STATUTORY INSTRUMENTS.
S.I. No. 561 of 2018
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EUROPEAN UNION (TRADE MARKS) REGULATIONS 20182[561]
S.I. No. 561 of 2018
EUROPEAN UNION (TRADE MARKS) REGULATIONS 2018
I, HEATHER HUMPHREYS, Minister for Business, Enterprise and Inno-
vation, in exercise of the powers conferred on me by section 3 of the EuropeanCommunities Act 1972 (No. 27 of 1972) and for the purpose of giving effect toDirective (EU) 2015/2436 of the European Parliament and of the Council of 16December 2015
1to approximate the laws of the Member States relating to trade
marks (Recast) and Regulation (EC) 2017/1001 of the European Parliament andof the Council of 14 June 2017
2on the European Union Trade Mark, hereby
make the following regulations:
1. (1) These Regulations may be cited as the European Union (Trade Marks)
Regulations 2018.
(2) These Regulations shall come into operation on 14 January 2019.2. In these Regulations, “Act of 1996” means the Trade Marks Act 1996 (No.
6 of 1996).
3. Section 2 of the Act of 1996 is amended—
(a) in subsection (1)—
(i) by the insertion of the following definitions:
“ ‘Directive’ has the meaning assigned by section 56;‘European Union trade mark’ has the meaning assigned by
section 56;
‘European Union Trade Mark Regulation’ has the meaning
assigned by section 56;”, and
(ii) by the deletion of the definitions of “Community trade mark” and
“Community Trade Mark Regulation”, and
(b) in subsection (3), by the substitution of “European Union” for
“Community”.
4. Section 6 of the Act of 1996 is amended—
(a) in subsection (1), by the deletion of “capable of being represented
graphically”, and
1OJ No. L 336, 23.12.2015, p.1
2OJ No. L 154, 16.06.2017, p.1
Notice of the making of this Statutory Instrument was published in
“Iris Oifigiúil” of 28th December , 2018.[561] 3
(b) by the substitution of the following subsection for subsection (2):
“(2) Without prejudice to subsection (1), a trade mark may, in part-
icular, consist of words (including personal names) or designs, letters,numerals, colours, the shape of goods or of the packaging of goods, orsounds, provided that such signs are capable of being represented onthe register in a manner which enables the Controller and the publicto determine the clear and precise subject matter of the protectionafforded to its proprietor.”.
5. Section 8 of the Act of 1996 is amended—
(a) in subsection (2)—
(i) in paragraph ( a), by the substitution of “shape or another charac-
teristic” for “shape”,
(ii) in paragraph ( b), by the substitution of “shape or another charac-
teristic” for “shape”, and
(iii) in paragraph ( c), by the substitution of “shape or another charac-
teristic” for “shape”, and
(b) by the substitution of the following subsection for subsection (4):
“(4) A trade mark shall not be registered if or to the extent that—
(a) its use is prohibited in the State by any enactment or rule of
law or by any provision of European Union law includingthose for the protection of designations of origin and geo-graphical indications or where the State or the EuropeanUnion is party to an international agreement protecting des-ignations of origin and geographical indications; or
(b) its use is prohibited in the State by any European Union
legislation or international agreements to which the Euro-pean Union is party, providing for protection of traditionalterms for wine; or
(c) its use is prohibited in the State by any European Union
legislation or international agreements to which the Euro-pean Union is party, providing for protection of traditionalspecialties guaranteed; or
(d) it consists of, or reproduces in its essential elements, an earl-
ier plant variety denomination registered in accordance withthe law of the State or European Union legislation, or inter-national agreements to which the European Union or theState is party, providing protection for plant variety rights,and which are in respect of plant varieties of the same orclosely related species; or4[561]
(e) the application for registration is made in bad faith by the
applicant.”.
