Unof ficial consolidated version  
 
 
  
 
 
 
TRADE MARKS  
      ACT  1996  
     (as amended)  
 
 
 
 
 
 
 
 
 
 
 
 
Note to users:  
This is an unofficial consolidation of the Trade Marks Act 1996 and amendments up to 
and including the 2 December 2019  and is produced here as a reference document 
only. This document has no  legal force. The Trade Marks Act, 1996 has been updated 
on a number of occasions since it was enacted on the 16th March  1996, but the 
amending laws have not been officially consolidated into a single text. Whilst every effort 
has be en made to ensure the accuracy of the information/material contained on this 
document, the State , the Department of Business, Enterprise  and Innovation, its 
servants or agents assume no responsibility for and give no guarantees, undertakings or 
warranties c oncerning the accuracy, completeness or up to date nature of the 
information provided and do not accept any liability whatsoever arising nor for any errors 
or omissions in this document.  
 
 
 
 
 
 
 Ame nded by:  
 
Copyright and Related Rights 
Act, 2000  ( 28/20 00)                                                                              
 
  
Patents (Amendm ents) Act 
2006  (31/2006)  
 
 
S.I. No. 622 of 2007 
European Comm unities 
(Provision of services  
concerning Trade Marks and 
Industrial Designs) 
Regulations 2007  
         
        Intellectual Property  
         (Miscellaneous Provisions)  
         Act 2014  
 
        S.I. No. 47 of 2016  
        European Communities                
        (Trade Mark Agen ts) 
 Regulations 2016  
 
 
S.I. No. 561 of 2018 European 
Union (Trad e Marks) 
Regulatio ns 2018  
 
       Copy right and O ther     
Intellectual Property Law 
Provisions Act 2019  
 
 Repealed or Deleted  
 
 
  Copyright and Other 
Intellectual Property Law 
Provisions Act 2019  Unof ficial consolidated version  
 
 
 
 
 
Number  6 of 1996  
  
TRADE MARKS ACT, 1996  
As amended – changes tracked  
 
 ARRANGEMENT OF SECTIONS  
 
PART I  
 
Preliminary and General  
 
Section  
  
1. Short title and commencement.  
2. Interpretation. (Amended by         ) 
3.      Orders, regulations and rules.  
4. Expenses.  
5. Repeal.  
 
PART II  
 
Registered Trade Mar ks 
 
 6 Trade marks.  (Amended by  ) 
7. Registered trade marks.  
8. Absolute grounds for refusal of registration.  (Amended by  ) 
9. Specially protected emblems.  
10. Relative grounds for refusal of registration. ( Amended by  ) 
11. Meaning of “ earlier trade  mark”. (Amended by  ) 
12. Raising of relative grounds in case of honest concurrent use.  
13. Rights conferred by registered trade mark.  (Amended by  ) 
14. Infringement of registered trade mark. ( Amended by  ) 
15. Limits on effect of registered trade m ark. (Amended by  ) 
16. Exhaustion of rights conferred by registered trade mark.  (Amended by  ) 
17. Registration subject to disclaimer or limitation.  
18. Action for infringement.  (Amended by  ) 
19. Order for erasure &c. of offending sign  ). Unof ficial consolidated version  
 
20. Order f or delivery up of infringing goods, material or articles  . 
21. Meaning of “ infringing goods, material or articles ”. 
22. Period after which remedy of delivery up not available.  
23. Order as to disposal of infringing goods, material or articles  .  
                                                                                          (Amended by  ) 
24. Remedy for groundless threats of infringement proceedings  . 
25. Infringing goods, material or articles: powers of seizure and search.  
                                                                                           (Amended by ) 
26. Nature of registered trade mark.  
27. Jointly owned trade marks.  
28. Assignment &c. of registered trade mark.  (Amended by  ) 
29. Registration of transactions affecting register ed trade mark. (Amended by     
) 
  
30. Trusts and equities.  
31. Application for registration of trade mark as an object of property.  (Amended by 
 ) 
32. Licensing of registered trade mark.  
33. Exclusive licences.  
34. General provisions as to rights of li censees in case of infringement.  (Amended by 
  ) 
35. Exclusive licensee having rights and remedies of assignee.  (Amended by  ) 
36. Exercise of concurrent rights  . 
37. Application for registration.  
38. Date of filing.  
39. Classification of goods and ser vices. (Amended  by  ) 
40. Claim to priority of Convention application.  
41. Claim to priority from other relevant overseas application. ( Amended by ) 
42. Examination of application.  
43. Publication, opposition proceedings and observations.  (Amended by  ) 
44. Withdrawal , restriction or amendment of application.  
45. Registration.  
46. Registration: supplementary provisions.  (Amended by  ) 
47. Duration of registration.  
48. Renewal of registration.  (Amended by  ) 
49. Alteration of registered trade mark.  Unof ficial consolidated version  
 
50. Surrender of re gistered trade mark.  
51. Revocation of registration.  (Amended by   ) 
52. Grounds for invalidity of registration.  (Amended by   ) 
53. Effect of acquiescence . 
54. Collective marks.  (Amended by  ) 
55. Certification mark s. 
 
PART III  
 
Commun ity Trade Marks and  International Matters  
 
 56. Meaning of “ Community trade mark ” and “ Community Trade Mark Regulation ”.  
        Meaning of “European Union Trade Mark ”, “European Union Trade Mark 
Regulation ” and “ Directive ” (Amended by  ) 
57. Power to ma ke provision in con nection with Community Trade Mark Regulation.  
(Repealed by  ) 
58. The Madrid Protocol.  
59. Power to make provision giving effect to Madrid Protocol.  
60. The Paris Convention. ( Amended by  ) 
61. Protection of well -known trade marks: Art icle 6bis. ( Amended  by  ) 
62. National emblems &c. of Convention countries: Article 6ter.  
(Amended by ) 
63. Emblems &c. of certain international organisations: Article 6ter.  
(Amended by  ) 
 64. Notification under Article 6ter of the Convention.  
(Amended by  ) 
65. Acts of agen t or representative: Article 6septies  . 
 
PART IV  
 
Administrative Provisions  
 66.   The register.  
67. Rectification or correction of the register  . 
68. Adaptation of entries to new classification.  
69. Power to require use of forms.  
70. Information about appli cations and registered trade marks.  
71. Exercise of discretionary powers by Controller.  
72. Costs and security for costs  . Unof ficial consolidated version  
 
73. Evidence before the Controller.  
74. Exclusion of liability in respect of official acts.  
75. Content of Co ntroller's annual report.  
76. Registration to be prima facie evidence of validity.  
77. Certificate of validity of contested registration  . 
78. Controller's appearance in court proceedings  . 
79. Appeals from the Controller. ( Amended by   ) 
80. No award of costs to or against the Cont roller . 
81. Power of Minister to make rules.  
82. Fees.  
 
