Trade and Service Marks

– Trade Marks Act, 1963 (repealed July 1, 1996 but still applicable to applications filed before that date).
– Trade Marks Act No. 6, 1996 (in force from July 1, 1996).
– Trade Marks Act, 1996 (Residence of Trade Mark Agents) Regulations, 2000.
– Intellectual Property (Miscellaneous Provisions) Act, 2014.
– Trade Marks Rules, 1996.
– Trade Marks (Amendment) Rules, 2007.
– Trade Marks (Amendment) Rules, 2010.
– Trade Marks (Amendment) Rules, 2015.
– Trade Marks (Amendment) Rules, 2016.
– Trade Marks (Amendment) Rules, 2019.
– Trade Marks Act 1996 (Community Trade Mark) (Amendment) Regulations 2018.
– Trade Marks (Amendment) Rules 2018.
– European Union (Trade Marks) Regulations 2018.
– European Communities (Community Trade Mark) Regulations, 2000.
– Patents, Trade Marks and Designs (Fees) Rules, 2001.
– Patents and Trademarks (Fees) Rules, 1999.
– Patents, Trademarks and Designs (Fees) (Amendment) Rules, 2012.
– Patents, Trade Marks and Designs (Fees) (Amendment) Rules 2018.
– Statutory Instrument No. 229 of 2000 – Conversion of Community Trade Marks.
– Trade Marks (Madrid Protocol) Regulations, 2001.
– Trade Marks Act (Section 66) Regulations, 2001.
– European Communities (Enforcement of Community Judgments on Trade Marks and Designs) Regulations, 2006.
– European Communities (Provision of Services concerning Trade Marks and Industrial Designs) Regulations, 2007.
– European Communities (Enforcement of Intellectual Property Rights) Regulations, 2006.

Note: the Irish Trade Mark Laws closely follow the British Trade Mark Laws and now implement the first EC Directive on Approximation of National Trade Mark Laws (89/104/EEC). The 1963 Act provided for registration in Part A or in Part B of the Register. Under the 1996 Act, this distinction has been abolished. For trademarks registered under the 1963 Act, the infringement rights are now determined by the 1996 Act but validity will continue to be tested under the old law.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), since April 26, 1970.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Lisbon Act, Additional Act of Stockholm.
– Nice Agreement Concerning the International Classification of Goods and Services.
– European Union Trade Mark Regulation.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 9, 1999.
– Trademark Law Treaty, since October 13, 1999.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since October 19, 2001.
– Singapore Treaty on the Law of Trademarks, since March 21, 2016.

Filing

Applicant: any natural or legal person. 

Applicants not living in the country: may apply, but must furnish an “address for service” in a State which is a contracting party to the Agreement on the European Economic Area signed at Oporto on May 2, 1992, as amended for the time being. 

Trademarks of foreigners: may be registered with equal rights to those given to Irish nationals. 

Types of registration: trademarks for goods or services, collective marks, certification marks. 

Marks for services: allowable.

Novelty: must not conflict with mark already registered in Ireland, at the European Union Intellectual Property Office (EUIPO), an international registration for marks designating Ireland and the European Union Trademark, a mark with established goodwill in Ireland or a mark which is “well-known” (Article 6bis, Paris Convention).

Disclaimers: available. 

Letters of consent: the Patents Office must waive an objection based on a prior registration if a letter of consent is furnished. 

Not registrable: marks devoid of any distinctive character, indication of kind, geographical origin etc., unless made distinctive by previous use in the country. 

National flags: not registrable without authorization. 

Names or portraits: portraits of a person alive or recently dead allowed only with consent.

Association marks: previously possible under the 1963 Act. No longer allowed for under the 1996 Act.

Priorities: if application filed within six months.

Classification: international. One application can cover several classes. An additional fee is payable from the second class. 

Territory covered: Republic of Ireland.

Filing requirements for an application (to be sent to resident agent):
1. A representation of the mark (except for word marks in ordinary type), maximum size 8 x 8 cm, preferably in electronic format;
2. List of goods/services;
3. Certified copy of basic foreign application, if Convention priority is claimed (must be filed within three months of filing date), together with a verified English translation where necessary;
4. Where color is claimed, an indication of the colors concerned;
5. Particulars of any disclaimers or limitations to be entered against the trademark.

Minimum filing requirements: 1 representation; list of goods/services; whether priority is to be claimed; particulars of applicant. 

Electronic filing: available.

Note: no signed Form of Authorization is required for trademarks unless requested by the Patents Office in a particular case. No printing block is required.

Examination Procedure

Amendment of application: possible, but additional goods cannot be added after filing. 

Examination – formal or anteriorities: as to formalities, absolute grounds (e.g. distinctiveness) and relative grounds (earlier marks).