6. Section 10 of the Act of 1996 is amended—
(a) in subsection (3), by the substitution of “(or, in the case of an EU
trade mark, in the European Union)” for “(or, in the case of a Com-munity trade mark, in the Community)”,
(b) by the insertion of the following subsection after subsection (3):
“(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 markis protected.”,
(c) in subsection (4)—
(i) in paragraph ( a), by the substitution of “course of trade, subject
to the condition that the rights to the unregistered trade markor other sign were acquired prior to the date of application forregistration of the trade mark or date of the priority claimed forthat application and that unregistered trade mark or other signconfers on its proprietor the right to prohibit the use of a sub-sequent trade mark; or” for “course of trade; or”,
(ii) in paragraph ( b), by the substitution of “property right; or” for
“property right”, and
(iii) by the insertion of the following paragraph after paragraph ( b):
“(c) and to the extent pursuant to European Union legis-
lation or the law of the State providing for protectionsof designations of origin and geographicalindications—
(i) by virtue of an earlier application for a desig-
nation of origin or a geographical indication priorto the date of application for registration of thetrade mark or the date of the priority claimed forthe application, subject to its subsequent regis-tration, and
(ii) that designation of origin or geographical indica-
tion confers on the person authorised under therelevant law to exercise the rights arising there-from the right to prohibit the use of a subsequenttrade mark.”, and[561] 5
(d) by the insertion of the following subsection after subsection (5):
“(5A) Where an agent or representative of the proprietor of a trade
mark applies in his or her own name, without the proprietor’s consent,for the registration of the trade mark, the application is to be refusedunless the agent or representative justifies that action.”.
7. The Act of 1996 is amended by the insertion of the following section after
section 10:
“Grounds for refusal or invalidity relating to only some of the goods
or services
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 trademark has been applied, refusal of registration shall cover those goodsor services only.”.
8. Section 11(1) of the Act of 1996 is amended by the substitution of the
following paragraph for paragraph ( a):
“(a) a registered trade mark, an international trade mark, a
European Union trade mark or a designation of origin or ageographical indication which has a date of application forregistration earlier than that of the trade mark in question,taking account (where appropriate) of the priorities claimedin respect of the trade marks;”.
9. Section 13 of the Act of 1996 is amended—
(a) in subsection (1), by the substitution of “Without prejudice to the
rights of proprietors acquired before the filing date or the prioritydate of the registered trade mark, the proprietor of that registeredtrade mark” for “The proprietor of a registered trade mark”, and
(b) by the insertion of the following subsection after subsection (2):
“(2A) ( a) Without prejudice to the rights of proprietors acquired
before the filing date or the priority date of the registeredtrade mark, the proprietor of that registered trade markshall be entitled to prevent all third parties from bringinggoods, in the course of trade, into the State, without beingreleased for free circulation there, where such goods, includ-ing the packaging thereof, come from third countries andbear without authorisation a trade mark which is identicalwith the trade mark registered in the State, in respect ofsuch goods, or which cannot be distinguished in its essentialaspects from that trade mark.
(b) The entitlement of the trade mark proprietor pursuant to
paragraph ( a) shall lapse if during the proceedings to deter-
mine whether the registered trade mark has been infringed,6[561]
initiated in accordance with the European Union (Customs
enforcement of Intellectual Property Rights) Regulations2013 (S.I. No. 562 of 2013), evidence is provided by thedeclarant or the holder of the goods that the proprietor ofthe registered trade mark is not entitled to prohibit the plac-ing of the goods on the market in the country of final des-tination.”.
10. The Act of 1996 is amended by the insertion of the following section after
section 13:
“Reproduction of trademarks in dictionaries
13A. If the reproduction of a trade mark in a dictionary, encyclopae-
dia or similar reference work, in print or electronic form, gives theimpression that it constitutes the generic name of the goods or servicesfor which the trade mark is registered, the publisher of the work shall,at the request of the proprietor of the trade mark, ensure that thereproduction of the trade mark is, without delay, and in the case ofworks in printed form at the latest in the next edition of the publi-cation, accompanied by an indication that it is a registered trademark.”.
