{"id":13127,"date":"2022-08-20T15:18:07","date_gmt":"2022-08-20T15:18:07","guid":{"rendered":"http:\/\/legalblog.ie\/?p=13127"},"modified":"2024-04-21T21:51:15","modified_gmt":"2024-04-21T21:51:15","slug":"trade-mark-rights","status":"publish","type":"post","link":"https:\/\/legalblog.ie\/trade-mark-rights\/","title":{"rendered":"Trade Mark Rights"},"content":{"rendered":"<div id=\"ez-toc-container\" class=\"ez-toc-v2_0_63 counter-hierarchy ez-toc-counter ez-toc-grey ez-toc-container-direction\">\n<div class=\"ez-toc-title-container\">\n<p class=\"ez-toc-title \" >Table of Contents<\/p>\n<span class=\"ez-toc-title-toggle\"><a href=\"#\" class=\"ez-toc-pull-right ez-toc-btn ez-toc-btn-xs ez-toc-btn-default ez-toc-toggle\" aria-label=\"Toggle Table of Content\"><span class=\"ez-toc-js-icon-con\"><span class=\"\"><span class=\"eztoc-hide\" style=\"display:none;\">Toggle<\/span><span class=\"ez-toc-icon-toggle-span\"><svg style=\"fill: #999;color:#999\" xmlns=\"http:\/\/www.w3.org\/2000\/svg\" class=\"list-377408\" width=\"20px\" height=\"20px\" viewBox=\"0 0 24 24\" fill=\"none\"><path d=\"M6 6H4v2h2V6zm14 0H8v2h12V6zM4 11h2v2H4v-2zm16 0H8v2h12v-2zM4 16h2v2H4v-2zm16 0H8v2h12v-2z\" fill=\"currentColor\"><\/path><\/svg><svg style=\"fill: #999;color:#999\" class=\"arrow-unsorted-368013\" xmlns=\"http:\/\/www.w3.org\/2000\/svg\" width=\"10px\" height=\"10px\" viewBox=\"0 0 24 24\" version=\"1.2\" baseProfile=\"tiny\"><path d=\"M18.2 9.3l-6.2-6.3-6.2 6.3c-.2.2-.3.4-.3.7s.1.5.3.7c.2.2.4.3.7.3h11c.3 0 .5-.1.7-.3.2-.2.3-.5.3-.7s-.1-.5-.3-.7zM5.8 14.7l6.2 6.3 6.2-6.3c.2-.2.3-.5.3-.7s-.1-.5-.3-.7c-.2-.2-.4-.3-.7-.3h-11c-.3 0-.5.1-.7.3-.2.2-.3.5-.3.7s.1.5.3.7z\"\/><\/svg><\/span><\/span><\/span><\/a><\/span><\/div>\n<nav><ul class='ez-toc-list ez-toc-list-level-1 ' ><ul class='ez-toc-list-level-3' ><li class='ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-1\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/#Owners_Rights\" title=\"Owner&#8217;s Rights\">Owner&#8217;s Rights<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-2\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/#Infringement\" title=\"Infringement\">Infringement<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-3\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/#Use\" title=\"Use\">Use<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-4\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/#Ancillary_Things\" title=\"Ancillary Things\">Ancillary Things<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-5\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/#Similarity_Confusion\" title=\"Similarity &amp; Confusion\">Similarity &amp; Confusion<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-6\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/#Similarity_Considerations\" title=\"Similarity Considerations\">Similarity Considerations<\/a><\/li><\/ul><\/li><li class='ez-toc-page-1 ez-toc-heading-level-2'><a class=\"ez-toc-link ez-toc-heading-7\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#TRADE_MARKS_ACT_1996\" title=\"TRADE MARKS ACT 1996\">TRADE MARKS ACT 1996<\/a><ul class='ez-toc-list-level-4' ><li class='ez-toc-heading-level-4'><ul class='ez-toc-list-level-4' ><li class='ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-8\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Interpretation\" title=\"Interpretation.\">Interpretation.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-9\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Orders_regulations_and_rules\" title=\"Orders, regulations and rules.\">Orders, regulations and rules.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-10\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Register_Trade_Marks_Introductory\" title=\"Register Trade Marks Introductory\">Register Trade Marks Introductory<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-11\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Trade_marks\" title=\"Trade marks.\">Trade marks.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-12\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Registered_trade_marks\" title=\"Registered trade marks.\">Registered trade marks.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-13\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Grounds_for_Refusal_of_Registration\" title=\"Grounds for Refusal of Registration\">Grounds for Refusal of Registration<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-14\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Absolute_grounds_for_refusal_of_registration\" title=\"Absolute grounds for refusal of registration.\">Absolute grounds for refusal of registration.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-15\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Specially_protected_emblems\" title=\"Specially protected emblems.\">Specially protected emblems.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-16\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Relative_grounds_for_refusal_of_registration\" title=\"Relative grounds for refusal of registration.\">Relative grounds for refusal of registration.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-17\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Meaning_of_%E2%80%9Cearlier_trade_mark%E2%80%9D\" title=\"Meaning of \u201cearlier trade mark\u201d.\">Meaning of \u201cearlier trade mark\u201d.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-18\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Raising_of_relative_grounds_in_case_of_honest_concurrent_use\" title=\"Raising of relative grounds in case of honest concurrent use.\">Raising of relative grounds in case of honest concurrent use.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-19\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Effects_of_Registered_Trade_Mark\" title=\"Effects of Registered Trade Mark\">Effects of Registered Trade Mark<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-20\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Rights_conferred_by_registered_trade_mark\" title=\"Rights conferred by registered trade mark.\">Rights conferred by registered trade mark.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-21\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Infringement_of_registered_trade_mark\" title=\"Infringement of registered trade mark.\">Infringement of registered trade mark.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-22\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Limits_on_effect_of_registered_trade_mark\" title=\"Limits on effect of registered trade mark.\">Limits on effect of registered trade mark.