to act as a trade mark agent

in that state, and

(c) whichever of the following is appropriate—

(i) the person’s nationality, or

(ii) the person’s falling within paragraph (b) of the definition of ‘person’ in

subsection (4F).*

(4C) In acting, in reliance on subsection (4A), on behalf of another in connection with the

registration of a trade mark or any procedure relating to a registered trade mark, the person †shall use the applicable professional title (if any) but its use in the State shall be subject to

the following requirements—‡

(a) the title is to be expressed in the official language or one of the official languages

of the Member State EEA state referred to in subsection (4A), and

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 *

S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

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(b) in a case where the language in which the title is expressed is also an official

language of the State, the use of the title is not such as is likely to be understood as

indicating that the person is a trade mark agent registered under this Act.

(4D) It shall be sufficient compliance with subsection (4C)(b) if the use of the title concerned

is accompanied by an indication of the Member State EEA state in which the person

concerned is established as a trade mark agent.

(4E) If there is no applicable professional title, then the person, in acting as mentioned in

subsection (4C), shall indicate that the person possesses the applicable qualifications and

those qualifications shall be expressed in the official language or one of the official

languages of the Member State EEA state referred to in subsection (4A).

(4F) In this section—

‘applicable professional title’, in relation to a person, means the professional title that, by

virtue of the person’s being qualified to act as a trade mark agent in the Member State EEA

state referred to in subsection (4A), the person is entitled to use in that state;

‘applicable qualifications’, in relation to a person, means the qualifications that the person

must possess, under the law of the Member State EEA state referred to in subsection (4A) so

as to be qualified to act as a trade mark agent in that state;

‘person’ means—

(a) in the case of an individual, a national of a Member State of the European

Community, an EEA state and

(b) in the case of a person which is not an individual, a company or firm (within the

meaning of Article 48 of the Treaty establishing the European Community) formed in

accordance with the law of a Member State of the European Community and having its

registered office, central administration or principal place of business within the European

Community*. an EEA state and having its registered office, central administration or

principal place of business within an EEA state.

(5) The legal personal representative of a deceased registered trade mark agent may carry on

the business or practice of the deceased agent for a period not exceeding three years from the

agent's death, or for such further period (if any) as the Court High Court† allows if the

personal representative—

(a) is authorised by the Court High Court to manage the business or practice; or

(b) employs another person who is so authorised to manage the business or practice

on behalf of the personal representative.

(6) Any person who contravenes any provision of this section shall be liable on summary

conviction to a fine not exceeding £500 class D fine in the case of a first offence and, in the

* S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

Designs) Regulations 2007

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 *

Copyright and Other Intellectual Property Law Provisions Act 2019

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case of a second or subsequent offence, £1,000 a class C fine; and, notwithstanding section

10 (4) of the Petty Sessions (Ireland) Act, 1851, proceedings for an offence under this section

may be commenced at any time within twelve months from the date of the offence.

(7) Nothing in this Act shall be construed as prohibiting solicitors or barristers from taking

such part in proceedings under this Act as has heretofore been taken by solicitors or barristers

in connection with a trade mark or any procedure relating to a trade mark or the registration

thereof.

(8) A registered trade mark agent shall not be guilty of an offence under section 58 of the

Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by

persons not legally qualified), by reason only of the preparation by the agent of—

(a) a deed assigning the property in a trade mark application or trade mark; or

(b) any document (not being a deed) for use in proceedings under this Act before the

Controller or the Court appropriate court.

(9) No offence is committed under any enactment restricting the use of certain expressions in

reference to any person not qualified to act as a solicitor by use of the term “Community

Trade Mark Attorney” “European Union or EEA Trade Mark Attorney”*† in reference to a

Registered Trade Mark Agent.

Entitlement to be registered as trade mark agent.

86.—(1) Any person who—

(a) resides in the State or in such other state as may be prescribed,

(b) has a place of business in the State,

(a) resides in the European Community,

(b) has a place of business in the European Community‡,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be a registered trade mark agent and a partnership shall be so eligible if

every partner is registered in accordance with the provisions of this section; and, on

application in the prescribed form and manner and on payment of the prescribed fee, a person

or partnership so eligible shall be registered.

(a) resides in the State or in an EEA state,

(b) has a place of business in the State or in an EEA state,

(c) possesses the prescribed educational and professional qualifications, and

(d) complies with the prescribed conditions,

shall be eligible to be a registered trade mark agent and a person so eligible shall, on

application in the prescribed form and manner and on payment of the prescribed fee, be so

registered.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 † *S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016

Copyright and Other Intellectual Property Law Provisions Act 2019

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(2) Persons and partnerships whose names were entered in the Register under the Act of 1963

immediately before the commencement of this Act shall continue to be registered trade mark

agents.*

A person or partnership whose name was entered in the Register of Trade Mark Agents

immediately before the commencement of these Regulations shall continue to be registered

in the Register of Trade Mark Agents.*

Removal from Register.

87.—The Controller may, upon the application of any person who is a registered trade mark

agent, remove that person's name from the Register.

Suspension and erasure of registration of trade mark agent.

88.—(1) Where, in the opinion of the Controller, a person who is a registered trade mark

agent ceases to be eligible to be registered or has been guilty of conduct disgraceful to that

person in the capacity of a registered trade mark agent, the Controller may, after giving that

person an opportunity to be heard, decide that the name of that person should be erased from

the Register or that, during a period of specified duration, that person's registration should not

have effect.