11. Section 14 of the Act of 1996 is amended—
(a) in subsection (3), by the substitution of “a sign which is identical with,
or similar to, the trade mark irrespective of whether it is used inrelation to goods or services which are identical with, similar to, ornot similar to, those for which the trade mark is registered where” for“a sign which is identical with or similar to the trade mark where”,
(b) in subsection (4)—
(i) in paragraph ( c), by the substitution of “sign;” for “sign; or”, and
(ii) by the insertion of the following paragraphs after paragraph ( d):
“(e) using the sign as a trade or company name or part of a trade
or company name; or
(f) using the sign in comparative advertising in a manner that
is contrary to the European Communities (Misleading andComparative Marketing Communications) Regulations 2007(S.I. No. 774 of 2007).”, and
(c) by the insertion of the following subsection after subsection (4):
“(4A) Where the risk exists that the packaging, labels, tags, security
or authenticity features or devices, or any other means to which thetrade mark is affixed, could be used in relation to goods or servicesand that use would constitute an infringement of the rights of the pro-prietor of a trade mark under section 13(1) and 14(4), the proprietor[561] 7
of that trade mark shall have the right to prohibit the following acts if
carried out in the course of trade:
(a) affixing a sign identical with, or similar to, the trade mark on
packaging, labels, tags, security or authenticity features ordevices, or any other means to which the mark may beaffixed;
(b) offering or placing on the market, or stocking for those pur-
poses, or importing or exporting, packaging, labels, tags,security or authenticity features or devices, or any othermeans to which the mark is affixed.”.
12. Section 15 of the Act of 1996 is amended, in subsection (2)—
(a) by the substitution of the following paragraph for paragraph ( a):
“(a) the use of the name or address of a third party, where that
third party is a natural person;”,
(b) by the substitution of the following paragraph for paragraph ( b):
“(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 goodsor of rendering of the service or other characteristics ofgoods or services;”,
(c) in paragraph ( c), by the substitution of “for the purpose of identifying
or referring to goods or services as those of the proprietor of thattrade mark, in particular where that use” for “where it”, and
(d) by the substitution of “Provided that such use is in the course of trade”
for “Provided that such use”.
13. The Act of 1996 is amended by the insertion of the following section after
section 16:
“Use of trade marks
16A. (1) If, within a period of 5 years following the date of the
completion of the registration procedure, the proprietor has not putthe trade mark to genuine use in the State in connection with the goodsor services in respect of which it is registered, or if such use has beensuspended during a continuous 5 year period, the trade mark shall besubject to the provisions of sections 18A, 43A, 51(1)( a) or 52A(3) and
(4), unless there are proper reasons for non-use.
(2) With regard to trade marks registered under international
arrangements and having effect in the State, the 5 year period referredto in subsection (1) shall be calculated—8[561]
(a) from the date when the mark can no longer be rejected or
opposed, or
(b) where an opposition has been lodged or when an objection
on absolute or relative grounds has been notified, from thedate when a decision terminating the opposition proceedingsor a ruling on absolute or relative grounds for refusalbecame final or the opposition was withdrawn.
(3) The date of commencement of the 5 year period in subsection
(1) shall be entered in the register.
(4) Use within the meaning of subsection (1) shall include—
(a) use of the trade mark in a form differing in elements which
do not alter the distinctive character of the mark in the formin which it was registered, regardless of whether or not thetrade mark as used is also registered in the name of theproprietor, or
(b) affixing of the trade mark to goods or to the packaging
thereof in the State solely for export purposes.
(5) Use of the trade mark with the consent of the proprietor shall
be deemed to constitute use by the proprietor.”.
14. The Act of 1996 is amended by the insertion of the following sections
after section 18:
“Non-use as defence in action for infringement
18A. (1) The proprietor of a trade mark shall be entitled to prohibit
the use of a sign only to the extent that the proprietor’s rights are notliable to be revoked pursuant to section 51 at the time the action forinfringement is brought.