PART V  
 
Trade Mark Agents  
 
83. Authorised agent may act. ( Amended by  ) 
84. Register of Trade Mark Agents.  
85. Business to be carried on only by registered trade mark age nts &c.  
                                                                                                   (Amended by       ) 
86.   Entitlement to be registered as trade mark agent. ( Amended by      ) 
87. Removal from Register.  
88. Suspension and e rasure of registration of trade mar k agent  . 
89. Notice of erasure or suspension: subsequent restoration.  
90. Rules relating to trade mark agents.  (Amended by       )   
91. Privileged communications. ( Amended by  ) 
 
PART VI  
 
Offences  
 
 92. Fraudulent app lication or use of trade mark in rela tion to goods  . 
93. Falsification of register, &c  . 
94. Falsely representing trade mark as registered  . 
95. Offences committed by partnerships and bodies corporate.  
 
PART VII  
 
Miscellaneous and General  
 Unof ficial consolidated version  
 
 96. Jurisdic tion of the Circuit Court.  
97. Unauthorised  use of State emblems of Ireland  . 
98. Misuse of trade marks indicative of Irish origin.  
99. Burden of proving use of trade mark.  
100. Transitional provisions.  
101. Territorial waters and continental shelf.  
102. Amendment and adaptation of existing statutes . 
 
FIRST SCHEDULE  
 
Collective Marks  (Amended by   ) 
 
SECOND SCHEDULE  
 
Certification Marks  (Amended by   ) 
 
THIRD SCHEDULE  
 
Transitional Provisions (Amended by  ) 
 
 
 
 _______________________________________ _____________________________  
 
Number  6 of 1996  
 ____________________________________________________________________  
 
TRADE MARKS ACT, 1996  
 
 ____________________________________________________________________  
  
AN ACT TO MAKE NEW PROVISION FOR REGISTERE D 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 T HE COMMUNITY 
TRADE MARK(2) ; TO GIVE EFFECT TO TH E 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 R EVISED AND AMENDED; TO 
PERMIT THE REGISTRATION OF  TRADE MARKS IN RELATION TO SERVICES 
AND FOR CONNECTED PURPOSES. [16 th March , 1996]  
 
 BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:  
 Unof ficial consolidated version  
 
 
PART I  
 
Preliminary and General  
 
Short title and commencement  
 1.—(1) This A ct may be cited as the Trade Marks Act, 1996.  
 
        (2) The provisions of the Act shall come into operation on such day as the  
              Minister may by order fix.  
         (3) Different days may be so fixed for different provisions and different  
               purposes.  
 
Interpretation.  
 2.—(1) In this Act, except where the context otherwise requires — 
 
“the Act of 1963 ”means the Trade Marks Act, 1963 ;  
“Agreement establishing the World Trade Organisation ” has the meaning assigned by 
section 60;* 
“ appropriate court ” means — 
(a) the District Cou rt, where the damages or the value of the other relief sought in any action 
to which the application relates is not liable to exceed such sum as stands specified by an 
enactment to be the jurisdiction of the  District Court for actions in contract or tort,  
(b) the Circuit Court, where the damages or the value of the other relief sought in any action 
to which the applicat ion relates  is not liable to exceed such sum as stands specified by an 
enactment to be the jurisdiction of the Circuit Court for actions in contract or tort, and  
(c) in any other case, the High Court;”.† 
“assignment ” means assignment by act of the parties c oncerned;  
“business ” includes a trade or profession;  
“Community trade mark ”, and “ Communi ty Trad e Mark Regulation ” have the    
meanings as signed by section 56  ; 
“the Controller ” means the Controller of Patents, Designs and Trade Marks  Intellectual 
Property ; 
“Convention country ” has the meaning assigned by section 60  ; 
“the Court ” means the Hig h Court; 
“directive” has the meaning assigned by section 56;  
“director ”, in relation to a body corporate whose affairs are managed by its  
members, means any member of the body;  
“earlier tr ade mark ” has the meaning assigned by section 11  ; 
“ ’EEA Agreement ’ means the Agreement on the European Economic Ar ea signed at Oporto 
on 2 May 1992, as adjusted by all subsequent amendments to that Agreement;  
‘EEA state’ means - 
      (a) a Member State ( other than the State), or  
      (b) a state (other than a Member St ate) that is a contracting party to the EEA     
agreement;” * 
                                                 
* Patents Amendment Ac t 2006 (31/2006)       
*S.I. No. 47 of 2016 European Communities (Trade  Mark Agent s) Regulations 2016     
*S.I. No. 561 of  2018 European Union (Trade Marks) Regulations 2018  
† Copyright an d Other Intellectual Property Law Provisions  Act 2019  
 Unof ficial consolidated version  
 
“European Union trade mark” has the meaning assigned by section 56;  
“European Union Trade Mark Regulation” has the meaning assig ned by section 56;* 
“exclusive licence ” and “ exclusive licensee ” have the meanings assigned by section  
33; 
“infring ement proceedings ”, in relation to a registered trade mark, include  
proceedings under section 20  ; 
“the Journal ” means the Patents Office Jo urnal;  
“the Minister ” means the Minister for Enterprise and Employm ent; 
“the Office ” means the Patents Office  Intell ectual Property Office of Ireland ; 
“the Paris Convention ” has the meaning assigned by section 60  ; 
“partnership ” has the meaning assigned by section 1 of the Partnership Act, 1890;  
“prescribed ” means, in rel ation to proceedings before the Court  the appropr iate courti, 
prescribed by rules  
of court and, in any other case, prescribed by this Act or orders, rules or regulations  
made hereunder;  
“publish ” means make available to the public, and references to p ublication— 
(a) in relation to an application for registr ation, are to publication under section 43    
     (1), and  
     (b) in relation to registration, are to publication under section 45 (4) ; 
“the register ”, except in Part V  , means the Register of Trade M arks kept under this  
Act; 
“rules ”, except in relation  to rules of court, mean rules made by the Minister under  
section 81  ; 
“State emblem of Ireland ” means any emblem notified as such under Article 6ter of  
the Paris Convention;  
“trade ” includes any busine ss or profession;  
“trade mark ” has the meaning assign ed by section 6  . 
 
(2) References in this Act to use (or any particular description of use) of a trade  
mark, or of a sign identical with, similar to, or likely to be mistaken for a trade  
mark, include u se (or that description of use) otherwise than by mea ns of a  
graphic representation.  
 
(3) Any reference in this Act to a Community   European Union† instrument includes a 
reference to any  instrument amending or replacing that instrument.  
 
