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