(2) If the defendant so requests, the proprietor of the trade mark
shall furnish proof that, during the 5 year period preceding the date ofbringing the action for infringement—
(a) the trade mark has been put to genuine use as provided in
section 16A, in connection with the goods or services inrespect of which it is registered and which are cited as justifi-cation for the action, or
(b) that there are proper reasons for non-use,
provided that the registration procedure of the trade mark has, at the
date of bringing the action, been completed for not less than 5 years.[561] 9
Intervening right of the proprietor of a later registered trade mark as
defence in action for infringement
18B. (1) In an action for infringement, the proprietor of a trade
mark shall not be entitled to prohibit the use of a later registeredtrade mark where that later trade mark would not be declared invalidpursuant to sections 10(4)( a), 10(4)( b), 52(2A), 53(1), or 52A (3).
(2) In an action for infringement, the proprietor of a trade mark
shall not be entitled to prohibit the use of a later registered EuropeanUnion trade mark where that later trade mark would not be declaredinvalid pursuant to Articles 60(1), (3) or (4), 61(1) or (2) or 64(2) ofthe European Union trade mark regulation.
(3) Where the proprietor of a trade mark is not entitled to prohibit
the use of a later registered trade mark pursuant to subsection (1) or(2), the proprietor of that later registered trade mark shall not beentitled to prohibit the use of the earlier trade mark in an action forinfringement, even though that earlier right may no longer be invokedagainst the later trade mark.”.
15. Section 28 of the Act of 1996 is amended—
(a) by the substitution of the following subsections for subsection (1):
“(1) A registered trade mark may be transferred by assignment, tes-
tamentary disposition or operation of law in the same way as otherpersonal property, and shall be so transferrable either in connectionwith the goodwill of a business or independently.
(1A) A transfer of a whole business shall include the transfer of
the trade mark, except where there is agreement to the contrary, orcircumstances clearly dictate otherwise.
(1B) Subsection (1A) shall apply to the contractual obligation to
transfer the undertaking.”,
(b) in subsection (2), by the substitution of “other transfer” for “other
transmission”, and
(c) in subsection (6), by the substitution of “other transfer” for “other
transmission”.
16. Section 31 of the Act of 1996 is amended, in subsection (1), by the substi-
tution of “sections 26 to 30 and 32 to 35” for “sections 26 to 30”.
17. Section 34 of the Act of 1996 is amended—
(a) by the substitution of the following subsection for subsection (3):10 [561]
“(3) Without prejudice to the provisions of the license or the licens-
ing contract, the licensee may bring proceedings for infringement of atrade mark only if its proprietor consents thereto.”,
(b) by the substitution of the following subsection for subsection (4):
“(4) Where infringement proceedings have been brought by a
licensee under subsection (3), the licensee may not, without the leaveof the Court, proceed with the action unless the proprietor is eitherjoined as a plaintiff or added as a defendant.”, and
(c) by the insertion of the following subsection after subsection (4):
“(4A) A licensee shall, for the purpose of obtaining compensation
for damage suffered by him, be entitled to intervene in infringementproceedings brought by the proprietor of the trade mark.”.
18. Section 35 of the Act of 1996 is amended by the insertion of the following
subsection after subsection (2):
“(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 appro-priate period.”.
19. The Act of 1996 is amended by the substitution of the following section
for section 39:
“Designation and Classification of goods and services
39. (1) Goods and services shall be classified for the purposes of the
registration of trade marks in conformity with the Nice AgreementConcerning the International Classification of Goods and Services forthe Purposes of the Registration of Marks of 15 June 1957 (hereinreferred to as the ‘Nice Classification’).
(2) The goods and services for which protection is sought shall be
identified by the applicant with sufficient clarity and precision toenable the Controller and the public, on that sole basis, to determinethe extent of the protection sought.
(3) For the purposes of subsection (2), the general indications
included in the class headings of the Nice Classification or othergeneral terms may be used, provided that they comply with the requi-site standards of clarity and precision referred to in this section.
(4) The Controller shall reject an application in respect of indica-
tions or terms which are unclear or imprecise, where the applicant doesnot suggest an acceptable wording within a period set by the Controllerto that effect.