(2) On making a decision under subsection (1), the Controller shall forthwith send by post to

the person to whom the decision relates (in this section referred to as “the person in default”),

at that person's address as stated in the Register, a notice in writing stating the decision, the

date thereof and the reason therefor.

(3) On giving notice to the Controller in the prescribed manner, the person in default may,

within the period of 21 days beginning on the date of the decision in question, apply to the

Court High Court† for cancellation of the decision; and, if that person so applies, the Court

High Court, on hearing the application, may either—

(a) cancel the decision, or

(b) declare that it was proper for the Controller to make a decision under subsection

(1) in relation to the person in default and either (as the Court High Court may

consider proper)—

(i) direct the Controller to erase the name of the person in default from the

Register; or

(ii) direct that, during a specified period (beginning not earlier than 7 days

after the decision of the Court High Court), the registration of the person in

default shall not have effect.

(4) If at any time the Controller satisfies the Court High Court‡ that the person in default has

delayed unduly in proceeding with an application under subsection (3), the Court High Court

shall, unless it sees good reason to the contrary, declare that it was proper for the Controller

to make a decision under subsection (1) in relation to the person in default and either (as the

Court High Court may consider proper)—

* *S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 * Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

(a) direct the Controller to erase the name of the person in default from the Register;

or

(b) direct that, during a specified period (beginning not earlier than 7 days after the

decision of the Court High Court), the registration of the person in default shall not

have effect.

(5) Where the person in default does not, within the period of 21 days beginning on the date

of the decision in question, apply to the Court High Court* for cancellation of the decision,

the Controller may apply exparte to the Court High Court for confirmation of the decision;

and, if the Controller so applies, the Court High Court on the hearing of the application shall,

unless it sees good reason to the contrary, declare accordingly and either (as the Court High

Court may consider proper)—

(a) direct the Controller to erase the name of the person in default from the Register;

or

(b) direct that, during a specified period (beginning not earlier than 7 days after the

decision of the Court High Court), the registration of the person in default shall not

have effect.

(6) The decision of the Court High Court on an application under subsection (3) or

subsection (5) shall be final, save that, by leave of the Court High Court or the Supreme

Court, an appeal by the Controller or the person in default from the decision shall lie to the

Supreme Court on a specified question of law.

Notice of erasure or suspension: subsequent restoration.

89.—(1) Upon the erasure of the name of a person from the Register the Controller shall

forthwith send by pre-paid post to that person, at that person's address as stated in the

Register, notice in writing of the erasure.

(2) Where a decision is made under section 88 that, during a specified period, a person's

registration shall not have effect, the Controller shall, before the commencement of that

period, send by pre-paid post to that person, at that person's address as stated in the Register,

notice in writing of the decision.

(3) The name of any person which has been erased from the Register may at any time be

restored to the Register by direction of the Controller but not otherwise; and, when a person's

name is so restored to the Register, the Controller may attach to the restoration such

conditions (including the payment of a fee not exceeding the fee which would be payable by

the person for registration if that person was being registered for the first time) as the

Controller thinks fit.

(4) Where a person's registration has ceased to have effect under section 88 for a specified

period, the Controller may, if he so thinks fit, on application made to him by that person,

terminate the suspension.

Rules relating to trade mark agents.

90.—(1) The Minister may make rules for the management of the Register and may, by those

rules, prescribe any matter or thing referred to in this section or section 85 and, in particular,

*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 * Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

may so prescribe the educational and professional qualifications and the conditions

(including conditions relating to nationality or citizenship) for eligibility for registration and

the maximum fees which may be charged by any person who is registered for such services

in connection with trade marks as may be specified in the rules.*

(1) The Minister may make rules for the management of the Register and may by

such rules prescribe any matter or thing referred to in this section, section 86 or section 88,

and in particular may so prescribe—

(a) the educational and professional qualifications and the conditions (including conditions

relating to nationality or citizenship), which must be satisfied for eligibility for registration

in the Register;

(b) the conditions which must be satisfied by a partnership, body corporate or unincorporated

body of persons for eligibility for registration in the Register, including conditions relating†

to the following:

(i) evidence of establishment as a partnership, body corporate or unincorporated body;

(ii) evidence that a trade mark agent established in an EEA state (other than the State) is

acting as a trade mark agent in accordance with the law of that state;

(iii) evidence that the partnership, body corporate or unincorporated body is performing the

services of a trade mark agent in the State;‡

(c) the maximum fees which may be charged by any person registered in the Register for

such services in connection with the obtaining of trade marks as may be specified in such

rules.

(2) Rules under subsection (1) may authorise the Controller to refuse to recognise as agent in

respect of any business under this Act any person who does not satisfy the requirements of

section 85 .

(3) Rules under this section may authorise the Controller to refuse to recognise as agent in

respect of any business under this Act a company or firm of which any director, manager or

partner (as the case may be) is an individual whom the Controller could refuse to recognise

as an agent.

Privileged communications.

91.—(1) This section applies to communications in respect of any matter relating to the

protection of a trade mark or in respect of any matter involving passing off.

(2) Any communication to which this section applies—

(a) between a person and his registered agent, or

(b) for the purposes of obtaining or in response to a request for information which a

person is seeking for the purpose of instructing his registered agent,

is privileged from disclosure in legal proceedings in the State in the same way as a

communication between a person and his solicitor or, as the case may be, a communication

† S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016 † S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

Designs) Regulations 2007

Unofficial consolidated version

for the purpose of obtaining or in response to a request for information which a person seeks

for the purpose of instructing his solicitor.

(3) In subsection (2) registered agent” means—*

(a) a registered trade mark agent;

(b) a partnership entitled to describe itself as a firm of registered trade mark agents; or

(c) a body corporate entitled to describe itself as a registered trade mark agent.

