TM Infringement

 

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
†

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

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

(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

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

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

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

 

* *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.

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

(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

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

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.

 

* Copyright and Other Intellectual Property Law Provisions Act 2019

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.

* Copyright and Other Intellectual Property Law Provisions Act 2019

(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)

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.

 

 

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
Copyright and Other Intellectual Property Law Provisions Act 2019

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

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

(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

(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”.

District Court Rules

Intellectual Property : S.I. No. 421 Of 2010