02-21-2012 (Newsletter Issue 3/12)Official Fees AmendedThe Irish Patents Office has amended a number of changes to the fees of Trademarks, Patens and Desgins effective on February 1, 2012.
It introduced a fee of EUR 50 for the registration of a series of trademarks in a single registration, for each trademark in excess of two trademarks contained in the application.
For more information, please click here
12-01-2011 (Newsletter Issue 14/11)Change of Practice in Honest Concurrent UseThe Irish Patents Office has announced a change of practice regarding honest concurrent use which will come into effect on 1 December, 2011.
The Office has suspended its former practice of automatically refusing honest concurrent use based trademark applications where a subsequent opposition from the holder of the earlier trademark was received.
In the future, the Controller will consider each of these opposition cases based on various factors that are defined in the new procedure. The new procedure can be seen here here
04-28-2011 (Newsletter Issue 7/11)
Change of Office Practice in Opposition Proceedings
The Irish Patents Office has suspended its practice of automatically refusing an application for registration, following the opposition thereto from the proprietor of an earlier mark, against which the Applicant claimed there has been honest concurrent use of the trademark for which registration was sought.
This suspension will continue until a consultative exercise regarding the interpretation and administration of the relevant legislation is concluded.
The effect of the suspension will be that all oppositions will now proceed on the basis of Rules 18 to 25 of the Trade Mark Rules 1996, as amended.
10-01-2010 (Newsletter Issue 15/10)
New Trademark Rules
Ireland's new Trade Marks (Amendment) Rules 2010 came into effect on October 4th, 2010. They will modernise trade mark proceedings before the Patents Office in several ways. In particular,
- a new procedure gives parties to an opposition the option to file written submissions in lieu of attending a hearing.
- procedures for an application for a declaration of invalidity have been substantially amended, to align them with opposition procedures. Accordingly an invalidity action will involve filing a notice of opposition/counter-statement by way of defence; evidence in support of the action by the applicant for invalidity; evidence by the proprietor of the contested mark; evidence in reply by the applicant for invalidity; and further evidence, with the leave of the Office.
- the number of marks which may appear in a series is to be limited to a maximum of six marks.
- the merger of an applicant or proprietor company with a separate company will now be capable of being dealt with like an assignment, rather than as an amendment to the register.
- the deadline to request a hearing has been extended from 10 days to 21 days.
- a new application form now allows the applicant to declare that it is using the mark or has a good-faith intention to use it, rather than having to choose between the two options.
Source: www.marques.org and www.patentsoffice.ie
05-09-2010 (Newsletter Issue 10/10)New Guidelines for Extension of TimeThe Patent Office of Ireland has introduced new guidelines for dealing with applications for extension of time in respect of trademarks. They will ensure that applications for extension of time are not made routinely, but are the result of, or supported by evidence of unusual or exceptional circumstances like court cases or other proceedings awaiting completion and circumstances beyond the reasonable control of the applicant.
The new guideline is effective on May 4th, 2010.
For more information please click here
Legal basis is the Trademark Act of 1996 (in force since July 1st, 1996) and the Trade Marks (Amendment) Rules 2010. Ireland is a member of the Madrid Protocol and the European Union.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
As in the United Kingdom, the principles of “common law” apply.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, holograms, colours, colour combinations, three-dimensional forms, the three-dimensional form of a good or its packaging as well as sound marks, olfactory marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks, company names and business names.
The application is filed at the Trademark Office.
Multiple-class applications are possible.
The number of marks which may appear in a series is to be limited to a maximum of six marks.
Foreign applicants do not need a local representative.
A postal address within Ireland is sufficient.
A power of attorney is not necessary.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The processing time from first filing to registration or first office action is approx. 2 months. If no oppositions or official objections have been raised, the registration will take place after approx. 12 months.
Prior to registration, the trademark application is published in the bi-weekly “Official Journal”.
The opposition period is 3 months minus 1 day from publication of the trademark application.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
Protection extends from the date of application once registration has been granted. The duration of registration of a Trade Mark is 10 from date of application minus a day as the renewal has to be paid before midnight on the eve of the registration date.
The registration is renewable for periods of 10 years minus 1 day. For applications prior to July 1st, 1996, validity is 7 years with renewals possible for 14 years. From the first renewal after July 1st, 1996, on, renewal periods are 10 years.
If the trademark has not been used within 5 years from publication of registration, or has not been used for five continous years thereafter, it may be subject to cancellation. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
The official application fee is EUR 70.00 per class. The registration fee is EUR 177.00 regardless of the number of classes applied for.
When a series of trademarks shall be registered in a single registration, a fee of EUR 50.00 needs to be paid for each trademark in excess of two trademarks contained in the application.
Trademark Licence Agreement
In Ireland a licence to use a trademark has to be in writing. Licensing of unregistered trademarks is permitted. A licence may be general or limited. It may be restricted to only some of the goods and/or services covered by the trademark registration, or for specific geographical territories. The sale of a registered trademark does not automatically terminate a licence agreement, but this may depend on the terms of the licence. There are no statutory provisions which require specific terms to be incorporated into a licence agreement.
There are statutory provisions for the recordal of a licensee. Recordal is merely voluntary but it is recommended to record a licence on the Irish Trademark Register. There is no time frame for a recordal. However, to be able to enforce the terms of an agreement against third parties and to be taken into account for the assessment of damages against a third party infringer, the licence should be recorded within six months from the date of its execution. A licence can still be recorded after the six month period, but the above does not apply until the licence is recorded.
The following documents are required for the recordal of a licence:
1. An original licence agreement or a certified copy thereof
2. A certified English translation, if the document is not in English
A licence becomes enforceable against third parties on the date it is recorded on the Official Register, while this is not specifically provided for in the Act. Publication of a licence agreement is not required.
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the trademark owner in infringement proceedings. He may call upon the owner to institute infringement proceedings. If the licensee has called upon the trademark owner to institute infringement proceedings and the owner has neglected or refused to do so, then, after two months, the licensee may institute such proceedings in his own name. If the licensee is an exclusive licensee and was given the same rights and remedies as an assignee, he can institute infringement proceedings in his own name without notifying the proprietor. The licensee must cite the owner as co-defendant in infringement proceedings, but it is possible for the licensee to obtain the leave of the court not to cite the proprietor as co-defendant in any such proceedings.
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We would like to thank the following law firms for their assistance in updating the information provided:
MacLachlan & Donaldson, Dublin 2, Ireland
Tomkins & Co., Dublin, Ireland
MacLachlan & Donaldson, Dublin 2, Ireland
Tomkins & Co., Dublin, Ireland