(4) In this Act — 
 
(a) a reference to a Part or section is to a Part or sec tion of this Act, unless it is  
      indicated that reference to some other enactment is intended; and  
(b) a reference to a subsection or paragraph is to the subsection or paragraph of  
the provision in whi ch the reference occurs, unless it is indicated that some    
other provision is intended.  
 
(5) In this Act a reference to an enactment includes a reference to that enactment as   
     amended by or under any other enactment, including this Act.  
                                                 
 
† *S.I. No. 56 1 of 2018 European Union (Trade Marks) Regulations 2018  
Copyright and Other Intel lectual Property Law Provisions Act 20 19 
 Unof ficial consolidated version  
 
 
Orders, re gulations and rules.  
 3.—(1) Where a power to make or ders, 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, a nd different provisions may be made by any 
such order s, regulations or rules in respect of matters which are of different classes or 
descriptions.  
 
(2) Subject to subsection (3) , every order, regulation or rule made under this Act shall be laid 
before each  House of the Oireachtas as soon as may be after it i s 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 ann ulled accordingly, but without prejudice to the validity of 
anything previously done thereunder.  
 
(3) Where — 
 
 (a) a regulation is proposed to be made under section 57  or section 59  , or 
 (b) an order is  proposed to be made under section 60  subsection (2)  shall not apply and a 
draft of the order or regulation shall be laid before both Houses of the Oireachtas, and the 
order or regulation shall not be made until a resolution approving the draft has been pa ssed 
by each House.* 
† 
(4) As soon as may be after an y order, regulation or rule is made under this Act, notice of the 
making thereof and of the place where copies thereof may be obtained, shall be published in 
the Journal.  
 
(5) Any power under this Act to  make an order includes power to amend or revoke an o rder 
made in the exercise of that power except in the case of an order under section 1 (2) . 
 
Expenses.  
4.—The expenses incurred by the Minister in the administration of this Act shall, to such 
extent as may be sanctioned by the Minister for Finance, be pai d out of moneys provided by 
the Oireachtas.  
 
Repeal.  
5.—Subject to the provisions of section 100  , the Act of 1963 is hereby repealed.  
 
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulation s 2018  
†  Unof ficial consolidated version  
 
PART II  
 
Register Trade Marks  
 
Introductory  
 
Trade marks.  
6.—(1) In this Act a “trade mark ” means any sign capable of be ing represented graphically  
which is capable of distinguishing goods or services of one undertaking from those of other 
undertakings.  
 
(2) Without prejudice to subsection (1), a trade mark may, in partic ular, consist of words 
(including personal names), de signs, letters, numerals or the shape of goods or of their 
packaging.  
 
(2) Without prejudice to subsection (1), a trade mark may, in particular, consist of words 
(including personal names) or designs, le tters, numerals, colours, the shape of goods or of th e 
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 subje ct matter of the protection afforded to its proprieto r.* 
 
(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. 
 
Registered trade marks . 
7.—(1) A reg istered 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.  
 
 (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.  
 
Grounds for Refusal of Registration  
 
Absolute grounds for refus al of registration.  
8.—(1) The following shall not be  registered as trade marks:  
 
(a) signs which do not satisfy the requirements of section 6 (1) ; 
(b) trade marks which are devoid of any distinctive character;  
(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 s ervices, or other 
characteristics of goods or service s; 
(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:  
                                                 
* * *S.I. No. 561 of 2018 European Union (Trade Marks) Regul ations 2018  Unof ficial consolidated version  
 
 
Provided that, a trad e ma rk shall not be refused registration by virtue of  paragraph (b), (c)  or 
(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.  
 
(2) A sign shall not be registered as a  trade mark if it consists exclusively of — 
 
(a) the shape  shape or another characteristic which results from the nature of the        
goods themselves; or  
(b) the shape  shape or another characteristic of goods which is necessary to obtain a 
technical result; or  
(c) the shape shape or another characteristic which gives s ubstantial value to the  
goods     
 
(3) A trade mark shall not be registered if — 
 
 (a) it is contrary to public policy or to accepted principles of morality; or  
 (b) it is of such a nature as to deceive t he public, for instance as to the nature, quality  
    or geographical origin of the goods or service.  
 
(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 Community law; or  
  (b) the application fo r registration is made in bad faith by the applicant.† 
 
 
(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 a ny provision of 
European Union law including those fo r the protection of designations of origin  and           
 
*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  
geographical indications or where the State or the European Union is party to  an international 
agreement protecting designations o f origin and geographical indications; or  
 
(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 protec tion of traditional  
terms for wine; or  
 
(c) its use i s 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  
 
(d) it co nsists of, or reproduces in its essential elements, a n 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, provi ding 
protection for plant variety rights,  and which a re in respect of plant varieties of the same or  
                                                 
 
† *S.I. No. 561 of 2018 European Union (Trade Marks) R egulations 201 8 Unof ficial consolidated version  
 
closely related species; or  
 
(e) the application for registration is made in bad faith by the  applicant.* 
 
Specially protected emblems.  
9.—(1) A trade mark  which consists of or contains any State emblem of Ir eland 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 b een given by the Minister.  
 
(2) A trade mark which co nsists 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 ma rk would be misleading or grossly offensive.  
 
(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.  
 
Relative grounds for refusal of registration.  
10.—(1) A trade mark sha ll 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 m ark is protected.  
 
(2) A trade mark shall not be regi stered if because — 
 
(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† 
(b) it is similar to a n earlier trade mark and would be registered for good s or services 
identical with or similar to those for which the earlier trade mark is protected,  
 
there exists a likelihood of confusion on the part of the public, which includes the likelihood 
of associa tion of the later trade mark with the earlier trade m ark. 
 
(3) A trade mark which — 
(a) is identical with or similar to an earlier ‡trade mark, and  
 
(b) is to be registered for goods or services which are not similar to those for which 
the earlier trade mar k is protected,  
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) and the use of the later 
trade mark without due cause would take unfair ad vantage of, or be detrimental to, the 
distinctive cha racter or reputation of the earlier trade mark.  
 
(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 Comm unity 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 
                                                 
*  Patents Amendment Act 2006   (31/2006)     
† *S.I. No. 561 of 2018 European Union (Trade Marks) Regul ations 2018  
 Unof ficial consolidated version  
 
unfair advantage of, or be detrimental to , the distinctive character or reputation of the earl ier 
trade mark.  
  
(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 . 
 