(5) The use of general terms, including the general indications of
the class headings of the Nice Classification—[561] 11
(a) shall be interpreted as including all the goods or services
clearly covered by the literal meaning of the indication orterm, and
(b) shall not be interpreted as comprising a claim to goods or
services which cannot be so understood.
(6) Where the applicant requests registration for more than one
class, the applicant shall—
(a) group the goods and services according to the classes of the
Nice Classification,
(b) precede each group by the number of the class to which that
group of goods or services belongs, and
(c) present them in the order of the classes.
(7) Goods and services shall not be regarded as—
(a) being similar to each other on the ground that they appear
in the same class under the Nice Classification, or
(b) being dissimilar from each other on the ground that they
appear in different classes under the Nice Classification.
(8) Any question arising as to the class within which any goods or
services fall shall be determined by the Controller, whose decision shallbe final.”.
20. Section 43 of the Act of 1996 is amended—
(a) in subsection (2), by the substitution of “opposition to the registration
on the grounds provided for in section 10 and” for “opposition to theregistration; and ”,
(b) by the insertion of the following subsections after subsection (2):
“(2A) ( a) A notice of opposition under subsection (2) may be filed
on the basis of one or more earlier trade marks or otherearlier rights, provided that they all belong to the sameproprietor.
(b) A notice of opposition filed on the basis of one or more
earlier trade marks or earlier rights, may be based on part,or the totality, of the goods or services in respect of whichthe earlier rights are protected or applied for, and may bedirected against part or the totality of the goods or servicesin respect of which the contested mark is applied for.
(2B) At any stage following the commencement of opposition pro-
ceedings, the parties shall be granted, at their joint request, a stay in12 [561]
the proceedings for a minimum period of 2 months from the date of
the request, in order to allow for the possibility of a friendly settlementbetween the opposing party and the applicant.”,
(c) by the substitution of the following for subsection (3):
“(3) Where an application has been published in the Journal, any
natural or legal person and any group or body representing manufac-turers, producers, suppliers of services, traders or consumers may, atany time before the registration of the trade mark, make observationsin writing to the Controller explaining on which grounds the trademark should not be registered; and the Controller shall inform theapplicant of any such observations.”, and
(d) by the substitution of the following for subsection (4):
“(4) Persons and groups or bodies who make observations under
subsection (3) shall not be a party to the proceedings on theapplication.”.
21. The Act of 1996 is amended by the insertion of the following section after
section 43:
“Non-use as defence in opposition proceedings
43A. (1) In opposition proceedings pursuant to section 43(2), where
at the filing date or date of priority of the later trade mark, the 5year period within which the earlier trade mark must have been put togenuine use as provided for in section 16A had expired, at the requestof the applicant, the proprietor of the earlier trade mark who has givennotice of opposition shall furnish proof—
(a) that the earlier trade mark has been put to genuine use dur-
ing the 5 year period preceding the filing date or date ofpriority of the later trade mark, or
(b) that proper reasons for non-use existed.
(2) In the absence of proof referred to in subsection (1), the oppo-
sition shall be rejected.
(3) If the earlier trade mark has been used in relation to only part
of the goods or services for which it is registered, it shall, for the pur-pose of the examination of the opposition as provided for in subsection(1), be deemed to be registered in respect of that part of the goods or
services only.
(4) Subsections (1), (2) and (3) shall also apply where the earlier
trade mark is an European Union trade mark and the genuine use ofthe European Union trade mark shall be determined in accordancewith Article 18 of the European Union trade mark regulation.”.[561] 13
22. Section 46(1) of the Act of 1996 is amended by the substitution of the
following paragraph for paragraph ( a):
“(a) the division of an application for the registration of a trade mark and
for the division of a registration of a trade mark into several appli-cations or registrations, each having the same filing date as the orig-inal application;”.
23. Section 48 of the Act of 1996 is amended by the insertion of the following
subsection after subsection (1):
“(1A) Where the request is submitted or the fees paid in respect of only some
of the goods or services for which the trade mark is registered, registration shallbe renewed for those goods or services only.”.
