{"id":13145,"date":"2022-08-20T15:37:30","date_gmt":"2022-08-20T15:37:30","guid":{"rendered":"http:\/\/legalblog.ie\/?p=13145"},"modified":"2024-04-21T21:50:30","modified_gmt":"2024-04-21T21:50:30","slug":"tm-infringement-defences","status":"publish","type":"post","link":"https:\/\/legalblog.ie\/tm-infringement-defences\/","title":{"rendered":"TM Action Defences"},"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\/tm-infringement-defences\/#Defences\" title=\"Defences\">Defences<\/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\/tm-infringement-defences\/#Own_Name\" title=\"Own Name\">Own Name<\/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\/tm-infringement-defences\/#Non-Distinct_or_Descriptive\" title=\"Non-Distinct or Descriptive\">Non-Distinct or Descriptive<\/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\/tm-infringement-defences\/#Earlier_Right_in_Locality\" title=\"Earlier Right in Locality\">Earlier Right in Locality<\/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\/tm-infringement-defences\/#On_the_EU_Market_Lawfully\" title=\"On the EU Market Lawfully\">On the EU Market Lawfully<\/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\/tm-infringement-defences\/#Legitimate_Honest_Use\" title=\"Legitimate Honest Use\">Legitimate Honest Use<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-7\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/#Five_Year_Use\" title=\"Five Year Use\">Five Year Use<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-8\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/#Later_EU_TM_Would_be_Valid\" title=\"Later EU TM Would be Valid\">Later EU TM Would be Valid<\/a><\/li><li class='ez-toc-page-1 ez-toc-heading-level-3'><a class=\"ez-toc-link ez-toc-heading-9\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/#Disclaiming_Aspects\" title=\"Disclaiming Aspects\">Disclaiming Aspects<\/a><\/li><\/ul><\/li><li class='ez-toc-page-1 ez-toc-heading-level-2'><a class=\"ez-toc-link ez-toc-heading-10\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-11\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-12\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-13\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-14\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-15\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-16\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-17\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-18\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-19\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-20\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-21\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-22\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-23\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-24\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-25\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-26\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-27\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-28\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-29\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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-30\" href=\"https:\/\/legalblog.ie\/tm-infringement-defences\/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=\"Defences\"><\/span>Defences<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>The use of a valid trade mark in relation to goods and services covered by them is a defence to infringement proceedings. Accordingly, a registered trade mark shall not be infringed by using another registered trade mark in relation to goods or services for which the latter is registered. This defence would not be available if the registration as a trademark is invalidated.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Own_Name\"><\/span>Own Name<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>A registered trade mark is not infringed by the use of the name or address of a third party, where that third party is a natural person; Use must be in accordance with honest practices in industrial and commercial matters. The defence is not available to a company using its own name. \u00a0The practice would, in any event, have to be honest so that the defence is unlikely to be available if there is prior knowledge of an inconsistent trademark.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Non-Distinct_or_Descriptive\"><\/span>Non-Distinct or Descriptive<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>A registered trade mark shall not be infringed by 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; The use must be in accordance with honest practice, in industrial and commercial matters. \u00a0What is permitted is the use of the indication, not the use of the trademark as such.<\/p>\n<p>A registered trade mark is not infringed by the use of the trade mark for the purpose of identifying or referring to goods or services as those of the owner 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 is in the course of trade in accordance with honest practices in industrial and commercial. A third party repairing or maintaining the goods may use the mark in this context, provided that it does not suggest a connection with the owner&#8217;s network.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Earlier_Right_in_Locality\"><\/span>Earlier Right in Locality<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality. \u00a0\u00a0The extent of the locality concerned is unclear.\u00a0 The prior use must have been continuous.<\/p>\n<p>An earlier right means an unregistered trade mark or other sign continuously used in relation to goods or services by, or by a predecessor in title of, a person from a date prior to whichever is the earlier of the use of the first-mentioned trade mark in relation to those goods or services by the owner or a predecessor in title; and the registration of the first-mentioned trade mark in respect of those goods or services in the name of the owner or a predecessor. The earlier right is 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<h3><span class=\"ez-toc-section\" id=\"On_the_EU_Market_Lawfully\"><\/span>On the EU Market Lawfully<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>An owner may rely on his trademark to take infringement action in breach of national legislation. \u00a0This may be the case even though the trademark is lawfully used in other EU countries. \u00a0However, if a license is given to a party in another EU State, he may not prohibit that third party from exporting into his State. The principle does not apply where the goods have been changed or where the markings have been interfered with.