(4) A trade ma rk shall not be registered if, or to the extent that, its use in the State is liable to 
be prevented — 
 
(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 unreg istered trade mark or other sign confers on its 
proprietor the right to prohibit the use of a subsequent trade mark; or  
(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  
(c) and to the extent pursuant t o European Union legislation or the law of the State providing 
for protections of designations of origin and geographical indications — 
 
(i) by virtue of an earlier application for a designation of origin or a geographical indication 
prior to the date of ap plication for registration of the trade mark or the d ate of the priority 
claimed for the application, subject to its subsequent registration, and* 
(ii) that designation of origin or geographical indication confers on the person authorised 
under the relevan t law to exercise the rights arising therefrom the ri ght to prohibit the use of 
a subsequent  trade mark.”, and  
 
(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 o f a trade mark, that person is in this Act referred 
to as the proprietor of an “ earlier right ” in relation to the trade mark.  
 
(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 refused unless the agent or representative justifies that action.  
 
(6) Nothing in this section shall prevent the registration of a trade mark where the proprietor 
of the earlier trad e ma rk or other earlier right consents to the registr ation.  
 
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 serv ices for which that trade mark has been applied, refu sal of registration 
shall cover those goods or services only.  
 
 
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regu lations 2018  Unof ficial consolidated version  
 
Meaning of “ earlier trade mark ”. 
11.—(1) In this Act an “ earlier trade mark ” means — 
 
(a) a registered trade mark, an international trade mar k or a Community trade mark 
which has a date of appli cation 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;  
           (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,     
             taking account (where appropriate) of the prior ities claimed in respect of the trade  
             marks* 
(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  
(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 Agreemen t establishing 
the World Trade Organisation * as a well -known trade mark.  
 
(2) References in this Act to an earlier trade mark include references to a trade mark in 
respect of which an application for reg istration has been made and which, subject to its bei ng 
registered, would be an earlier trade mark by virtue of subsection (1) (a)  or (b).† 
 
(3) Where the registration of a trade mark specified in subsection (1) (a)  or (b) expires, the 
trade mark shall con tinue to be taken into account in determining the reg istrability 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 e xpiry. 
 
Raising of relative grounds in case of honest  concurrent use.  
 12.—(1) This section applies where on an application for the registration of a trade mark it 
appears to the Controller —                                                     
                                                                                                                                                                                                                                                                                                                                                                                       
(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  
(b) that there is an earlier right in relation to which the condition set out in section 10 
(4) is satisfied,  
but the applicant shows to the satisfaction of the Controller that there has been honest 
concurrent use of the trade mark for which registration is sough t. 
 
(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 earlie r trade mark or other earlier right.  
 
(3) For the pur poses of this section “ honest concurrent use ” 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 .  
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  
* Patents Amendment Act 2006 (31/2006)      
 Unof ficial consolidated version  
 
 
(4) Nothing in this  section affects — 
 
 (a) the refusal of registration on the grounds mentioned in section 8  ; or 
 (b) the making of an application for a declaration of invalidity under section 52 (2) . 
 
 Effects of Registe red Trade Mark  
 
Rights conferred by registered trade mark.  
13.—(1) The proprietor of a registered trade mark  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* shall have exclusive rig hts in the trade 
mark and such rights shall be infringed by the use of that trade mark in the State without the 
proprietor's consent; and the acts referred to in section 14  , if done without that consent , shall 
constitute infringement of the proprietor's r ights.  
 
(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.  
 
 
(2A) ( a) Without preju dice 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  
shall be entitled to prevent all third parties from bringing goods, in the course of trade, in to 
the State, without being released for free circula tion there, where such goods, including  
the packaging thereof, come from third countries and bear without authorisation a trade mark 
which is identical with the trade mark registered in the State, in res pect of such goods, or 
which cannot be distinguished in its essential aspects from that trade mark.  
 
(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  
 
(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)) . 
 
(4) Notwithsta nding subsection (3) — 
(a) no infringement proceedings may be begun before the date of publication of the 
registration of the trade mark; and  
(b) no offence shall be regarded as committed under section 92  by anything done 
before that date.  
 
Reproduction of trademarks in dictionaries  
13A. 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 gen eric name of 
the goods or services for which the trad e mark is registered, the publisher of the work shall,  
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 201 8 Unof ficial consolidated version  
 
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 pr inted form at the latest in the next 
edition of the p ublication, accompanied by an indication that it is a registered trade mark.* 
 
Infringement of registered trade mark.  
 14.—(1) A person shall infringe a registered trade mark if that person uses in the c ourse of 
trade a sign which is identical with the tra de mark in relation to goods or services which are 
identical with those for which it is registered.  
 
(2) A person shall infringe a registered trade mark if that person uses in the course of trade a 
sign wher e because— 
(a) the sign is identical with the tra de mark and is used in relation to goods or services 
similar to those for which the trade mark is registered, or  
(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 m ark is registered,  
there exists a likelihood of confusion on the part of the public, which includes the likelihood 
of association of the sign with the trade mark.  
 
 (3) A person shall infringe a register ed trade mark if that person uses in the course of tr ade a 
sign which — 
 (a) is identical with or similar to the trade mark, and  
 (b) is used in relation to goods or services which are not similar to those for which 
the trade mark is registered,  
where the t rade mark has a reputation in the State and the use o f the sign, being without due 
cause, takes unfair advantage of, or is detrimental to, the distinctive character or the 
reputation of the trade mark.  
 
(3) A person shall infringe a registered trade mark i f 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 goo ds 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 detri ment al to, the 
distinctive character or the reputatio n of the trade mark.†  
 
(4) For the purposes of this section, use of a sign shall include, in particular — 
(a) affixing it to goods or the packaging thereof;  
(b) offering or exposing goods for sale, putti ng them on the market or stocking them 
for those purp oses under the sign, or offering or supplying services under the sign;  
(c) importing or exporting goods under the sign; or  sign 
(d) using the sign on business papers or in advertising.  
            (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 and  Comparative Marketing Commu nications)   
            Regulations 2007  (S.I. No. 7 74 of 2007).”, and  
 
                                                 
* *S.I. No. 561 of 2018 European Union  (Trade Marks) Regula tions 2018  
† Patents Amendment Act 2006  (31/2006)  Unof ficial consolidated version  
 
(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 rela tion to 
goods or services and that use would constitu te 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 t he course of trade:  
 
(a) affixing a sign identical wi th, 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;  
 
(b) offering or placing on the market, or  stocking for those purposes, or importing or 
exporti ng, packaging, labels, tags, security or authenticity features or devices, or any other  
means to which the mark is affixed.* 
 
(5) A person who applies a registered trade mark to material intended to be u sed for labelling 
or packaging goods, as a business p aper, 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 wa s not duly authorised by the proprietor or a licensee of the registered trade mark.  
 
(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 go ods 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 tre ated 
as infringing the registered trade mark if the u se without due cause takes unfair advantage of, 
or is detrimental to, the distinctive character or reputation of the trade mark.  
 