24. Section 51 of the Act of 1996 is amended, in subsection (2), by the substi-
tution of “in the form in which it was registered, regardless of whether or notthe trade mark in the form as used is also registered in the name of the pro-prietor” for “in the form in which it was registered,”.
25. Section 52 of the Act of 1996 is amended—
(a) in subsection (1), by the substitution of “it has before the date of
application for a declaration of invalidity, acquired a distinctivecharacter” for “it has after registration acquired a distinctivecharacter”,
(b) in subsection (2)—
(i) in paragraph ( a), by the substitution of “subsections (1) to (3A)
of section 10 obtains,” for “subsections (1) to (3) of section 10obtains, or”,
(ii) in paragraph ( b), by the substitution of “paragraph ( a), (b)o r
(c) of subsection (4) ” for “paragraph ( a)o r( b) of subsection
(4)”, and
(iii) by the insertion of the following paragraphs after paragraph ( b):
“(c) that the trade mark was registered in breach of section
8(4)( a) and section 9, or
(d) that the trade mark was registered in breach of section
10(5A),”, and
(c) by the insertion of the following subsections after subsection (2):
“(2A) An application for a declaration of invalidity on the basis of
an earlier trade mark shall not succeed at the date of application forinvalidation if it would not have been successful at the filing date or thepriority date of the later trade mark for any of the following reasons:14 [561]
(a) the earlier trade mark, liable to be declared invalid pursuant
to section 8(1)( b), (c)o r( d), had not yet acquired a distinc-
tive character as referred to in section 8(1);
(b) the application for a declaration of invalidity is based on
section 10(2) and the earlier trade mark had not becomesufficiently distinctive to support a finding of likelihood ofconfusion within the meaning of section 10(2);
(c) the application for a declaration of invalidity is based on
section 10(3) and (3A) and the earlier trade mark had notyet acquired a reputation within the meaning of section10(3) and (3A).
(2B) An application for a declaration of invalidity may be filed on
the basis of one or more earlier rights, provided they all belong to thesame proprietor.”.
26. The Act of 1996 is amended by the insertion of the following section after
section 52:
“Non-use as defence in proceedings seeking a declaration of invalidity
52A. (1) In proceedings for a declaration of invalidity based on a
registered trade mark with an earlier filing date or priority date, if theproprietor of the later trade mark so requests, the proprietor of theearlier trade mark shall furnish proof that-
(a) during the 5 year period preceding the date of the application
for a declaration of invalidity, the earlier trade mark hasbeen put to genuine use, as provided for in section 16A, inconnection with the goods or services in respect of whichit is registered and which are cited as justification for theapplication, or
(b) there are proper reasons for non-use,
provided that the registration process of the earlier trade mark has at
the date of the application for a declaration of invalidity been com-pleted for not less than 5 years.
(2) Where, at the filing date or date of priority of the later trade
mark, the 5 year period within which the earlier trade mark was tohave been put to genuine use, as provided for in section 16A, hadexpired, the proprietor of the earlier trade mark shall, in addition tothe proof required under subsection (1), furnish proof that the earliertrade mark was put to genuine use during the 5 year period precedingthe filing date or date of priority of the later trade mark, or that properreasons for non-use existed.[561] 15
(3) In the absence of the proof referred to in subsections (1) and
(2), an application for a declaration of invalidity on the basis of anearlier trade mark shall be rejected.
(4) If the earlier trade mark has been used in accordance with
section 16A in relation to only part of the goods or services for whichit is registered, it shall, for the purpose of the examination of the appli-cation for a declaration of invalidity, be deemed to be registered inrespect of that part of the goods or services only.
(5) Subsections (1) to (4) of this section shall also apply where the
earlier trade mark is an European Union trade mark and genuine useof the European Union trade mark shall be determined in accordancewith Article 18 of the European Union trade mark regulation.”.
27. Section 54 of the Act of 1996 is amended by the insertion of the following
subsection after subsection (1):
“(1A) Associations of manufacturers, producers, suppliers of services or
traders, which, under the terms of the law governing them, have the capacityin their own name to have rights and obligations, to make contracts oraccomplish other legal acts, and to sue and be sued, as well as legal personsgoverned by public law, may apply for collective marks.”.