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-23\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Use_of_trade_marks\" title=\"Use of trade marks\">Use of trade marks<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-24\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Registration_subject_to_disclaimer_or_limitation\" title=\"Registration subject to disclaimer or limitation.\">Registration subject to disclaimer or limitation.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-25\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Action_for_infringement\" title=\"Action for infringement.\">Action for infringement.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-26\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Intervening_right_of_the_proprietor_of_a_later_registered_trade_mark_as_defence_in_action_for_infringement\" title=\"Intervening right of the proprietor of a later registered trade mark as defence in action for infringement\">Intervening right of the proprietor of a later registered trade mark as defence in action for infringement<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-27\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Order_for_erasure_c_of_offending_sign\" title=\"Order for erasure &amp;c. of offending sign.\">Order for erasure &amp;c. of offending sign.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-28\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Period_after_which_remedy_of_delivery_up_not_available\" title=\"Period after which remedy of delivery up not available.\">Period after which remedy of delivery up not available.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-29\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Order_as_to_disposal_of_infringing_goods_material_or_articles\" title=\"Order as to disposal of infringing goods, material or articles\">Order as to disposal of infringing goods, material or articles<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-30\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Remedy_for_groundless_threats_of_infringement_proceedings\" title=\"Remedy for groundless threats of infringement proceedings\">Remedy for groundless threats of infringement proceedings<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-31\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Infringing_goods_material_or_articles_powers_of_seizure_and_search\" title=\"Infringing goods, material or articles: powers of seizure and search.\">Infringing goods, material or articles: powers of seizure and search.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-32\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Registered_Trade_Mark_as_Object_of_Property\" title=\"Registered Trade Mark as Object of Property\">Registered Trade Mark as Object of Property<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-33\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Nature_of_registered_trade_mark\" title=\"Nature of registered trade mark.\">Nature of registered trade mark.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-34\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Jointly_owned_trade_marks\" title=\"Jointly owned trade marks.\">Jointly owned trade marks.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-35\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Assignment_c_of_registered_trade_mark\" title=\"Assignment &amp;c. of registered trade mark.\">Assignment &amp;c. of registered trade mark.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-36\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Registration_of_transactions_affecting_registered_trade_mark\" title=\"Registration of transactions affecting registered trade mark.\">Registration of transactions affecting registered trade mark.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-37\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Trusts_and_equities\" title=\"Trusts and equities.\">Trusts and equities.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-38\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Application_for_registration_of_trade_mark_as_an_object_of_property\" title=\"Application for registration of trade mark as an object of property.\">Application for registration of trade mark as an object of property.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-39\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Licensing_of_registered_trade_mark\" title=\"Licensing of registered trade mark.\">Licensing of registered trade mark.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-40\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Exclusive_licences\" title=\"Exclusive licences.\">Exclusive licences.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-41\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#General_provisions_as_to_rights_of_licensees_in_case_of_infringement\" title=\"General provisions as to rights of licensees in case of infringement.\">General provisions as to rights of licensees in case of infringement.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-42\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Exclusive_licensee_having_rights_and_remedies_of_assignee\" title=\"Exclusive licensee having rights and remedies of assignee.\">Exclusive licensee having rights and remedies of assignee.<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-4'><a class=\"ez-toc-link ez-toc-heading-43\" href=\"https:\/\/legalblog.ie\/trade-mark-rights\/2\/#Exercise_of_concurrent_rights\" title=\"Exercise of concurrent rights.\">Exercise of concurrent rights.<\/a><\/li><\/ul><\/li><\/ul><\/li><\/ul><\/nav><\/div>\n<h3><span class=\"ez-toc-section\" id=\"Owners_Rights\"><\/span>Owner&#8217;s Rights<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>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<br \/>\nowner&#8217;s consent. Restricted acts, if done without that consent, constitute an infringement of the owner&#8217;s rights<\/p>\n<p>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.<\/p>\n<p>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.<\/p>\n<p>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.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Infringement\"><\/span>Infringement<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>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.<\/p>\n<p>A person infringes a registered trade mark if he uses in the course of trade a sign where because\u2014<\/p>\n<ul>\n<li>\u00a0the 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<\/li>\n<li>\u00a0the 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.<\/li>\n<\/ul>\n<p>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.