Limits on effect of registered trade mark.  
 15.—(1) A registered trade ma rk shall not be infringed by the use of another regis tered trade 
mark in relation to goods or services for which the latter is registered, but subject to section 
52 (6) . 
 
(2) A registered trade mark shall not be infringed by — 
(a) the use by a person of his  own name or address;  
            (a) the use of the name or address of a third party, where that third party is a natural    
            person;  
(b) the use of indications concerning the kind, quality, quantity, intended purpose, 
value, geographical origi n, the time of production of goods or of rendering of  the 
service or other characteristics of goods or services; or  
            (b) the use of signs or indications which are not distinctive or which concern the kind,   
            quality, quantity, intend ed purpose, value, geographical origin, the time of p roduction   
            of goods or of rendering of the service or other characteristics of goods or services;  
            (c) the use of the trade mark where it  for the purpose of identifying or referri ng 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 part s:  Provided that such use  Provided that such use is in the   
             course of trade† in accordance with honest  practices in industrial and commercial    
                                                 
 
†  *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  Unof ficial consolidated version  
 
            matters.  
 
(3) A registered trade mark shall not be infringed by the use in the cours e of trade in a 
particular locality of an earlier rig ht which applies only in that locality.  
 
(4) For the purpose of subsection (3)  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 pr ior to whichever is the earlier of — 
(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  
(b) the registr ation 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;  
and 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 par ticular the law of passing off.  
 
Exhaustion of rights conferred by registered trade mark  
16.—(1) A registered trade mark shall not be infringed by the use of the trade mark in 
relation to goods which hav e been put on the market in the European Economic Are a under 
that trade mark by the proprietor of the trade mark or with the consent of the proprietor.  
 
(2) The provisions of subsection (1)  shall not apply where there exist legitimate reasons for 
the propr ietor 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.  
 
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 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 th e 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 referred  to in subsect ion (1) shall be calculated — 
  
(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 no tified, 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.  
 
(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  
                                                 
*S.I. No. 561 of 2018 European Union ( Trade Marks) R egulations 2018  Unof ficial consolidated version  
 
 
*  *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  
 
character  of the mark in the form in which it was registered, regardless o f whether or not the  
trade mark as used is also regis tered in the name of the proprietor, or  
 
(b) affixing of the trade mark to goods or to the packaging thereof in the State solely for 
expor t purposes.  
 
(5) Use of the trade mark with the consent of the pr oprietor shall be deemed to constitute use 
by the pro prietor.* 
 
 
Registration subject to disclaimer or limitation.  
17.—(1) A person who applies for the registration of a trade mark or the pro prietor of a 
registered trade mark may — 
(a) disclaim any right to  the exclusive use of any specified element of the tr ade mark, 
or 
(b) agree that the rights conferred by the registration shall be subject to a specified 
territorial or other limitation;  
and where the registration of a trade mark is subject to a disclaimer  or limitation, the rights 
conferred by section 13  shall be restricted accordingly.  
 
(2) If on an application for the registration of a trade mark, it appears to the Controller that 
any parti cular element of the trade mark is not distinctive and the inclus ion 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 d isclaimer in 
respect of that element under subsection (1) (a)  within such period as the Controller may 
specify.  
 
(3) Particulars of any disclaimer or limitation shall be entered in the register.  
 
 Infringement Proceedings  
 
Action for infringement.  
18.—(1) Where a registered trade mark is infringed, the infringement shal l be actionable by 
the proprietor of the trade mark.  
 
(2) In an action for infringement of a registered trade mark all such relief by way of damages, 
injunctions, accounts or otherwise shall be available to the proprietor as is available in 
respect of the infringement of any other property right.  
 
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 ex tent that the proprietor’s rights are not liable to be revoked pu rsuant to section 51 at the 
time the action for infri ngement is brought.  
 
                                                 
* *S.I. No. 561 of 2018 European Union ( Trade Marks) R egulations 2 018 Unof ficial consolidated version  
 
(2) If the defendant so requests, the proprietor of the trade mark shall furnish proof that, 
during the 5 year period  preceding the date of bringing the action for infringement — 
   
(a) the trade mark has been put to genuine use as prov ided in section 16A, in 
connection   with the goods or services in respect of which it is registered and which 
are cited as justification for the action, or  
 
(b) that there are proper reasons for non -use,  
 
provided that the registration procedure of the t rade mark has, at the date of bringing the 
action, been completed for not less than 5 years.  
 
Intervening right of the proprietor of a lat er 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 registered trade mark where that later trade mark would not be 
declar ed invalid pursuant to sections 10(4)( a), 10(4)( b), 52(2A), 53(1) , or 52A (3).* 
 
(2) In an action for infringement, th e proprietor of a trade mark shall not be entitled to 
prohibit the use of a later registered European Union trade mark where that later tr ade mark 
would not be declared invalid pursuant to Articles 60(1) , (3) or (4), 61(1) or (2) or 64(2) of  
the European U nion trade mark regulation.† 
 
(3) Where the proprietor of a trade mark is not entitled to prohibit the use of a later registered 
trade mar k pursuant to subsection (1) or (2), the proprietor of that later  registered trade mark 
shall not be  entitled to prohi bit the use of the earlier trade mark in an action for  infringement, 
even though that earlier right may no longer be invoked  against the l ater trade mark.‡ 
 
Order for erasure &c. of offending sign.  
19.—(1) Where a person is found to have infringed a regist ered trade mark, the Court  
appropriate court  may make an order requiring him — 
(a) to cause the offending sign to be erased, removed or obl iterated from any 
infringing goods, material or articles in his posse ssion, custody  or control, or  
(b) if it is not re asonably practicable for the offending sign to be erased, removed or 
obliterated, to secure the destruction of the infringing goods, mater ials or articles in 
question.  
 
(2) If an order under subsection (1)  is not complied  with, or it appears to the Court  
appropriate court  likely that such an order would not be complied with, the Court  appropriate 
court  may order that the infringing goods, ma terial or articles be delivered to such person as 
the Court  appropria te court  may direct for erasure, removal or oblit eration of the sign , or for 
destruction, as the case may be.  
 
Order for delivery up of infringing goods, material or articles.  
20.—(1) The proprietor of a registered trade mark may apply to the Court  appropr iate court  
for an order for the delivery up to th e proprietor, or such other person as  the Court  
                                                 
 
†*S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  
‡ Copyright and Other Intellectual Property Law Provisions Act 2019  
 Unof ficial consolidated version  
 
appropriate court  may direct, of any infringing goods, material or articles of which a per son 
has possession, custody or control in the course of a business or  otherwise for the purpose of 
dealing in any way (including offering or exposing for sale or hire).  
 