(3) In this section ‘registered agent’ means—

(a) a registered trade mark agent;

(b) a partnership entitled to describe itself as a firm of registered trade mark agents;

(c) a body corporate entitled to describe itself as a registered trade mark agent; or

(d) a person to whom section 85(4A) applies.*

PART VI

Offences

Fraudulent application or use of trade mark in relation to goods.

92.—(1) Subject to the provisions of subsection (3), it shall be an offence for any person—

(a) to apply a mark identical to or nearly resembling a registered trade mark to goods

or to material used or intended to be used for labelling, packaging or advertising

goods,

(b) to sell, let for hire, offer or expose for sale or hire or distribute—

(i) goods bearing such a mark, or

(ii) material bearing such a mark which is used or intended to be used for

labelling, packaging or advertising goods,

(c) to use material bearing such a mark in the course of a business for labelling,

packaging or advertising goods, or

(d) to possess in the course of a business goods or material bearing such a mark with

a view to doing any of the things mentioned in paragraph (a) to (c),

when that person is not entitled to use the mark in relation to the goods in question or

authorised by a person who is so entitled.

(2) Subject to the provisions of subsection (3), it shall be an offence for any person to possess

in the course of a business goods or material bearing a mark identical to or nearly resembling

a registered trade mark with a view to enabling or assisting another person to do any of the

things mentioned in subsection (1) (a), (b) or (c), knowing or having reason to believe that

the other person is not entitled to use the mark in relation to the goods in question or

authorised by a person who is so entitled.

(3) Any person who contravenes the provisions of subsection (1) or (2) shall be guilty of an

offence if, but only if that person acts with a view to gain, for himself or another, or with

intent to cause a loss to another and it shall be a defence for a person charged with an offence

* S.I. No. 622 of 2007 European Communities (Provision of services concerning Trade Marks and Industrial

Designs) Regulations 2007

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under subsection (1) to show that he believed, on reasonable grounds, that he was entitled to

use the trade mark in relation to the goods in question.

(4) A person who commits an offence under this section shall be liable—

(a) on summary conviction to imprisonment for a term not exceeding six months or to

a fine not exceeding £1,000 class C fine*, or to both;

(e) on conviction on indictment to imprisonment for a term not exceeding five years or to

a fine not exceeding £100,000 €130,000, or to both.

Falsification of register, &c.

93.—(1) It shall be an offence for a person to make, or cause to be made, an entry in the

register which that person knows or has reason to believe to be false.

(2) It shall be an offence for a person—

(a) to make or cause to be made anything falsely purporting to be a copy of an entry

in the register, or

(b) to produce or tender or cause to be produced or tendered in evidence any such

thing,

knowing or having reason to believe that it is false.

(3) A person who commits an offence under this section shall be liable—

(a) on summary conviction, to imprisonment for a term not exceeding six months or

to a fine not exceeding £1,000 class C fine†, or to both,

(b) on conviction on indictment, to imprisonment for a term not exceeding two years

or to a fine not exceeding £200,000 €255,000, or to both.

Falsely representing trade mark as registered.

94.—(1) It shall be an offence for a person—

(a) falsely to represent that a mark is a registered trade mark, or

(b) to make a false representation as to the goods or services for which a trade mark is

registered,

knowing or having reason to believe that the representation is false.

(2) For the purposes of this section, the use in the State in relation to a trade mark—

(a) of the word “registered”, or

(b) of any other word or symbol importing a reference (express or implied) to

registration”,

shall be deemed to be a representation as to registration under this Act unless it is shown

that the reference is to registration elsewhere than in the State and that the trade mark is in

fact so registered for the goods or services in question.

(3) A person guilty of an offence under this section shall be liable on summary conviction to

a fine not exceeding £1,000 class C fine and, in the case of a continuing offence, to a further

fine not exceeding £100 class E fine, for every day on which the offence continues.

Offences committed by partnerships and bodies corporate.

† Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

95.—(1) Without prejudice to any liability of a partner under subsection (3), proceedings for

an offence under this Act alleged to have been committed by a partnership shall be brought

against the partnership in the name of the firm and not in that of the partners.

(2) A fine imposed on a partnership on its conviction in proceedings brought in accordance

with subsection (1) shall be paid out of the assets of the partnership.

(3) Where a partnership is guilty of an offence under this Act, every partner, other than a

partner who is proved to have been ignorant of or to have attempted to prevent the

commission of the offence, shall also be guilty of the offence and liable to be proceeded

against and punished accordingly.

(4) Where an offence under this Act which is committed by a body corporate is proved to

have been committed with the consent or connivance of, or to be attributable to any neglect

on the part of, any person who, when the offence was committed, was a director, manager,

secretary or other similar officer of the body corporate or a person who was purporting to act

in any such capacity, that person (as well as the body corporate) shall be guilty of an offence

and liable to be proceeded against and punished as if guilty of the offence committed by the

body corporate.

PART VII

Miscellaneous and General

Jurisdiction of the Circuit Court.

96.—Without prejudice to the powers conferred by this Act upon the Court, proceedings for

an order under section 20 or section 23 may be brought in the Circuit Court in the county in

which the infringing goods, material or articles are situated or in the county in which resides

any person having those goods, material or articles in his possession, custody or control.*

Unauthorised use of State emblems of Ireland.

97.—(1) A person shall not, without the authority of the Minister, use in connection with any

business the State emblems of Ireland notified under Article 6ter of the Paris Convention or

emblems so closely resembling the State emblems as to be calculated to deceive in such a

manner as to be calculated to lead to the belief that that person is duly authorised to use the

State emblems.