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Use\"><\/span>Use<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>Use of a sign shall include, in particular\u2014<\/p>\n<ul>\n<li>affixing it to goods or the packaging thereof;<\/li>\n<li>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;<\/li>\n<li>importing or exporting goods under the sign; or sign<\/li>\n<li>using the sign on business papers or in advertising.<\/li>\n<li>using the sign as a trade or company name or part of a trade or company name; or<\/li>\n<li>using the sign in comparative advertising in a manner that is contrary to the European Communities (Misleading and Comparative Marketing Communications)<br \/>\nRegulations<\/li>\n<\/ul>\n<h3><span class=\"ez-toc-section\" id=\"Ancillary_Things\"><\/span>Ancillary Things<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>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:<\/p>\n<ul>\n<li>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;<\/li>\n<li>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.<\/li>\n<\/ul>\n<p>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.<\/p>\n<p>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.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Similarity_Confusion\"><\/span>Similarity &amp; Confusion<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>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.<\/p>\n<p>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.<\/p>\n<p>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.<\/p>\n<p>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.<\/p>\n<p>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.<\/p>\n<p>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.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Similarity_Considerations\"><\/span>Similarity Considerations<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>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.<\/p>\n<p>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.<\/p>\n<p>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.<\/p>\n<p>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.<\/p>\n<p><!--nextpage--><\/p>\n<h2>TRADE MARKS ACT 1996<\/h2>\n<p>(as amended)<\/p>\n<p>TRADE MARKS ACT, 1996<\/p>\n<p>&nbsp;<\/p>\n<p>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]<\/p>\n<p>BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:<\/p>\n<p>PART I<\/p>\n<p>Preliminary and General<\/p>\n<p>Short title and commencement<br \/>\n1. \u2014(1) This Act may be cited as the Trade Marks Act, 1996.<\/p>\n<p>(2) The provisions of the Act shall come into operation on such day as the Minister may by order fix.<br \/>\n(3) Different days may be so fixed for different provisions and different purposes.<\/p>\n<h4>Interpretation.<\/h4>\n<p>2. \u2014(1) In this Act, except where the context otherwise requires\u2014<\/p>\n<p>\u201cthe Act of 1963\u201dmeans the Trade Marks Act, 1963 ;<br \/>\n\u201cAgreement establishing the World Trade Organisation\u201d has the meaning assigned by section 60;*<br \/>\n\u201c appropriate court\u201d means\u2014<br \/>\n(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,<br \/>\n(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<br \/>\n(c) in any other case, the High Court;\u201d.\u2020<br \/>\n\u201cassignment\u201d means assignment by act of the parties concerned; \u201cbusiness\u201d includes a trade or profession;<br \/>\n\u201cCommunity trade mark\u201d, and \u201cCommunity Trade Mark Regulation\u201d have the meanings assigned by section 56 ;<br \/>\n\u201cthe Controller\u201d means the Controller of Patents, Designs and Trade Marks Intellectual Property;<br \/>\n\u201cConvention country\u201d has the meaning assigned by section 60 ; \u201cthe Court\u201d means the High Court;<br \/>\n\u201cdirective\u201d has the meaning assigned by section 56;<br \/>\n\u201cdirector\u201d, in relation to a body corporate whose affairs are managed by its members, means any member of the body;<br \/>\n\u201cearlier trade mark\u201d has the meaning assigned by section 11 ;<br \/>\n\u201c \u2019EEA Agreement\u2019 means the Agreement on the European Economic Area signed at Oporto on 2 May 1992, as adjusted by all subsequent amendments to that Agreement;<br \/>\n\u2018EEA state\u2019 means-<br \/>\n(a) a Member State (other than the State), or<br \/>\n(b) a state (other than a Member State) that is a contracting party to the EEA agreement;\u201d*<\/p>\n<p>* Patents Amendment Act 2006 (31\/2006)<br \/>\n*S.I. No. 47 of 2016 European Communities (Trade Mark Agents) Regulations 2016<br \/>\n*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<br \/>\n\u2020 Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<p>\u201cEuropean Union trade mark\u201d has the meaning assigned by section 56;<br \/>\n\u201cEuropean Union Trade Mark Regulation\u201d has the meaning assigned by section 56;* \u201cexclusive licence\u201d and \u201cexclusive licensee\u201d have the meanings assigned by section 33;<br \/>\n\u201cinfringement proceedings\u201d, in relation to a registered trade mark, include proceedings under section 20 ;<br \/>\n\u201cthe Journal\u201d means the Patents Office Journal;<br \/>\n\u201cthe Minister\u201d means the Minister for Enterprise and Employment;<br \/>\n\u201cthe Office\u201d means the Patents Office Intellectual Property Office of Ireland; \u201cthe Paris Convention\u201d has the meaning assigned by section 60 ;<br \/>\n\u201cpartnership\u201d has the meaning assigned by section 1 of the Partnership Act, 1890; \u201cprescribed\u201d means, in relation to proceedings before the Court the appropriate courti, prescribed by rules<br \/>\nof court and, in any other case, prescribed by this Act or orders, rules or regulations made hereunder;<br \/>\n\u201cpublish\u201d means make available to the public, and references to publication\u2014<br \/>\n(a) in relation to an application for registration, are to publication under section 43 (1), and<br \/>\n(b) in relation to registration, are to publication under section 45 (4);<br \/>\n\u201cthe register\u201d, except in Part V , means the Register of Trade Marks kept under this Act;<br \/>\n\u201crules\u201d, except in relation to rules of court, mean rules made by the Minister under<br \/>\nsection 81 ;<br \/>\n\u201cState emblem of Ireland\u201d means any emblem notified as such under Article 6ter of the Paris Convention;<br \/>\n\u201ctrade\u201d includes any business or profession;<br \/>\n\u201ctrade mark\u201d has the meaning assigned by section 6 .<\/p>\n<p>(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.