<\/p>\n<p>In common with other intellectual property rights, \u00a0where goods and services are lawfully put on the market in one country, they are generally entitled to be circulated throughout the European Union. \u00a0There are limited grounds upon which States can prohibit the operation of this principle, including the protection of intellectual property rights. However, this exception must not constitute a disguised restriction.<\/p>\n<p>A registered trade mark is not infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area (EU +3) under that trade mark by the owner of the trade mark or with its consent. This does not apply where there exist legitimate reasons for the owner 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<h3><span class=\"ez-toc-section\" id=\"Legitimate_Honest_Use\"><\/span>Legitimate Honest Use<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>Use for the purpose of identifying goods and services of the trademark holder, which does not take unfair advantage of and is not detrimental to the distinctive character or reputation of the trademark, is permissible. 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<p>This defence may be available in the context of highlighting the compatibility of products and their suitability as accessories and spare parts. \u00a0It also permits comparative advertising, provided that it is honest.<\/p>\n<p>A trader continues to have a legitimate interest in relation to these matters. \u00a0The importer may be entitled to make minimal changes to the get-up of the goods, which are necessary to enable marketing in the importing state.<\/p>\n<p>The legislation at the EU and Irish level considers the legitimate interest of the mark holder as against the needs of persons in the retail and distribution chain in marketing the goods in the course of trade.\u00a0 The parallel importing principle applies only to the extent necessary to prevent a disguised partitioning of the market and restriction on trade.<\/p>\n<p>Registration of a trademark does not limit another parties rights in respect of passing off.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Five_Year_Use\"><\/span>Five Year Use<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>Where the owner of a prior trademark or right has acquiesced in the use of a later trademark for five years, there is a defence available to the later user of the mark. The invalidity of later registration cannot be challenged, nor is it possible to oppose the continued use of the goods and services concerned. Each trademark holder must effectively tolerate the other.<\/p>\n<p>If within a period of 5 years following the date of the completion of the registration procedure, the owner 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 may be subject to limitation and revocation unless there are proper reasons for nonuse.<\/p>\n<p>With regard to trade marks registered under international arrangements and having effect in the State, the 5 year period shall be calculated from the date when the mark can no longer be rejected or opposed, or 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>The owner of a trade mark shall be entitled to prohibit the use of a sign only to the extent that the owner\u2019s rights are not liable to be revoked pursuant to an action for infringement. If the defendant so requests, the owner of the trade mark shall furnish proof that, during the 5 year period preceding the date of bringing the action for infringement<\/p>\n<ul>\n<li>the trade mark has been put to genuine use in connection with the goods or services in respect of which it is registered and which are cited as justification for the action, or<\/li>\n<li>\u00a0that there are proper reasons for non-use, provided that the registration procedure of the trade mark has, at the date of bringing the action, been completed for not less than 5 years.<\/li>\n<\/ul>\n<h3><span class=\"ez-toc-section\" id=\"Later_EU_TM_Would_be_Valid\"><\/span>Later EU TM Would be Valid<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>In an action for infringement, the owner 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 the European Union trade mark regulation. \u00a0Where the owner of a trade mark is not entitled to prohibit the use of a later registered trade mark the owner of that later registered trade mark shall not be entitled to prohibit the use of the earlier trade mark in an action for infringement.<\/p>\n<p>The use shall include the use of the trade mark in a form differing in elements which do not alter the distinctive 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 owner, or affixing of the trade mark to goods or to the packaging thereof in the State solely for export purposes. Use of the trade mark with the consent of the owner shall be deemed to constitute use by the owner.<\/p>\n<h3><span class=\"ez-toc-section\" id=\"Disclaiming_Aspects\"><\/span>Disclaiming Aspects<span class=\"ez-toc-section-end\"><\/span><\/h3>\n<p>The applicant may disclaim or limit where certain aspects or elements may not be fully distinctive. A limitation may be agreed upon whereby the trademark might have agreed to be used only in the State or part of the State in order to assist in distinctiveness. Where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred shall be restricted accordingly.<\/p>\n<p>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 within such period as the Controller may specify.<\/p>\n<p>Particulars of any disclaimer or limitation shall be entered in the register.<\/p>\n<p><!--nextpage--><\/p>\n<p>&nbsp;<\/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>&nbsp;<\/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-13145\" data-postid=\"13145\" class=\"themify_builder_content themify_builder_content-13145 themify_builder tf_clear\">\n    <\/div>\n<!--\/themify_builder_content-->\n","protected":false},"excerpt":{"rendered":"<p>Defences The use of a valid trade mark in relation to goods and services covered by them is a defence to infringement proceedings. Accordingly, a registered trade mark shall not be infringed by using another registered trade mark in relation to goods or services for which the latter is registered. This defence would not be [&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\/13145"}],"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=13145"}],"version-history":[{"count":7,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/posts\/13145\/revisions"}],"predecessor-version":[{"id":35562,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/posts\/13145\/revisions\/35562"}],"wp:attachment":[{"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/media?parent=13145"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/categories?post=13145"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/legalblog.ie\/wp-json\/wp\/v2\/tags?post=13145"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}