(2) An application for the delivery up of any infringing goods, material or articles s hall not 
be made after the end of the period specified in section 22  ; and no order shall be made 
unless the Court  appropriate court  also makes, or it appears to the Court  appropriate court  
that there are grou nds for making, an order under section 23  . 
 
(3) A person to whom any infringing goods, material or articles are del ivered up in pursuance 
of an order under this sec tion shall, if an order under section 23  is not made, retain them 
pending the making of an order or the decision not to make an order unde r that section.  
 
(4) Nothing in this section shall affect any other p ower of the Court  appropriate court*. 
  
Meaning o f “infringing goods, material or articles ”. 
 
21.—(1) In this Act the expressions “ infringing goods ”, “infringi ng material ” and “ infringing  
articles ” shall be construed as defined herein.  
 
(2) Goods shall be “infringing goods ”, in relation to a registered t rade mark, if they or their 
packaging bear a sign identical or similar to that mark and either — 
(a) the applic ation of the sign to the goo ds or their packaging was an infringement of 
the registered trade mar k, or 
(b) they have been or are proposed to be im ported into the State and the application of 
the mark in the State to the goods or their packaging would const itute an infringement 
of the  registered trade mark, or  
(c) the sign has otherwise been used in re lation to the goods in such a way as to 
infringe the registered trade mark.  
 
(3) Nothing in subsection (2) (b)  shall be construed as applying to goods which ma y lawfully 
be imported into the State by virtue of any right created or arising under or by virtu e of the 
treaties governing the European Union.  
 
(4) Material shall be “ infringing material ”, in relation to a registered trade mark, if it bears a 
sign identi cal or similar to that mark and either — 
(a) it is used for labelling or packaging goods, as a bus iness paper, or for advertising 
goods or services , in such a way as to infringe the registered trade mark, or  
(b) it is intended to be so used and such use wou ld infringe the registered t rade mark.  
 
(5) “Infringing articles ”, in relation to a registered tr ade mark, means articles — 
(a) which are specifica lly designed or adapted for making copies of a sign identical or 
similar to that mark, and  
(b) which are in th e possession, custody or con trol, of a person who knows or has 
reason to believe that they have b een or are to be used to produce infringing goods  or 
material.  
 
 
                                                 
* Copyright and Other  Intellectu al Property Law Prov isions Act 2019  Unof ficial consolidated version  
 
Period after which remedy of delivery up not available.  
22.—(1) Subject to the provisions of th is section, an application for an order under section 20  
may not be made after the end of the per iod of six years from — 
(a) in the case of infring ing goods, the date on which the trade mark was applied to 
the goods or their packaging;  
(b) in the case of in fringing material, the date  on which the trade mark was applied to 
the material; or  
(c) in the ca se of infringing articles, the date on which they  were made.  
(2) If during the whole or part of the period referred to in subsection (1)  the proprietor of the 
registered trade mark — 
(a) is under a disability, or  
(b) is prevented by fraud or concealment fro m discovering the facts entitling the 
proprietor to apply for an order,  
an application may be made at any time before the end of the period of six years from t he 
date on which the propri etor ceased to be under a disability or, as the case may be, could wit h 
reasonable diligence have discovered those fact s. 
 
(3) For the purposes of subsection (2)  a person is under a disability if he is so for the 
purposes of the Statute of Limitations, 195 7 . 
 
Order as to disposal of infringing goods, material or articles  
23.—(1) Where infringing goods, material or article s have been delivered up in pursuance of 
an order under section 20  , an application may be made to the Court  appropriate court* — 
(a) for an order that they be destroyed or forfeited to such person as the Court 
appropriate court  thinks fit, or  
(b) for a dec ision that no such order should be made.  
 
(2) In considering what order (if any) should be made, the Court  appropriate court  shall 
consi der whether other remedies av ailable in an action for infringement of t he registered 
trade mark would be adequate to com pensate and protect the interests of the proprietor and 
any licensee.  
 
(3) Provision may be made by rules of court as to the service of notice on any person having 
an interest in the goods, material or artic les, and any such person shall be entitled — 
(a) to appear in proceedings for an order under this section, whether or not he was 
served with notice, and  
(b) to appeal against any order m ade, whether or not he appear ed; 
and, unless the Court  appropriate cour t otherwise directs, an order shall not take effe ct until 
the end of the period within which notice of an appeal may be given or, if before the end of 
that period notice of appeal is du ly given, until the final determination or aban donment of the 
proceedin gs on the appeal.  
 
(4) Where there is more than o ne person interested in the goods, material or articles, the 
Court  appropriate court  shall make such order as it thinks just.  
 
(5) If the Court  appropriate court  decides that no order should be made under th is section, the 
person in whose possession, custo dy or control the goods, material or articles were before 
being delivered up shall be entitled to their return.  
                                                 
* Copyright and Other Intellectual Property L aw Provisions Act 2019  Unof ficial consolidated version  
 
 
(6) References in this section to a person having an interest in goods, material or articles 
include refer ences to any person in whose favour a n order could be made under section 27 of 
the Copyright Act, 1963  . 
*  
(6) References in this section to a person having an interest in goods, material or articles 
include references to any person in whose fav our an order  could have been made under  
sections  145 and 264 of the Copyright and Related Rights Act, 2000*   
 
 
Remed y for groundless threats of infringement proceedings  
24.—(1) Wher e a person threatens another with proceedings for infringement of a regis tered 
trade mark other than in relation to — 
(a) the application of the mark to goods,  
(b) the importation of goods to which the mark has been applied, or  
any person aggrieved may appl y to the Court  appropriate court† for relief under this section.  
 
(2) The relief which may be applied fo r as mentioned in subsection (1)  is any of the 
following:  
(a) a declaration that the th reats are unjustifiable;  
(b) an injunction against the continuanc e of the threats;  
(c) damages in respect of any loss sustained by the thr eats. 
 
(3) A plaintiff shall be  entitled to such relief as is referred to in subsection (2)  unless the 
defendant shows  that the acts in respect of which proceedings were threatened co nstitute (or 
if done would constitute) an infringement of the registered trade mark concerned.  
 
(4) Notw ithstanding the pr ovisions of subsection (3) , the plaintiff shall be entitled to such 
relief as is referred to in subsection (2)  if the plaintiff shows that the registration of the trade 
mark is invalid or liable to be revoke d in a relevant respect.  
 
(5) Notification that a  trade mark is registered or that an application for registration has  been 
made shall not of itself constitute a threat of proceedings  for the purposes of this section.  
 