<\/p>\n<p>(3) Any reference in this Act to a Community European Union\u2020 instrument includes a reference to any instrument amending or replacing that instrument.<\/p>\n<p>(4) In this Act\u2014<br \/>\n(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<br \/>\n(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.<\/p>\n<p>(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.<\/p>\n<p>\u2020 *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<h4>Orders, regulations and rules.<\/h4>\n<p>3. \u2014(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.<\/p>\n<p>(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.<\/p>\n<p>(3) Where\u2014<\/p>\n<p>(a) a regulation is proposed to be made under section 57 or section 59 , or<br \/>\n(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.*<br \/>\n\u2020<br \/>\n(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.<\/p>\n<p>(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).<\/p>\n<p>Expenses.<br \/>\n4. \u2014The 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.<\/p>\n<p>Repeal.<br \/>\n5. \u2014Subject to the provisions of section 100 , the Act of 1963 is hereby repealed.<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<br \/>\n\u2020<\/p>\n<p>PART II<\/p>\n<h4>Register Trade Marks Introductory<\/h4>\n<h4>Trade marks.<\/h4>\n<p>6. \u2014(1) In this Act a \u201ctrade mark\u201d means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.<\/p>\n<p>(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.<\/p>\n<p>(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.*<\/p>\n<p>(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.<\/p>\n<h4>Registered trade marks.<\/h4>\n<p>7. \u2014(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.<\/p>\n<p>(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.<\/p>\n<h4>Grounds for Refusal of Registration<\/h4>\n<h4>Absolute grounds for refusal of registration.<\/h4>\n<p>8. \u2014(1) The following shall not be registered as trade marks:<br \/>\n(a) signs which do not satisfy the requirements of section 6 (1);<br \/>\n(b) trade marks which are devoid of any distinctive character;<br \/>\n(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;<br \/>\n(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:<\/p>\n<p>* * *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or<br \/>\n(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.<\/p>\n<p>(2) A sign shall not be registered as a trade mark if it consists exclusively of\u2014<\/p>\n<p>(a) the shape shape or another characteristic which results from the nature of the goods themselves; or<br \/>\n(b) the shape shape or another characteristic of goods which is necessary to obtain a technical result; or<br \/>\n(c) the shape shape or another characteristic which gives substantial value to the goods<\/p>\n<p>(3) A trade mark shall not be registered if\u2014<\/p>\n<p>(a) it is contrary to public policy or to accepted principles of morality; or<br \/>\n(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.<\/p>\n<p>(4) A trade mark shall not be registered if or to the extent that\u2014*<\/p>\n<p>(a) its use is prohibited in the State by any enactment or rule of law or by any provision of Community law; or<br \/>\n(b) the application for registration is made in bad faith by the applicant.\u2020<\/p>\n<p>(4) A trade mark shall not be registered if or to the extent that\u2014<\/p>\n<p>(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<\/p>\n<p>*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<br \/>\ngeographical indications or where the State or the European Union is party to an international agreement protecting designations of origin and geographical indications; or<\/p>\n<p>(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<\/p>\n<p>(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<br \/>\n(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<\/p>\n<p>\u2020 *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>closely related species; or<br \/>\n(e) the application for registration is made in bad faith by the applicant.*<\/p>\n<h4>Specially protected emblems.<\/h4>\n<p>9. \u2014(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.<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<h4>Relative grounds for refusal of registration.<\/h4>\n<p>10. \u2014(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.<\/p>\n<p>(2) A trade mark shall not be registered if because\u2014<\/p>\n<p>(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\u2020<br \/>\n(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,<\/p>\n<p>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.<\/p>\n<p>(3) A trade mark which\u2014<br \/>\n(a) is identical with or similar to an earlier \u2021trade mark, and<\/p>\n<p>(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,<br \/>\nshall 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.<\/p>\n<p>(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<\/p>\n<p>* Patents Amendment Act 2006 (31\/2006)<br \/>\n\u2020 *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.<\/p>\n<p>(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.<\/p>\n<p>(4) A trade mark shall not be registered if, or to the extent that, its use in the State is liable to be prevented\u2014<\/p>\n<p>(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<br \/>\n(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<br \/>\n(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\u2014<\/p>\n<p>(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*<br \/>\n(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.\u201d, and<\/p>\n<p>(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 \u201cearlier right\u201d in relation to the trade mark.<\/p>\n<p>(5A) Where an agent or representative of the proprietor of a trade mark applies in his or her own name, without the proprietor\u2019s consent, for the registration of the trade mark, the application is to be refused unless the agent or representative justifies that action.<\/p>\n<p>(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.<\/p>\n<p>Grounds for refusal or invalidity relating to only some of the goods or services<\/p>\n<p>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.<\/p>\n<p>&nbsp;<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<h4>Meaning of \u201cearlier trade mark\u201d.<\/h4>\n<p>11. \u2014(1) In this Act an \u201cearlier trade mark\u201d means\u2014<\/p>\n<p>(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;<br \/>\n(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,<br \/>\ntaking account (where appropriate) of the priorities claimed in respect of the trade marks*<br \/>\n(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<br \/>\n(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.