28. The Act of 1996 is amended by the substitution of the following section
for section 56:
“Meaning of ‘European Union trade mark’, ‘European Union Trade
Mark Regulation’ and ‘Directive’
56. (1) In this Act—
(a) ‘European Union trade mark’ has the meaning given by
Article 1 (1) of the European Union trade mark regulation;
(b) ‘European Union trade mark regulation’ means regulation
(EU) 2017/1001 of the European Parliament and of theCouncil of 14 June 2017
3on the European Union trade
mark (codification);
(c) ‘Directive’ means Directive (EU) 2015/2436 of the European
Parliament and of the Council of 16 December 20154to
approximate the laws of the Member States relating to trademarks (Recast).
(2) A word or expression that is used in this Act and that is also
used in the EU trade mark regulation or the Directive shall have thesame meaning in this Act as it has in the EU trade mark regulation orthe Directive”.
29. Section 57 of the Act of 1996 is repealed.
3OJ No. L 154, 16.06.2017, p.1
4OJ No. L 336, 23.12.2015, p.116 [561]
30. Section 85 of the Act of 1996 is amended, in subsection (9), by the substi-
tution of “European Union or EEA Trade Mark Attorney” for “CommunityTrade Mark Attorney”.
31. The First Schedule to the Act of 1996 is amended—
(a) in paragraph 5—
(i) in subparagraph (2), by the deletion of “where they exist”, and
(ii) by the insertion of the following subparagraph after subpara-
graph (2):
“(2A) The regulations governing the use of the mark shall
authorise any person whose goods or services originate in thegeographical area concerned to become a member of the associ-ation which is the proprietor of the mark, provided that theperson fulfils all the other conditions of the regulations.”,
(b) in paragraph 10, by the substitution of “the Controller and the men-
tion of the amendment of the regulations is entered in the register.”for “the Controller.”,
(c) in paragraph 11—
(i) by the substitution of the following subparagraph for subpara-
graph (3):
“(3) Without prejudice to the provisions of any agreement,
the authorised user may bring proceedings for infringement ofa trade mark only if its proprietor consents thereto.”, and
(ii) by the insertion of the following subparagraph after subpara-
graph (6):
“(7) An authorised user shall for the purpose of obtaining
compensation for damage suffered by him or her, be entitled tointervene in infringement proceedings brought by the proprietorof a registered collective mark.”,
(d) in paragraph 12—
(i) by the substitution of “shall” for “may”,
(ii) in subparagraph ( a), by the substitution of “persons authorised to
use it” for “proprietor”,
(iii) by the substitution of the following subparagraph for subpara-
graph ( b):
“(b) the proprietor has not taken reasonable steps to prevent
the mark being used in a manner that is incompatible with the[561] 17
conditions of use laid down in the regulations governing the use
of the mark, including any amendments thereto mentioned inthe register; or”, and
(iv) by the substitution of the following subparagraph for subpara-
graph ( c)(i):
“(c) (i) no longer comply with paragraph 5(2) and any
further conditions imposed by rules unless the pro-prietor of the mark, by further amending the regu-lations governing use, complies with the requirementsof the First Schedule; or ”, and
(e) by the substitution of the following paragraph for paragraph 13:
“13. In addition to the grounds of invalidity provided for in section
52, where appropriate with the exception of section 8(1)( c), concerning
signs or indications which may serve, in trade, to designate the geo-graphical origin of the goods or services, the registration of a collectivemark shall be declared invalid on the ground that the mark was regis-tered contrary to the provisions of paragraph 4(1) or 6(1), unless theproprietor of the mark, by further amending the regulations governinguse, complies with the requirements of the First Schedule.”.