(2) A person who contravenes the provisions of subsection (1) shall be guilty of an offence

and shall be liable on summary conviction to a fine not exceeding £1,000 class C fine and, in

the case of a continuing offence, to a further fine not exceeding £100 class E fine for every

day the offence continues.

(3) The Minister may apply to the Court High Court† for an injunction to restrain any person

from contravening the provisions of subsection (1).

* Copyright and Other Intellectual Property Law Provisions Act 2019

Unofficial consolidated version

(4) Nothing in this section shall affect any right of the proprietor of a registered trade mark

containing any such emblem to use that trade mark.

(5) In any proceedings to restrain any action prohibited under subsection (1) or any

prosecution under subsection (2) a certificate purporting to be signed by the Controller that

the emblem is a State emblem shall be sufficient evidence of its contents unless the contrary

is proved.

Misuse of trade marks indicative of Irish origin.

98.—The Minister may take, in any place outside the State, such lawful steps, whether by

way of action or prosecution at law or otherwise, as he shall think proper to prevent, restrain,

or to secure punishment for, the registration, use or application, in relation to or in respect of

goods not grown, produced or manufactured in the State, of any trade mark or other mark or

description indicating or suggesting, or likely to lead to the belief, that the goods in respect of

which or to which that trade mark, mark or description is used or applied were grown,

produced or manufactured in the State.

Burden of proving use of trade mark.

99.—Where, in any civil proceedings under this Act, an issue arises as to the use made by

any person of any registered trade mark, the onus of proving such use shall lie with the

proprietor.

Transitional provisions.

100.—The provisions of the Third Schedule shall have effect with respect to transitional

matters, including the treatment of trade marks registered under the Act of 1963, and

applications for registration and other proceedings pending under that Act, on the

commencement of this Act.

Territorial waters and continental shelf.

101.—For the avoidance of doubt, it is hereby declared that this Act applies to the following

waters, namely, the waters in the portion of the sea which comprises the territorial seas of the

State, the waters in all areas of the sea to which the internal or inland waters of the State are

extended by section 5 of the Maritime Jurisdiction Act, 1959 and the waters in any area

which is for the time being a designated area within the meaning of section 1 of the

Continental Shelf Act, 1968.

Amendment and adaptation of existing statutes.

102.—(1) In any enactment passed before, and in any provision made under any enactment

before, the commencement of this Act, any reference to trade marks or registered trade

marks, within the meaning of the Act of 1963, shall, unless the context otherwise requires, be

construed after the commencement of this Act as a reference to trade marks or registered

trade marks, within the meaning of this Act.

(2) In section 24 of the Consumer Information Act, 1978 —

(a) for the words “the Trade Marks Act, 1963 ”, in each place where they occur

except in paragraph (c), there shall be substituted “the Trade Marks Act, 1996”; and

Unofficial consolidated version

(b) in paragraph (c) for the words “a person registered under section 36 of the Trade

Marks Act, 1963 as a registered user of a trade mark” there shall be substituted “in

the case of a registered trade mark, a person licensed to use it”.

FIRST SCHEDULE

Collective Marks Section 54 .

General

1. The provisions of this Act shall apply in relation to collective marks subject to the

following provisions of this Schedule.

Signs of which a collective mark may consist

2. In relation to a collective mark, the reference in section 6 (1) to distinguishing goods or

services of one undertaking from those of other undertakings shall be construed as a

reference to distinguishing goods or services of members of the association which is the

proprietor of the mark from those of other undertakings.

Indication of geographical origin

3. (1) Notwithstanding the provisions of section 8 (1) (c), a collective mark may be registered

which consists of signs or indications which may serve, in trade, to designate the

geographical origin of the goods or service.

(2) However, the proprietor of a mark referred to in subparagraph (1) shall not be entitled to

prohibit the use of the signs or indications in accordance with honest practices in industrial or

commercial matters (in particular, in the case of a person who is entitled to use a

geographical name).

Mark not to be misleading as to character or significance

4. (1) A collective mark shall not be registered if the public is liable to be misled as regards

the character or significance of the mark, in particular, if it is likely to be taken to be

something other than a collective mark.

(2) The Controller may, accordingly, require that a mark in respect of which an application is

made for registration as a collective mark shall comprise some indication that it is a

collective mark, and, notwithstanding section 44 (3), an application may be amended so as to

comply with any such requirement.

Regulations governing use of collective mark

5. (1) An applicant for registration of a collective mark shall file with the Controller

regulations governing the use of the mark.

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(2) The regulations shall specify the persons authorised to use the mark, the conditions of

membership of the association and, where they exist, the conditions of use of the mark,

including any sanctions against misuse of the mark.*

(2A) The regulations governing the use of the mark shall authorise any person whose goods

or services originate in the geographical area concerned to become a member of the

association which is the proprietor of the mark, provided that the person fulfils all the other

conditions of the regulations.†

(3) Provision may be made by rules for further matters in respect of which regulations are

required.

Approval of regulations by Controller

6. (1) A collective mark shall not be registered unless the regulations governing the use of the

mark—

(a) comply with paragraph 5 (2) and any further requirements imposed by rules; and

(b) are not contrary to public policy or to accepted principles of morality.

(2) Before the end of the prescribed period after the date of the application for registration of

a collective mark, the applicant must file the regulations with the Controller and pay the

prescribed fee; and if the applicant does not do so, the application shall be deemed to be

withdrawn.