<\/p>\n<p>(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).\u2020<\/p>\n<p>(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.<\/p>\n<h4>Raising of relative grounds in case of honest concurrent use.<\/h4>\n<p>12. \u2014(1) This section applies where on an application for the registration of a trade mark it appears to the Controller\u2014<\/p>\n<p>(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<br \/>\n(b) that there is an earlier right in relation to which the condition set out in section 10<br \/>\n(4) is satisfied,<br \/>\nbut 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.<br \/>\n(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.<\/p>\n<p>(3) For the purposes of this section \u201chonest concurrent use\u201d 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 .<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<br \/>\n* Patents Amendment Act 2006 (31\/2006)<\/p>\n<p>(4) Nothing in this section affects\u2014<\/p>\n<p>(a) the refusal of registration on the grounds mentioned in section 8 ; or<br \/>\n(b) the making of an application for a declaration of invalidity under section 52 (2).<\/p>\n<h4>Effects of Registered Trade Mark<\/h4>\n<h4>Rights conferred by registered trade mark.<\/h4>\n<p>13. \u2014(1) The proprietor of a registered trade mark Without prejudice to the<br \/>\nrights 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&#8217;s consent; and the acts referred to in section 14 , if done without that consent, shall constitute infringement of the proprietor&#8217;s rights.<\/p>\n<p>(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.<\/p>\n<p>(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<br \/>\nshall 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<br \/>\nthe 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.<\/p>\n<p>(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<\/p>\n<p>(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)).<\/p>\n<p>(4) Notwithstanding subsection (3)\u2014<br \/>\n(a) no infringement proceedings may be begun before the date of publication of the registration of the trade mark; and<br \/>\n(b) no offence shall be regarded as committed under section 92 by anything done before that date.<\/p>\n<p>Reproduction of trademarks in dictionaries<br \/>\n13A. 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,<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>at the request of the proprietor of the trade mark, ensure that the reproduction of the trade mark is, without delay, and in the case of works in printed form at the latest in the next edition of the publication, accompanied by an indication that it is a registered trade mark.*<\/p>\n<h4>Infringement of registered trade mark.<\/h4>\n<p>14. \u2014(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.<\/p>\n<p>(2) A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because\u2014<br \/>\n(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<br \/>\n(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,<br \/>\nthere exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trade mark.<\/p>\n<p>(3) A person shall infringe a registered trade mark if that person uses in the course of trade a sign which\u2014<br \/>\n(a) is identical with or similar to the trade mark, and<br \/>\n(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,<br \/>\nwhere 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.<\/p>\n<p>(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.\u2020<\/p>\n<p>(4) For the purposes of this section, use of a sign shall include, in particular\u2014<br \/>\n(a) affixing it to goods or the packaging thereof;<br \/>\n(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;<br \/>\n(c) importing or exporting goods under the sign; or sign<br \/>\n(d) using the sign on business papers or in advertising.<br \/>\n(e) using the sign as a trade or company name or part of a trade or company name; or<br \/>\n(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).\u201d, and<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<br \/>\n\u2020 Patents Amendment Act 2006 (31\/2006)<\/p>\n<p>(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:<\/p>\n<p>(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;<\/p>\n<p>(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.*<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<h4>Limits on effect of registered trade mark.<\/h4>\n<p>15. \u2014(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).<\/p>\n<p>(2) A registered trade mark shall not be infringed by\u2014<br \/>\n(a) the use by a person of his own name or address;<br \/>\n(a) the use of the name or address of a third party, where that third party is a natural person;<br \/>\n(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<br \/>\n(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;<br \/>\n(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\u2020 in accordance with honest practices in industrial and commercial<\/p>\n<p>\u2020 *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>matters.<\/p>\n<p>(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.<\/p>\n<p>(4) For the purpose of subsection (3) an \u201cearlier right\u201d 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\u2014<br \/>\n(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<br \/>\n(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;<br \/>\nand 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.<\/p>\n<p>Exhaustion of rights conferred by registered trade mark<br \/>\n16. \u2014(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.<\/p>\n<p>(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.<\/p>\n<h4>Use of trade marks<\/h4>\n<p>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.<\/p>\n<p>(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\u2014<\/p>\n<p>(a) from the date when the mark can no longer be rejected or opposed, or<br \/>\n(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.<\/p>\n<p>(3) The date of commencement of the 5 year period in subsection (1) shall be entered in the register.<\/p>\n<p>(4) Use within the meaning of subsection (1) shall include\u2014<br \/>\n(a) use of the trade mark in a form differing in elements which do not alter the distinctive<\/p>\n<p>*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>&nbsp;<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>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<br \/>\n(b) affixing of the trade mark to goods or to the packaging thereof in the State solely for export purposes.