Infringing goods, material or article s: powers of seizure and search . 
25.—(1) If the D istrict Court is satisfied by evidence that there is reasonable groun d for 
believing that infringing goods, material or articles are i n the possession, custody or control 
of any person in the course of busin ess or otherwise for the purpos e of dealing in an y way 
(including offering or exposing for sale), the District Court m ay by order authorise a member 
of the Garda Síochána to seize the  goods, material or articles without warrant and to bring 
them before the  court. 
 
(2) ‡If a Judge of the District Court is satisfied by information on oath that there is reasonable 
ground for suspecting that infringing goods, material or articles are on an y premises in the 
course of business or otherwise for the purpose of deali ng in any way, the Judge may gr ant a 
                                                 
* S.I. No. 28/2000 Copyright and Related Rights Act, 2000  
† Copyright and Other Intellectual Property Law Provisions Act 2019  
 
‡ Patents Amendment Act 2006  (31/2006)       
 Unof ficial consolidated version  
 
search warra nt authorising a named member of the Garda Síochána not below the ran k of 
inspector, accompanied by such other members of the Garda S íochána as may be necessary, 
to enter on the premises, if need be by force , and to seize any such goods, material or articl es 
and bring them before the court.  
 
(2) If a Judge of the District C ourt is satisfied by information on oath that there is reasonabl e 
ground for suspecting that infringing goods, material or articles are on  any premises or place 
in the c ourse of business or otherwise for the purpose of dealing in any way, the Judge may 
grant a search warrant authorising a member of the Garda Síochána, accompanied by such 
other members of the Garda Síochána or other person or  persons as that member thinks 
proper, at any tim e or times within 28 days from the date of the issue of the warrant o n 
production, where requested, of that warrant, to enter and sea rch the premises or place  
*specified in the warrant using reasonable forc e where necessary, and to do all or any of the 
following acts:  
 
(a) to seize any such goods, material or articles;  
 
(b) to make an inventory or prepare other evidence of infringement  of a registered trade mark 
or potential infringement of a registered trad e mark;† 
 
(c) to seize anything f ound there which  that member believes on reasonable grounds may be 
required to be use d in evidence in any proceedings brought in respect of an offenc e under this 
Act; 
 
(b) to make an inventory or prepare other evidence of i nfringement of a registered trade  mark 
or potenti al infringement of a registered trade mark;  
 
(2A) A warrant issued u nder this section may authorise persons, including the registere d 
proprietor or his or her designated representative, to accompany and ass ist any member of the 
Garda Síoch ána in executing  the warrant or in collating any inventory or other evidence.‡  
 
(3) On proof to the District Court that any goods, material or artic les brought before the court 
under subsection (1)  or (2) are infringing go ods, material or articles, the co urt may — 
(a) order them to be delivered up to the proprietor of the registered trade mark 
concerned;  
(b) order them to be destroyed or forfeited to s uch person as the court thinks fit; or  
(c) order them to be dealt with in such other way as the court think s fit. 
 
(4) The powers of the District Court under this section shall be exercisable by the Judge of 
the District Court for the district in which the  goods, material or articles are for the time 
being or, as the case may be , where the premises or place*  concerned are situ ated.  
 
 Registered Trade Mark as Object of Property  
 
Nature of regist ered trade mark.  
26.—A registered trade mark is personal propert y. 
                                                 
 
† Patents A mendment Act 2006 (31/2006 ) 
 Unof ficial consolidated version  
 
 
Jointly owned trade marks.  
27.—(1) Where the relations between two or more persons interested in a trad e mark are such 
that no one of them is entitled, as between himself and the other or others, to use it except — 
(a) on behalf of both or all of them, or 
(b) in relation to an article with which both or all of them are connec ted in the course 
of trade,  
those  persons may be registered as joint proprietors of the trade mark.  
 
(2) Except as pro vided by subsection (1) , nothing in this Act shall permit the re gistration as 
joint proprietors of a trade mark of two or more persons who  use, or propose to use, the trad e 
mark independe ntly. 
 
(3) Subject to subsection (4) , where, in accordance with subse ction (1) , two or more persons 
are registered as joint proprieto rs of a trade mark, this Act shall have effect in relation to any 
rights t o the use of the trade mark veste d in those perso ns as if those rights were vested in a 
single person.  
 
(4) The rights  of any one of the persons who are registered as joint proprieto rs of a trade 
mark (in this subsection referred to as “ the joint owners ”) shall be deemed to be infringed b y 
any other of t he joint owners who uses the trade mark in physical or other relation  to goods 
or services — 
(a) in respect of which the trade mark is  so registered; but  
(b) with which both or all of the joint owners are not  and have not been connected in 
the course of tra de. 
 
Assignment &c. of registered trade mark.  
28.— (1) A registered t rade mark is transmissible by assignment, testamentary dispositi on or 
operation of law in the same way as other personal property, and sha ll be so transmissible 
either in connection with the goodwill of a business or independently.* 
 
(1) A registered trade  mark may be transferred by assignment, testamentary  disposition  or 
operation of law in the same way as other  personal property, and shall  be so transferrable 
either in co nnection  with th e goodwill of a business or independently.  
 
(1A) A transfer of a whol e business shall include the transfer of  the trade mark, except where 
there is agreement to the contrary, or  circumstances clearly dictate  otherwise.  
 
(1B) Subsection (1A)  shall apply to the contractual obligation to  transfer the undertaking.  
 
(2) An assig nment or other transmission   other transfer of a registered trad e mark may be 
partial, that is, limited so as to apply — 
(a) in relation to  some but not all of the goods or  services for wh ich the trade mark is 
registered; or  
(b) in relation to use of the tr ade mark in a particular manner or a particular locality.  
 
(3) An assignment of a registered trade mark, or a vesting assent relating to a  registered trade 
mark, shall not  be effective un less it is in writing signed by or on behalf of the assignor or, as 
                                                 
* *S.I. No. 561 of 2 018 European Union (Trade Marks) Regulations 2 018 Unof ficial consolidated version  
 
the case may be, a personal representative; and this requirement may be satisfied in a case 
where the assignor or personal representative i s a body corporate by the affixin g of its seal.  
 
(4) Subsections (1)  to (3) shall apply to assignment by way of securi ty as in relation to any 
other assignment.  
 
(5) A registered tra de mark may be the subject of a charge in the same way as other personal 
property. 
 
(6) Nothing in this Act  shall be constr ued as affecting the assignment or other transmission   
other transfer* of an unregistered trade mark as part of the goodwill of a bus iness.  
 
Registration of transactions affecting registered trade mark.  
29.—(1) On application being made to the Controller i n the prescribed manner by — 
(a) a person claiming to be entitled to a n interest in or under a registered trade mark 
by virtue of a re gistrable transaction, or  
(b) any other person claiming to be affected by such a transaction,  
 particulars of the transacti on shall be entered in the register in the prescribed manner.  
 