32. The Second Schedule to the Act of 1996 is amended—
(a) by the substitution of the following paragraph for paragraph 4:
“4. Any natural or legal person, including institutions, authorities
and bodies governed by public law, may apply for certification marksprovided that such person does not carry on a business involving thesupply of goods or services of the kind certified.”, and
(b) by the insertion of the following paragraph after paragraph 6:
“6A. The requirement of use referred to in section 16A shall be
satisfied where genuine use of a certification mark is made by anyperson who has the authority to use it.”.
33. The Third Schedule to the Act of 1996 is amended by the insertion of the
following paragraph after paragraph 17:
“18. The amendments to this Act effected by the European Union
(Trade Marks) Regulations 2018 shall not apply to any application forregistration of a trade mark made under this Act before the cominginto operation of those Regulations.”.18 [561]
GIVEN under my Official Seal,
18 December 2018.
HEATHER HUMPHREYS,
Minister for Business, Enterprise and Innovation.[561] 19
EXPLANATORY NOTE
(This note is not part of these Regulations and does not purport to be a legal
interpretation.)
These Regulations, made pursuant to the European Communities Act, 1972,
amend and extend certain provisions of the Trade Marks Act 1996 to give statu-tory effect in the State to Directive (EU) 2015/2436 of the European Parliamentand of the Council of 16 December 2015 amending Directive 2008/95/EC relat-ing to trade marks and to certain provisions of Council Regulation (EU)2017/1001 of 14 June 2017, on the European Union Trade Mark.
As there is currently a prescribed legislative framework in place for trade
marks, namely, the Trade Marks Act 1996, the transposition of the Directiveinto Irish law will necessitate the introduction of new, modernizing provisionsand the revision of certain existing Irish provisions.
In terms of new provisions, the transposition provides for the opportunity to
register non-traditional forms of trade marks in the future; introduces a new actof infringement relating to the affixing of a trade mark to packaging, labels, tagsetc. or the offering, placing on the market etc. of such items; introduces newprovisions relating to the use of trade marks; introduces intervening rights oftrade mark proprietors in infringement proceedings; provides a proprietor withcertain rights against a publisher where the reproduction of trade marks in dic-tionaries gives the impression that it is a generic name for the goods or services;introduces new procedures whereby, subject to the provisions of the license, alicensee may bring proceedings for infringement of the trade mark only with theconsent of the proprietor; introduces provisions regarding the division of trademark registrations and introduces new non-use defence mechanisms in oppo-sition, invalidity and infringement proceedings.
With regard to the revision of certain existing Irish provisions, the trans-
position amends those relating to the grounds for refusal or invalidity of a trademark; amends the rights conferred by a trade mark, particularly in relation to(a) strengthening trade mark protection and combatting counterfeiting more
effectively, by conferring a right on a proprietor to prevent third parties frombringing infringing goods into Ireland, without being released for free circu-lation, ( b) the use of a trade mark as a trade or company name, ( c) the use of
a trade mark in comparative advertising; amends the conditions of registrationof a collective trade mark; amends the grounds for revocation of a collectivemark; clarifies the classification of goods and services; amends provisions regard-ing renewal and expiry of the registration of trade marks; defines whom mayfile observations in relation to the registration of a trade mark; amends certainopposition procedures, and removes the possibility of opposing the registrationof a trade mark on absolute grounds.BAILE ÁTHA CLIATH
ARNA FHOILSIÚ AG OIFIG AN tSOLÁTHAIR
Le ceannach díreach ó
FOILSEACHÁIN RIALTAIS,
52 FAICHE STIABHNA, BAILE ÁTHA CLIATH 2
(Teil: 01 - 6476834 nó 1890 213434; Fax: 01 - 6476843)
nó trí aon díoltóir leabhar.
——————
DUBLIN
PUBLISHED BY THE STATIONERY OFFICE
To be purchased from
GOVERNMENT PUBLICATIONS,
52 ST. STEPHEN'S GREEN, DUBLIN 2.
(Tel: 01 - 6476834 or 1890 213434; Fax: 01 - 6476843)
or through any bookseller.
——————
€4.06
Wt. (B33864). 285. 12/18. Essentra. Gr 30-15.