<\/p>\n<p>(5) Use of the trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.*<\/p>\n<h4>Registration subject to disclaimer or limitation.<\/h4>\n<p>17. \u2014(1) A person who applies for the registration of a trade mark or the proprietor of a registered trade mark may\u2014<br \/>\n(a) disclaim any right to the exclusive use of any specified element of the trade mark, or<br \/>\n(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation;<br \/>\nand where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 13 shall be restricted accordingly.<br \/>\n(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.<\/p>\n<p>(3) Particulars of any disclaimer or limitation shall be entered in the register.<\/p>\n<p>Infringement Proceedings<\/p>\n<h4>Action for infringement.<\/h4>\n<p>18. \u2014(1) Where a registered trade mark is infringed, the infringement shall be actionable by the proprietor of the trade mark.<\/p>\n<p>(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.<br \/>\nNon-use as defence in action for infringement<br \/>\n18A. (1) The proprietor of a trade mark shall be entitled to prohibit the use of a sign only to the extent that the proprietor\u2019s rights are not liable to be revoked pursuant to section 51 at the time the action for infringement is brought.<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>(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\u2014<\/p>\n<p>(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<\/p>\n<p>(b) that there are proper reasons for non-use,<\/p>\n<p>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.<\/p>\n<h4>Intervening right of the proprietor of a later registered trade mark as defence in action for infringement<\/h4>\n<p>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).*<\/p>\n<p>(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.\u2020<\/p>\n<p>(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.\u2021<\/p>\n<h4>Order for erasure &amp;c. of offending sign.<\/h4>\n<p>19. \u2014(1) Where a person is found to have infringed a registered trade mark, the Court appropriate court may make an order requiring him\u2014<br \/>\n(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<br \/>\n(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.<\/p>\n<p>(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.<\/p>\n<p>Order for delivery up of infringing goods, material or articles.<br \/>\n20. \u2014(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<\/p>\n<p>\u2020*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<br \/>\n\u2021 Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<p>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).<\/p>\n<p>(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 .<\/p>\n<p>(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.<\/p>\n<p>(4) Nothing in this section shall affect any other power of the Court appropriate court*.<\/p>\n<p>Meaning of \u201cinfringing goods, material or articles\u201d.<\/p>\n<p>21. \u2014(1) In this Act the expressions \u201cinfringing goods\u201d, \u201cinfringing material\u201d and \u201cinfringing articles\u201d shall be construed as defined herein.<\/p>\n<p>(2) Goods shall be \u201cinfringing goods\u201d, in relation to a registered trade mark, if they or their packaging bear a sign identical or similar to that mark and either\u2014<br \/>\n(a) the application of the sign to the goods or their packaging was an infringement of the registered trade mark, or<br \/>\n(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<br \/>\n(c) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trade mark.<\/p>\n<p>(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.<\/p>\n<p>(4) Material shall be \u201cinfringing material\u201d, in relation to a registered trade mark, if it bears a sign identical or similar to that mark and either\u2014<br \/>\n(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<br \/>\n(b) it is intended to be so used and such use would infringe the registered trade mark.<br \/>\n(5) \u201cInfringing articles\u201d, in relation to a registered trade mark, means articles\u2014<br \/>\n(a) which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and<br \/>\n(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.<\/p>\n<p>&nbsp;<\/p>\n<p>* Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<h4>Period after which remedy of delivery up not available.<\/h4>\n<p>22. \u2014(1) Subject to the provisions of this section, an application for an order under section 20<br \/>\nmay not be made after the end of the period of six years from\u2014<br \/>\n(a) in the case of infringing goods, the date on which the trade mark was applied to the goods or their packaging;<br \/>\n(b) in the case of infringing material, the date on which the trade mark was applied to the material; or<br \/>\n(c) in the case of infringing articles, the date on which they were made.<br \/>\n(2) If during the whole or part of the period referred to in subsection (1) the proprietor of the registered trade mark\u2014<br \/>\n(a) is under a disability, or<br \/>\n(b) is prevented by fraud or concealment from discovering the facts entitling the proprietor to apply for an order,<br \/>\nan 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.<\/p>\n<p>(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 .<\/p>\n<h4>Order as to disposal of infringing goods, material or articles<\/h4>\n<p>23. \u2014(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* \u2014<br \/>\n(a) for an order that they be destroyed or forfeited to such person as the Court appropriate court thinks fit, or<br \/>\n(b) for a decision that no such order should be made.<\/p>\n<p>(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.<\/p>\n<p>(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\u2014<br \/>\n(a) to appear in proceedings for an order under this section, whether or not he was served with notice, and<br \/>\n(b) to appeal against any order made, whether or not he appeared;<br \/>\nand, 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.<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<p>* Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<p>(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 .<br \/>\n*<br \/>\n(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*<\/p>\n<h4>Remedy for groundless threats of infringement proceedings<\/h4>\n<p>24. \u2014(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than in relation to\u2014<br \/>\n(a) the application of the mark to goods,<br \/>\n(b) the importation of goods to which the mark has been applied, or<br \/>\nany person aggrieved may apply to the Court appropriate court\u2020 for relief under this section.