7. (1) If it appears to the Controller that the requirements (other than those specified in

paragraph 6) for registration have been met, the Controller shall consider the matters

specified in paragraph 6 (1) and may—

(a) accept the application;

(b) accept it subject to conditions (including amendment of the regulations or

otherwise); or

(c) refuse to accept it.

(2) Where the Controller accepts an application subject to specified conditions, and those

conditions are complied with within the prescribed period, the Controller shall proceed with

the publication in the Journal in accordance with section 43 .

(3) Where the Controller accepts an application subject to specified conditions and those

conditions are not complied with within the prescribed period, the application shall be

deemed to be withdrawn.

8. (1) The regulations governing the use of the mark shall be open to public inspection and

notice of opposition may be given, and observations may be made, relating to the matters

specified in paragraph 6 (1).

(2) The provisions of this paragraph are in addition to any other grounds on which an

application may be opposed or observations made.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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Regulations to be open to inspection

9. The regulations governing the use of a registered collective mark shall, in like manner as

the register, be open to public inspection.

Amendment of regulations

10. Where the regulations governing the use of a registered collective mark are amended, the

regulations, as amended, shall not be effective unless and until the amended regulations are

filed with and accepted by the Controller the Controller and the mention of the amendment of

the regulations is entered in the register.*

Infringement proceedings: rights of authorised users

11. (1) Subject to any agreement to the contrary between an authorised user and the

proprietor, the provisions of this paragraph shall have effect in relation to the infringement of

a registered collective mark.

(2) An authorised user shall be entitled to call on the proprietor to take infringement

proceedings in respect of any matter which affects the authorised user's interests.

(3) Where the proprietor refuses or fails to take infringement proceedings in accordance with

subparagraph (2) within two months after being called upon to do so, the authorised user

may bring the proceedings in the authorised user's name as if the authorised user were the

proprietor.

(3) Without prejudice to the provisions of any agreement, the authorised user may bring

proceedings for infringement of a trade mark only if its proprietor consents thereto.”,†

(4) Where the infringement proceedings are brought by virtue of subparagraph (3)

(a) the authorised user may not, without the leave of the Court appropriate court‡,

proceed with the action unless the proprietor is either joined as a plaintiff or added as

a defendant; and

(b) a proprietor who is so added as a defendant shall not be liable for any costs in the

action unless he takes part in the proceedings.

(5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an

application by an authorised user alone.

(6) In the course of infringement proceedings brought by the proprietor of a registered

collective mark, any loss suffered or likely to be suffered by authorised users shall be taken

into account by the Court appropriate court; and the Court appropriate court may give such

directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of

any pecuniary remedy on behalf of such users.

† *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 ‡ Copyright and Other Intellectual Property Law Provisions Act 2019

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(7) An authorised user shall for the purpose of obtaining compensation for damage suffered

by him or her, be entitled to intervene in infringement proceedings brought by the proprietor

of a registered collective mark.

Grounds for revocation of registration

12. Apart from the grounds of revocation provided for in section 51 , the registration of a

collective mark may shall be revoked on the ground that—

(a) the manner in which the mark has been used by the proprietor persons authorised

to use it has made it misleading to the public in the manner referred to in paragraph 4

(1); or

(b) the proprietor has failed to observe, or to secure the observance of the regulations

governing the use of the mark; or

(b) the proprietor has not taken reasonable steps to prevent the mark being used in a

manner that is incompatible with the conditions of use laid down in the regulations

governing the use of the mark, including any amendments thereto mentioned in the

register; or”,

(c) an amendment of the regulations has been made so that the regulations—

(i) no longer comply with paragraph 5 (2) and any further conditions imposed

by rules; or

(i) no longer comply with paragraph 5(2) and any further conditions imposed

by rules unless the proprietor of the mark, by further amending the regulations

governing use, complies with the requirements of the First Schedule; or”,

(ii) are contrary to public policy or to accepted principles of morality.

Grounds for invalidity of registration

13. Apart from the grounds of invalidity provided for in section 52 , the registration of a

collective mark may be declared invalid on the ground that the mark was registered contrary

to the provisions of paragraph 4 (1) or 6 (1).

13. In addition to the grounds of invalidity provided for in section 52, where appropriate with

the exception of section 8(1)(c), concerning signs or indications which may serve, in trade, to

designate the geographical origin of the goods or services, the registration of a collective

mark shall be declared invalid on the ground that the mark was registered contrary to the

provisions of paragraph 4(1) or 6(1), unless the proprietor of the mark, by further amending

the regulations governing use, complies with the requirements of the First Schedule.*

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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SECOND SCHEDULE

Certification Marks Section 55 .

General

1. The provisions of this Act shall apply in relation to certification marks subject to the

following provisions of this Schedule.

Signs of which a certification mark may consist

2. In relation to a certification mark, the reference in section 6 (1) to distinguishing goods or

services of one undertaking from those of other undertakings shall be construed as a

reference to distinguishing goods or services which are certified from those which are not

certified.

Indication of geographical origin

3. Notwithstanding the provisions of section 8 (1) (c), a certification mark may be registered

which consists of signs or indications which may serve, in trade, to designate the

geographical origin of the goods or services:

Provided that the proprietor of such a mark shall not be entitled to restrain the use of the

signs or indications in accordance with honest practices in industrial or commercial matters,

in particular, by a person who is entitled to use a geographical name.

Nature of proprietor's business

4. A certification mark shall not be registered if the proprietor carries on a business involving

the supply of goods or services of the kind certified.

4. Any natural or legal person, including institutions, authorities and bodies governed by

public law, may apply for certification marks provided that such person does not carry on a

business involving the supply of goods or services of the kind certified*.

