The owner of the registered trade mark has the exclusive rights in the trade mark. Such rights shall be infringed by the use of that trade mark in the State without the
owner’s consent. Restricted acts, if done without that consent, constitute an infringement of the owner’s rights
The owner of that registered trade mark is 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. This does not limit the rights of owners acquired before the filing date or the priority date of the registered trade mark.
A trademark protects against the use of an identical mark for identical goods or services and against similar or identical marks for similar or identical goods or services. Where identical marks are used for identical goods or services, there is no need to prove a likelihood of confusion. In the case of similar or identical trademarks for similar or identical goods and services, a risk of confusion must be shown.
The rights of the owner of a registered trade mark shall have effect from the date of registration of the trade mark. No infringement proceedings may be begun before the date of publication of the registration of the trade mark. No offence is committed by anything done before that date.
A person infringes a registered trade mark if he uses in the course of trade a sign which is identical to the trade mark in relation to goods or services which are identical to those for which it is registered.
A person infringes a registered trade mark if he uses in the course of trade a sign where because—
- the sign is identical to the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
- 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.
A person infringes 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.
Use of a sign shall include, in particular—
- affixing it to goods or the packaging thereof;
- 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;
- importing or exporting goods under the sign; or sign
- using the sign on business papers or in advertising.
- using the sign as a trade or company name or part of a trade or company name; or
- using the sign in comparative advertising in a manner that is contrary to the European Communities (Misleading and Comparative Marketing Communications)
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 owner of a trade mark, the owner of that trade mark shall have the right to prohibit the following acts if carried out in the course of trade:
- 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;
- 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.
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 owner or a licensee of the registered trade mark.
The above does not prevent the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the owner 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.
Similarity & Confusion
The entire circumstances should be considered in relation to whether the requisite degree of similarity and the likelihood of confusion that exist. The marks need not be identical in their content but may evoke the same ideas and impressions on the public.
There is an emphasis on the initial impression created by the trademarks, relative to each other. Trademarks may not be identical but may leave a similar impression notwithstanding, imperfect recollection.
The likelihood of confusion or misleading the public arises in this context. Trademarks are compared primarily, on the basis of visual impression. However, the medium through which the goods or services are sold and marketed is relevant to the aspect of the marks which are compared. The totality of the trademark should be considered. It should be considered in the context in which it is commonly used in the trade.
There may be a literal similarity or conceptual similarities between the marks. The similarity may be in the sound of the words (if any). It should be considered in both the visual and aural similarity. The similarity of the goods and services will be relevant.
In assessing the similarity of goods and services, consideration needs to be given to the nature of the goods or services, the market in which they are sold, their use and purpose, the buyer, the marketing and distribution channels and to what extent the goods and services could be provided side by side.
If several of the above factors converge, there is likely to be sufficient similarity for the purpose of refusal of registration. Trademark legislation divides goods and services into different categories. However, this is not definitive in terms of the similarity of goods or services for the purpose of protection of trademarks.
The status of an existing use and mark is relevant if there is a well-established existing use. This will be relevant to the assessment of similarity. Ultimately, a judgement must be made in relation to similarity and the likelihood of confusion.
In the case of similar goods, there must be a likelihood of confusion. As with passing off, the legislation seeks to protect against the taking of goodwill of one business by another. The distinct characteristics of the earlier mark are considered in assessing whether the goods and services are similar, such as to cause a risk of confusion.
The higher the risk of similarity between the marks and names, the lower the degree of similarity will be required in respect of the goods. Correspondingly, where the goods and services are similar, a lesser degree of similarity between the marks would be sufficient to reject registration or be a defence to infringement.
Separate provisions allow opposition to registration based on existing unregistered rights which have an established reputation. The owner of the earlier right must be able to show that he would have a right under common law to restrain the later mark use.