<br \/>\n(2) The relief which may be applied for as mentioned in subsection (1) is any of the following:<br \/>\n(a) a declaration that the threats are unjustifiable;<br \/>\n(b) an injunction against the continuance of the threats;<br \/>\n(c) damages in respect of any loss sustained by the threats.<br \/>\n(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.<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<h4>Infringing goods, material or articles: powers of seizure and search.<\/h4>\n<p>25. \u2014(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 S\u00edoch\u00e1na to seize the goods, material or articles without warrant and to bring them before the court.<\/p>\n<p>(2) \u2021If 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<\/p>\n<p>* S.I. No. 28\/2000 Copyright and Related Rights Act, 2000<br \/>\n\u2020 Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<p>\u2021 Patents Amendment Act 2006 (31\/2006)<\/p>\n<p>search warrant authorising a named member of the Garda S\u00edoch\u00e1na not below the rank of inspector, accompanied by such other members of the Garda S\u00edoch\u00e1na 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.<\/p>\n<p>(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 S\u00edoch\u00e1na, accompanied by such other members of the Garda S\u00edoch\u00e1na 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<br \/>\n*specified in the warrant using reasonable force where necessary, and to do all or any of the following acts:<\/p>\n<p>(a) to seize any such goods, material or articles;<\/p>\n<p>(b) to make an inventory or prepare other evidence of infringement of a registered trade mark or potential infringement of a registered trade mark;\u2020<\/p>\n<p>(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;<\/p>\n<p>(b) to make an inventory or prepare other evidence of infringement of a registered trade mark or potential infringement of a registered trade mark;<\/p>\n<p>(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 S\u00edoch\u00e1na in executing the warrant or in collating any inventory or other evidence.\u2021<\/p>\n<p>(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\u2014<br \/>\n(a) order them to be delivered up to the proprietor of the registered trade mark concerned;<br \/>\n(b) order them to be destroyed or forfeited to such person as the court thinks fit; or<br \/>\n(c) order them to be dealt with in such other way as the court thinks fit.<br \/>\n(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.<\/p>\n<h4>Registered Trade Mark as Object of Property<\/h4>\n<h4>Nature of registered trade mark.<\/h4>\n<p>26. \u2014A registered trade mark is personal property.<\/p>\n<p>\u2020 Patents Amendment Act 2006 (31\/2006)<\/p>\n<h4>Jointly owned trade marks.<\/h4>\n<p>27. \u2014(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\u2014<br \/>\n(a) on behalf of both or all of them, or<br \/>\n(b) in relation to an article with which both or all of them are connected in the course of trade,<br \/>\nthose persons may be registered as joint proprietors of the trade mark.<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<p>(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 \u201cthe joint owners\u201d) 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\u2014<br \/>\n(a) in respect of which the trade mark is so registered; but<br \/>\n(b) with which both or all of the joint owners are not and have not been connected in the course of trade.<\/p>\n<h4>Assignment &amp;c. of registered trade mark.<\/h4>\n<p>28. \u2014 (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.*<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<p>(1B) Subsection (1A) shall apply to the contractual obligation to transfer the undertaking.<br \/>\n(2) An assignment or other transmission other transfer of a registered trade mark may be partial, that is, limited so as to apply\u2014<br \/>\n(a) in relation to some but not all of the goods or services for which the trade mark is registered; or<br \/>\n(b) in relation to use of the trade mark in a particular manner or a particular locality.<\/p>\n<p>(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<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<\/p>\n<p>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.<\/p>\n<p>(4) Subsections (1) to (3) shall apply to assignment by way of security as in relation to any other assignment.<\/p>\n<p>(5) A registered trade mark may be the subject of a charge in the same way as other personal property.<\/p>\n<p>(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.<\/p>\n<h4>Registration of transactions affecting registered trade mark.<\/h4>\n<p>29. \u2014(1) On application being made to the Controller in the prescribed manner by\u2014<br \/>\n(a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction, or<br \/>\n(b) any other person claiming to be affected by such a transaction,<br \/>\nparticulars of the transaction shall be entered in the register in the prescribed manner.<\/p>\n<p>(2) The following are registrable transactions for the purposes of this Act\u2014<br \/>\n(a) an assignment of a registered trade mark or any right in it;<br \/>\n(b) the grant or assignment of a licence under a registered trade mark;<br \/>\n(c) the granting of any security interest (whether fixed or floating) over a registered trade mark or any right in or under it;<br \/>\n(ca) matters arising from the operation of law which affect the proprietorship of a registered trade mark\u2020<br \/>\n(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<br \/>\n(e) an order of a court the appropriate court\u2021 or other competent authority transferring a registered trade mark or any right in or under it.<\/p>\n<p>(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction\u2014<br \/>\n(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<br \/>\n(b) a person claiming to be a licensee by virtue of the transaction shall not have the protection of section 34 or 35 .<\/p>\n<p>(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.\u00a7<br \/>\n(4) Where a person becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction, then unless\u2014<\/p>\n<p>*<br \/>\n\u2020 Patents Amendment Act 2006 (31\/2006)<br \/>\n\u2021 Intellectual Property (Miscellaneous Provisions) Act 2014<br \/>\n\u00a7\u00a7 Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<p>(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<br \/>\n(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,<\/p>\n<p>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.