Mark not to be misleading as to character or significance

5. (1) A certification mark shall not be registered if the public is liable to be misled as regards

the character or significance of the mark, in particular, if it is likely to be taken to be

something other than a certification mark.

(2) The Controller may, accordingly, require that a mark in respect of which an application is

made for registration as a certification mark shall comprise some indication that it is a

certification mark; and notwithstanding section 44 (3), an application may be amended so as

to comply with any such requirement.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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Regulations governing use of certification mark

6. (1) An applicant for registration of a certification mark shall file with the Controller

regulations governing the use of the mark.

6A. The requirement of use referred to in section 16A shall be satisfied where genuine use of

a certification mark is made by any person who has the authority to use it.*

(2) The regulations shall indicate who is authorised to use the mark, the characteristics to be

certified by the mark, how the certifying body is to test those characteristics and to supervise

the use of the mark, the fees (if any) to be paid in connection with the operation of the mark

and the procedures for resolving disputes.

(3) Provision may be made by rules for further matters in respect of which regulations are

required.

Approval of regulations, &c. by Minister

7. (1) A certification mark shall not be registered unless the Minister is satisfied that—

(a) the regulations governing the use of the mark—

(i) comply with paragraph 6 (2) and any further requirements imposed by

rules; and

(ii) are not contrary to public policy or to accepted principles of morality; and

(b) the applicant is competent to certify the goods or services for which the mark is to

be registered.

(2) If it appears to the Controller that the requirements for registration other than those in

subparagraph (1) are met, the Controller shall authorise the applicant to proceed with the

application.

(3) Within the prescribed period of authorisation to proceed, the applicant must file the

regulations (if this has not already been done) and pay the prescribed fee, failing which, the

application shall be deemed to be withdrawn.

8. (1) The Minister shall consider the matters mentioned in paragraph 7 (1) and may direct

that the application for registration be accepted, be accepted subject to conditions (as to

amendment of the regulations or otherwise), or be not accepted.

(2) Where the Minister directs that the application be accepted, and any conditions are

complied with within the prescribed period, the Controller shall proceed in accordance with

section 43 .

(3) Where the Minister directs that an application be accepted subject to specified conditions

and those conditions are not complied with within the prescribed period, the application shall

be deemed to be withdrawn.

* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018

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9. The regulations shall be published and notice of opposition may be given, and

observations may be made, relating to the matters mentioned in paragraph 7 (1), in addition

to any other grounds on which an application may be opposed or observations made.

Regulations to be open to inspection

10. The regulations governing the use of a registered certification mark shall, in like manner

as the register, be open to public inspection.

Amendment of regulations

11. (1) An amendment of the regulations governing the use of a registered certification mark

shall not be effective unless and until the Minister consents to the amendment and the

amended regulations are filed with the Controller.

(2) The Minister may cause an application for consent under subparagraph (1) to be

published in any case where it appears expedient to do so.

(3) Any person may, within the prescribed time from the date of the publication of the

application, give notice to the Minister of opposition to the application and any such notice

shall be given in writing in the prescribed manner and shall include a statement of the

grounds of opposition.

(4) After the Minister has consented to such an amendment as is mentioned in subparagraph

(1), the Controller shall publish notice in the Journal when the amended regulations are filed

with him.

Consent to assignment of registered certification mark

12. The assignment or other transmission of a registered certification mark shall not be

effective without the consent of the Minister.

Infringement proceedings: rights of authorised users

13. (1) Subject to any agreement to the contrary between an authorised user and the

proprietor, the provisions of this paragraph shall have effect in relation to the infringement of

a registered certification mark.

(2) An authorised user shall be entitled to call on the proprietor to take infringement

proceedings in respect of any matter which affects the authorised user's interests.

(3) Where the proprietor refuses or fails to take infringement proceedings in accordance with

subparagraph (2) within two months after being called upon to do so, the authorised user

may bring the proceedings in the authorised user's own name as if the authorised user were

the proprietor.

(4) Where infringement proceedings are brought by virtue of subparagraph (3)

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(a) the authorised user may not, without the leave of the Court appropriate court*,

proceed with the action unless the proprietor is either joined as a plaintiff or added as

a defendant; and

(b) a proprietor who is so added as a defendant shall not be liable for any costs in the

action unless the proprietor takes part in the proceedings.

(5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an

application by an authorised user alone.

(6) In the course of infringement proceedings brought by the proprietor of a registered

certification mark, any loss suffered or likely to be suffered by authorised users shall be taken

into account by the Court appropriate court; and the Court appropriate court may give such

directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of

any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

14. (1) Apart from the grounds of revocation provided for in section 51 , the registration of a

certification mark may be revoked on the ground that—

(a) the proprietor has begun to carry on such a business as is mentioned in paragraph

4; or

(b) the manner in which the mark has been used by the proprietor has made it

misleading to the public in the manner referred to in paragraph 5 (1); or

(c) the proprietor has failed to observe, or to secure the observance of, the regulations

governing the use of the mark; or

(d) an amendment of the regulations has been made so that the regulations—

(i) no longer comply with paragraph 6 (2) and any further conditions imposed

by rules; or

(ii) are contrary to public policy or to accepted principles of morality; or

(e) the proprietor is no longer competent to certify the goods or services for which the

mark is registered.

(2) An application for revocation on the ground mentioned in subparagraph (1) (c), (d) or (e)

shall be made to the Minister.

(3) For the purposes of this paragraph the reference in section 51 (6) to the Controller or the

Court High Court† shall be construed as a reference to the Minister.