Opposition – reasons and procedure: after publication of application in Official Journal. For applications filed on or after July 1, 1996, the opposition period is one day less than three months (non-extendible). A notice of opposition must be filed. The applicant will be afforded three months less one day (non-extendible) to file a counterstatement in reply. If a counterstatement is not filed, the application is deemed withdrawn. If a counterstatement is filed, the opponent is granted three months, extendible by one period of three months to file evidence in support of their opposition. The applicant is then afforded a three-month period, extendible by one period of three months, to file evidence in reply. Thereafter, the opponent will be granted a two-month period to file evidence in response. The parties can file written submissions or request an oral hearing prior to a decision being issued on the opposition proceedings.

Disputes about ownership: can be contested by opposition procedure. 

Application kept secret: no. Applications appear in classified search records a few weeks after filing.

Appeal: to High Court from decisions of Patents Office. 

Urgent registration: not possible. 

Provisional registration: no. 

Publication: if application is approved after examination, it is published for opposition purposes. 

Correction of registration: usually possible. A mark may be altered in any manner, which does not substantially affect its identity.

Protection

Delivery of document (and usual duration after filing): usually twelve months. 

Beginning of protection: upon final registration but is retrospective to date of filing. 

Kind of property: right to prevent use of an identical or confusingly similar mark in relation to identical or similar goods or services. Also when the registered mark has a reputation, the right to prevent dilution by an identical or similar mark used in relation to dissimilar goods or services. 

Duration: for trademarks registered under the 1963 Act, including all applications filed before July 1, 1996, the initial term is seven years. For applications filed on or after July 1, 1996, the initial term of registration is ten years.

Extension: all trademarks due for renewal on or after July 1, 1996, will be renewed for ten years. 

Latest term for renewal: one day less than end of previous term. 

Term of grace for renewal: six months after due date but restoration and renewal possible if requested within six months after removal and if the circumstances justify it.

Compulsory character of registration: not compulsory. 

User rights: are preserved only for use in the course of trade in a particular locality of an earlier right which applies only in that locality and which enjoys goodwill there. 

Obligation to use: registration jeopardized if mark is not used for five consecutive years. The first non-use period is five years following the date of publication of the registration. What is considered valid trademark use includes, use in invoices or on stationery if the goods or services are genuinely on offer, use by another party with the consent of the proprietor, affixing a trademark to goods or to the packaging of goods solely for export purposes (no special provision covering export of services). Publication and advertisement in newspapers, use at an exhibition or fair, are not likely to be sufficient use unless the goods or services are genuinely on offer or put on the Irish market. Renewal does not amount to trademark use. Non-use can be excused for proper reasons.

Marking of registered good: goods should be marked “Regd. Trade Mark No……”, but marking not compulsory. 

Modification of the mark: permitted if it does not substantially alter the identity of the mark. 

Changes in the list of goods: list of goods cannot be enlarged, but may be restricted. 

Licenses: can be recorded. Recordal of a licensee is not compulsory but is recommended.  

Assignment (possibility – form): yes, by deed or other transfer process, with or without the goodwill of the business. Stamp Duty may be payable based on the consideration paid or the market value of the property transferred, if general business goodwill is included in the assignment.

Modification of Protection after Registration

Right of prior user: is preserved only for use in the course of trade in a particular locality of an earlier right which applies only in that locality and which enjoys goodwill there. 

Opposition to registered marks (reasons and delays): revocation for non-use during preceding five years or for certain types of misuse by the proprietor. Invalidation because of earlier rights or lack of distinctive character. For trademarks registered under the 1963 Act, the new law applies for revocation but the old law continues to apply to validity. If a trademark was registered in Part A of the Register under the 1963 Act, the grounds for invalidation are restricted after seven years from the date of registration.

Compulsory licenses: no.

Expropriation: no. 

Nullification (grounds, delay): see above “Opposition”.

Provision for restoration: see above “Duration“. 

Re-registration of invalidated marks: may be possible if the circumstances have changed (e.g. due to distinctiveness acquired by use). There is no decision as to whether an identical mark can be re-filed. However a registration will be invalid if the application was made in bad faith. 

Infringement and penalties: injunction to stop use of infringing mark and damages for infringement or account of profits.

European Union Trademark (EUTM) Conversion

Pursuant to Article 139 of the European Union Trade Mark Regulation, where the Controller decides that a request for conversion of a EUTM application or registration into a national trademark application is admissible, the request shall be treated as an application for registration of a trademark under the Trade Marks Act 1996.

Requirements: where the Controller has made a preliminary decision that the request is admissible, the applicant/holder shall be notified in writing to that effect, and such notification shall request:
1. Payment of fees;
2. A copy of the EUTM conversion request and confirmation of acceptance of the request by the EUIPO, together with an English translation (if required);
3. A representation of the trademark;
4. If not previously indicated, the address for service within the State.

Time limit: the fees must be forwarded within three months of the Controller’s notification or the application will be refused.

Notes: a trademark application resulting from a EUTM conversion retains the filing date and the date of priority of the EUTM application and where appropriate, the seniority of an earlier Irish registration. The application is examined as if it was a regular national trademark application.