<\/p>\n<p>(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\u2014<br \/>\n(a) on or after the date of the registrable transaction, and<br \/>\n(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),<br \/>\nthe Court the appropriate court* shall not award the person his or her costs in proceedings for such an infringement of the trade mark unless\u2014<br \/>\n(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<br \/>\n(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.*<\/p>\n<p>(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.<\/p>\n<h4>Trusts and equities.<\/h4>\n<p>30. \u2014(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.<\/p>\n<p>(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.<\/p>\n<h4>Application for registration of trade mark as an object of property.<\/h4>\n<p>31. \u2014(1) The provisions of sections 26 to 30 sections 26 to 30 and 32 to 35 \u2020shall 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.<\/p>\n<p>(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<\/p>\n<p>* Intellectual Property (Miscellaneous Provisions) Act 2014<br \/>\n\u2020*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<br \/>\n\u2020 Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<p>making of an application to register particulars, shall be construed as references to the giving of notice to the Controller of those particulars.<\/p>\n<p>(3) The procedure subsequent to the giving of notice as mentioned in subsection (2) shall be such as may be prescribed by rules.<\/p>\n<p>Licensing<\/p>\n<h4>Licensing of registered trade mark.<\/h4>\n<p>32. \u2014(1) A licence to use a registered trade mark may be general or limited.<\/p>\n<p>(2) A limited licence may, in particular, apply\u2014<br \/>\n(a) in relation to some but not all of the goods or services for which the trade mark is registered; or<br \/>\n(b) in relation to use of the trade mark in a particular manner or a particular locality.<\/p>\n<p>(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.<\/p>\n<p>(4) Unless the licence provides otherwise, it shall be binding on a successor in title to the grantor&#8217;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.<\/p>\n<p>(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.<\/p>\n<h4>Exclusive licences.<\/h4>\n<p>33. \u2014(1) In this Act an \u201cexclusive licence\u201d means a licence (whether general or limited) authorising the licensee, to the<br \/>\nexclusion 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 \u201cexclusive licensee\u201d shall be construed accordingly.<\/p>\n<p>(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.<\/p>\n<h4>General provisions as to rights of licensees in case of infringement.<\/h4>\n<p>34. \u2014(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&#8217;s own name.<\/p>\n<p>(2) A licensee is entitled, unless the licence, or any licence through which the licensee&#8217;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&#8217;s interests.<br \/>\n(3) If the proprietor\u2014<br \/>\n(a) refuses to take proceedings when called upon under subsection (2), or<br \/>\n(b) fails to do so within two months after being so called upon,<br \/>\nthe licensee may bring the proceedings in his own name as if he were the proprietor.<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<p>(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.*<\/p>\n<p>(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.<\/p>\n<p>(6) In infringement proceedings brought by the proprietor of a registered trade mark the Court appropriate court\u2020 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.<\/p>\n<p>(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.<\/p>\n<h4>Exclusive licensee having rights and remedies of assignee.<\/h4>\n<p>35. \u2014(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.<\/p>\n<p>(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&#8217;s own name.<\/p>\n<p>(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.\u2021<\/p>\n<p>(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<\/p>\n<p>* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018<br \/>\n\u2020 Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<p>trade mark in the provisions of this Act relating to infringement shall be construed accordingly.<\/p>\n<p>(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.<\/p>\n<h4>Exercise of concurrent rights.<\/h4>\n<p>36. \u2014(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.<\/p>\n<p>(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.<\/p>\n<p>(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\u2014<br \/>\n(a) the Court appropriate court shall in assessing damages take into account\u2014<br \/>\n(i) the terms of the licence, and<br \/>\n(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;<br \/>\n(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<br \/>\n(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.<\/p>\n<p>(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.<\/p>\n<p>(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.<\/p>\n<p>(6) The provisions of this section shall have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.<\/p>\n<p>* Copyright and Other Intellectual Property Law Provisions Act 2019<\/p>\n<!--themify_builder_content-->\n<div id=\"themify_builder_content-13127\" data-postid=\"13127\" class=\"themify_builder_content themify_builder_content-13127 themify_builder tf_clear\">\n    <\/div>\n<!--\/themify_builder_content-->\n","protected":false},"excerpt":{"rendered":"<p>Owner&#8217;s Rights 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&#8217;s consent. Restricted acts, if done without that consent, constitute an infringement of the owner&#8217;s rights The owner of that registered [&hellip;]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_exactmetrics_skip_tracking":false,"_exactmetrics_sitenote_active":false,"_exactmetrics_sitenote_note":"","_exactmetrics_sitenote_category":0,"footnotes":""},"categories":[179],"tags":[],"_links":{"self":[{"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/posts\/13127"}],"collection":[{"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/comments?post=13127"}],"version-history":[{"count":5,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/posts\/13127\/revisions"}],"predecessor-version":[{"id":35564,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/posts\/13127\/revisions\/35564"}],"wp:attachment":[{"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/media?parent=13127"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/categories?post=13127"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/tags?post=13127"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}