Grounds for invalidity of registration

15. (1) Apart from the grounds of invalidity provided for in section 52, the registration of a

certification mark may be declared invalid on the ground that the mark was registered

contrary to the provisions of paragraph 4, 5 (1) or 7 (1).

(2) An application for a declaration of invalidity on the ground that the registration was made

contrary to the provisions of paragraph 7 (1) shall be made to the Minister.

* Copyright and Other Intellectual Property Law Provisions Act 2019

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General provisions as to functions of Minister

16. (1) The provisions of sections 69 to 74 shall apply in relation to the Minister and the

Minister's functions under this Schedule as they apply in relation to the Controller and the

Controller's functions.

(2) Section 79 shall apply in relation to a decision of the Minister under this Schedule as they

apply in relation to a decision of the Controller.

(3) The Minister may, for the purpose of discharging any of his functions under this

Schedule, refer any matter to a body or person appearing to the Minister to have experience

of matters of that description, and may take their report or advice into account in reaching his

decision.

THIRD SCHEDULE

Transitional Provisions Section 100 .

Introductory

1. (1) In this Schedule—

commencement” means the commencement of this Act; “existing registered mark” means a

trade mark or certification trade mark, within the meaning of the Act of 1963, registered

under that Act immediately before commencement;

the former register” means the register of trade marks kept under the Act of 1963;

the old law” means the Act of 1963 and any other enactment or rule of law applying to

existing registered marks immediately before commencement;

the new register” means the Register of Trade Marks kept under this Act.

(2) For the purposes of this Schedule an application shall be treated as pending at

commencement if it was made but not finally determined before commencement.

Existing registered marks

2. (1) Existing registered marks (whether registered in Part A or Part B of the former register)

shall, on commencement, be deemed to be transferred to the new register and shall have

effect, subject to the provisions of this Schedule, as if registered under this Act.

(2) Subparagraph (1) shall apply to all entries relating to existing registered marks as it

applies to the marks themselves.

(3) Entries indicating that existing registered marks are associated with other marks shall

cease to have effect on commencement.

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(4) A condition entered on the former register in relation to an existing registered mark

immediately before commencement shall cease to have effect on commencement; and

proceedings under section 41 of the Act of 1963 (application to expunge or vary registration

for breach of condition) which are pending at commencement shall be dealt with under the

old law (with any necessary alteration being made in the new register).

(5) A disclaimer or limitation entered on the former register in relation to an existing

registered mark and in force immediately before commencement shall be deemed to be

transferred to the new register and have effect as if entered on the new register in pursuance

of section 17 .

Effects of registration: infringement

3. (1) Sections 13 to 16 (effects of registration) apply in relation to an existing registered

mark as from commencement and section 18 (action for infringement) applies in relation to

infringement of an existing registered mark after commencement, subject to subparagraph

(3).

(2) Without prejudice to the operation of the Interpretation Act, 1937 , the old law shall

continue to apply in relation to infringements committed before commencement.

(3) It shall not be an infringement of—

(a) an existing registered mark, or

(b) a registered trade mark of which the distinctive elements are the same or

substantially the same as those of an existing registered mark and which is registered

for the same goods or services,

to continue after commencement any use which did not amount to infringement of the

existing registered mark under the old law.

Infringing goods, material or articles

4. Section 20 (order for delivery up of infringing goods, material or articles) shall apply to

infringing goods, material or articles made before, as well as after, commencement.

Rights and remedies of licensee or authorised user

5. (1) Section 34 (general provisions as to rights of licensees in case of infringement) shall

apply to licences granted before commencement, but only as regards infringements

committed after commencement.

(2) Paragraph 13 (6) of the Second Schedule shall apply only in relation to infringements

committed after commencement.

Assignment &c. of registered trade marks

6. (1) Section 28 (assignment or other transmission of registered mark) shall apply only in

relation to transactions and events occurring after commencement in relation to an existing

registered mark; and the old law shall continue to apply in relation to transactions and events

occurring before commencement.

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(2) An application for registration under section 33 of the Act of 1963 (registration of

assignments and transmissions) which is pending at commencement shall be treated as an

application for registration under section 29 and shall proceed accordingly, except that the

Controller may require the applicant to amend the application so as to conform with the

requirements of this Act.

(3) An application for registration under section 33 of the Act of 1963 which has been

determined by the Controller but not finally determined before commencement shall be dealt

with under the old law.

(4) Where, before commencement, a person became entitled by assignment or transmission

to an existing registered mark but did not make an application to register his title, any

application for registration after commencement shall be made under section 29 .

(5) Any entry falling to be made in the old register as a result of subparagraph (3) shall be

treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

Licensing of registered mark

7. (1) Sections 32 and 33 (2) (licensing of registered trade mark: rights of exclusive licensee

against grantor's successor in title) shall apply only in relation to licences granted after

commencement; and the old law shall continue to apply in relation to licences granted before

commencement.

(2) Existing entries under section 36 of the Act of 1963 (registered users) shall be deemed to

be transferred on commencement to the new register and shall have effect as if made under

section 29 .

(3) An application for registration as a registered user which is pending at commencement

shall be treated as an application for registration of a licence under section 29 (1) and shall

proceed accordingly, except that the Controller may require an applicant to amend the

application so as to conform with the requirements of this Act.

(4) An application for registration as a registered user which has been determined by the

Controller but not finally determined before commencement shall be dealt with under the old

law, and any entry falling to be made in the old register as a result of this subparagraph shall

be treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

(5) Any proceedings pending on commencement under section 36 (7) or (9) of the Act of

1963 (variation or cancellation of registration of registered user) shall be dealt with under the

old law (with any necessary alteration being made to the new register).

