TM Inconsistent Marks

TRADE MARKS ACT 1996

(as amended)

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:

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

“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

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
†

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

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

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

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

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)

(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,