Pending applications for registration

8. (1) The provisions of this paragraph apply where an application for registration of a trade

mark, within the meaning of the Act of 1963, is pending at commencement.

(2) Subject to paragraph 9, the application shall be dealt with (and the registrability of the

mark shall be determined) in accordance with the old law and any mark which, on that

Unofficial consolidated version

determination, falls to be registered shall be treated for the purpose of this Schedule as an

existing registered mark.

(3) Provision may be made by rules to enable pending applications for registration to

continue in accordance with the procedural provisions of this Act.

Conversion of pending application

9. (1) This paragraph applies if an application which was pending at commencement has not

been advertised under section 26 of the Act of 1963.

(2) If, in case where subparagraph (1) applies, the applicant gives notice to the Controller

requesting that the registrability of the mark be determined in accordance with the provisions

of this Act, the Controller shall deal with the application accordingly.

(3) Notice under subparagraph (2) shall be in the prescribed form, shall be accompanied by

the appropriate fee and shall be given no later than six months after commencement.

(4) Notice given under subparagraph (2) shall be irrevocable and the application to which

the notice relates shall be treated as if it were made at commencement and as if the date of

filing were the date of commencement.

Duration and renewal of registration

10. (1) Section 47 (1) (duration of original period of registration) applies in any case where

the registrability of a trade mark is determined in accordance with the provisions of this Act;

and the old law applies in any other case.

(2) Sections 47 (2) and 48 (renewal of registration) apply when the renewal falls due at or

after commencement; and the old law applies in any other case.

(3) For the purposes of this paragraph it is immaterial when the application is made or when

the fee is paid.

Revocation for non-use

11. (1) An application under section 34 of the Act of 1963 (removal from register or

imposition of limitation on ground of non-use) which is pending at commencement shall be

dealt with under the old law (with any necessary alteration being made to the new register).

(2) Subject to subparagraph (3), an application under section 51 (4) on the grounds specified

in section 51 (1) (a) or (b) (revocation for non-use) may be made in relation to an existing

registered mark at any time after commencement.

(3) No application for the revocation of the registration of an existing registered mark which

was registered by virtue of section 35 of the Act of 1963 (defensive registration of well-

known trade marks) may be made under section 51 until more than five years after

commencement.

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Application for rectification &c.

12. An application under section 40 or 42 of the Act of 1963 (rectification or correction of

the register) which is pending at commencement shall be dealt with under the old law (with

any necessary alteration being made to the new register).

Validity of existing registered marks

13. The old law shall continue to apply as regards the validity of the registration of an

existing registered mark; and no objection to the validity of such a registration may be taken

on the ground of failure to satisfy the requirements of this Act.

Certification marks

14. (1) If, at commencement, a request is pending for the amendment of the regulations

governing the use of an existing certification mark, that request shall be dealt with under the

old law.

(2) In subparagraph (1) existing certification mark” means a certification trade mark

registered under the Act of 1963 immediately before commencement.

Pre-commencement applications in respect of trade marks for services.

15. (1) If, at any time between 1st January, 1993 and commencement, an application was

made to the Controller for the registration of a trade mark in respect of services, this Act shall

have effect, subject to subparagraph (2), as if—

(a) the application were made at commencement; and

(b) the date of filing were the date of commencement;

and the Controller shall deal with the application accordingly.

(2) Section 20 (3) of the Act of 1963 (separate applications for registration of identical trade

marks in respect of goods, etc.) shall apply in relation to applications falling within

subparagraph (1)

(a) with the substitution of a reference to services for the reference to goods or a

description of goods; and

(b) with the omission of the proviso.

16. The amendment effected by section 45 of the Patents (Amendment) Act 2006 to section

61(2) shall not affect the continuation of any bona fide use of a trade mark begun before 1

January 1996.

17. The amendment effected by section 43 (c) of the Patents (Amendment) Act 2006 and the

amendment effected by section 45 of the said Act to section 63 shall not affect the rights of a

person whose bona fide use of a trade mark to which section 63 applies and which is

protected under the Agreement establishing the World Trade Organisation began before 1

January 1996.*

* Patents Amendment Act 2006 (31/2006)

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18. The amendments to this Act effected by the European Union (Trade Marks) Regulations

2018 shall not apply to any application for registration of a trade mark made under this Act

before the coming into operation of those Regulations.*

Acts

Referred to

Copyright Act, 1963 1963, No. 10

Consumer Information Act, 1978 1978, No. 1

Continental Shelf Act, 1968 1968, No. 14

Interpretation Act, 1937 1937, No. 38

Maritime Jurisdiction Act, 1959 1959, No. 22

Partnership Act, 1890 53 & 54 Vict., c. 39

Patents Act, 1992 1992, No. 1

Petty Sessions (Ireland) Act, 1851 14 & 15 Vict., c. 93

Public Offices Fees Act, 1879 42 & 43 Vict., c. 58

Solicitors Act, 1954 1954, No. 36

Statute of Limitations, 1957 1957, No. 6

Trade Marks Act, 1963 1963, No. 9

OJ No. L40 of 11th February, 1989

OJ No. Lll of 14th February, 1994

© Government of Ireland. Oireachtas Copyright Material is reproduced with the permission

of the House of the Oireachtas

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*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018


Legislation Relates to (2 text(s)) Relates to (2 text(s)) Supersedes (1 text(s)) Supersedes (1 text(s))
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