(2) The following are registrable transactions for the purposes of thi s Act— 
(a) an assignment of a registered trade mark or any right in it;  
(b) the grant or assignment of a li cence under a re gistered trade mark;  
(c) the granting of any security interest (wheth er fixed or floating) over a registered 
trade mark or any right in or under it;  
(ca) matters arising from the operation of law which affec t the proprietorship of a 
registe red trade mark†  
(d) the making by a personal representative of a vesting assent in r elation to a 
registered trade mark or any right in or under it; and 
(e) an order of a court  the appropriate court‡ or other competent auth ority transferring 
a registered trade mark or any  right in or under it.  
 
 (3) Until an application has been made for r egistration of the prescribed particulars of a 
registrable trans action — 
(a) the transaction shall be ineffective as against a person acqui ring a conflicting 
interest in or under the regis tered t rade mark in ignorance of it; and  
(b) a person claiming to be a licensee by virtue of the transaction shall not have the 
prote ction of section 34  or 35 . 
 
(3) Until an application has  been  made to enter the particulars of a registrable transaction in 
the register pursuant  to subsec tion (1), the transaction shall be ineffective as  against a 
person acquiring a conflicting interest in or under the registered trade mark in ignorance of 
that transaction.§ 
 
(4) Where a person becomes the proprietor or a li censee of a registered trade mark by virtue 
of a registrable transact ion, then unless — 
                                                 
*  
† Patents Amendment Act 2006 (31/2006 ) 
‡ Intellectual Property (Miscellaneous Provisions) Act 2014  
§§ Copyright and O ther Intell ectual Property Law Provisions Act 201 9 Unof ficial consolidated version  
 
(a) an application for registration of the pre scribed particulars of the transaction is 
made before the end of the perio d of six months beginning with the date of the 
transacti on, or  
(b) the Court is satisfied that it was not practicable for such an application to be made 
before the end of that period  and that an application was made as soon as practicable 
thereafter,  
 
that person shall not be entitled to damages or an ac count o f profits in respect of any 
infringement of the registered tra de mark occurring after the date of the transaction and 
before t he application for registration of the prescribed particulars is made.  
 
(4)  Where a person becomes the proprietor or a licensee of a registered trade mark by 
virtue of a registrable transaction and the trade mark is infringed— 
 
(a)  on or after the date of the registrable transaction, and 
 
(b)  at a time when no application has been made to en ter the pa rticulars of the 
registrable transaction in the register pursuant  to subse ction (1), 
 
the Court the appropriate court* shall not award the person his or her costs in 
proceedings for su ch an infringement of the trade mark unless— 
 
(i)  an application for registration of the particulars of the registrable transaction was 
made not later than 6 months from the date of the transaction, or 
 
(ii) the Court appropria te court  is satisfied that it was not practicable for such an 
application to be made in the period referred to in paragraph (i) and that an application 
was made as soon as practicable after the expiry of that period.* 
 
(5) Provision may be made by rules wi th respect to the amendment or deletion of particulars 
of registrable tran sactions entered in the register by virtue of thi s section.  
 
Trusts and equities.  
30.—(1) No noti ce of any trust (expr ess, implied or constructive) shall be entered in the 
register; and the Controller shall not be affected by any such notice.  
 
(2) Subject to the provisions of this Act, equities in respec t of a registered trade mark may be 
enforced in like manner as in res pect of other personal property.  
 
Application for registration o f trade mark as an object of property.  
31.—(1) The provisions of sections 26 to 30  sections 26 to 30 and 32 to 35  †shall a pply, with 
the necessary modifications, in relat ion to an application  for the registration of a trade mark 
as they apply in relation to a registered trade mark.  
 
(2) In section 29  as it applies in relation t o a transaction affecting an application for the 
registration of a trade mark, the references to the entry of particul ars in the register, and to the 
                                                 
* Intellectu al Property (Miscellane ous Provisions) Act 2014  
†*S.I. No. 561 of 201 8 European Union (Trade Marks) Regulations 2018  
† Copyright and O ther Intellectual Property Law Provisions Act 2019  
 
 Unof ficial consolidated version  
 
making of an application to regi ster particulars, shall be construed as references to the giving 
of notice  to the Controller of those particulars.  
 
(3) The procedure subsequent to the giving of notice as  mentioned in subsect ion (2)  shall be 
such as may be prescribed by rules.  
 
Licensing  
 
Licensing of registered trade mark.  
32.—(1) A licence to use a registered  trade mark may be general or limited.  
 
(2) A lim ited licence may, in particular, apply — 
(a) in relation to some but n ot all of the goods or services for which the trade mark is 
registered; or  
(b) in relation to use of the trade mark in a particular manner  or a particular locality.  
 
(3) A licence shall n ot be effective unless it is in writing signed b y or on behalf of the  grantor 
and this requirement may be satisfied in a case where t he grantor is a body corporate by the 
affixing of its seal.  
 
(4) Unless th e licence provides otherwise, it shall be binding  on a successor in title to the 
grantor's intere st; and references in  this Act to doing anything with, or without, the consent of 
the proprietor of a registered trade mark shall be construed accordingly.  
 
(5) Where the licence so provides, a sub -licence ma y be granted by the licensee; and 
references in this Act to a licence  or licensee include a sub -licence or sub -licensee.  
 
Exclusive l icences.  
33.—(1) In this Act an “ exclusive licence ” means a licence (wheth er general or limited) 
authorising the licensee, to the  
exclusion of all other persons, including  the person granting the licence, to use a registered 
trade mark in the manner author ised by the licence; and the expression “ exclusive licensee ” 
shall be cons trued accordingly.  
 
(2) An exclusive licensee has  the same rights against a successor in title wh o is bound by the 
licence as the exclusive licensee has against the person granting t he licence.  
 
General provisions as to rights of licensees in case of infri ngement.  
34.—(1) This section has effect with res pect to the rights of a licensee in relation to 
infringement of a reg istered trade mark, except where or to the extent that, by virtu e of 
section 35 (2) , the licensee has a right to bring proceedings in the licensee's own name.  
 
(2) A licensee is entitled,  unless the licence, or any licence through whic h the licensee's 
interest is derived, provides otherwise, to call on the proprietor o f the registered trade mark to 
take infringement proceedings in respect of  any matter which affects the licensee's interest s. 
(3) If the proprietor — 
(a) refuses to take p roceedings when called  upon under subsection (2) , or 
(b) fails to do so within two mon ths after being so called upon,  
 the licensee may bring the proceedings i n his own name as if he were the proprietor.  
 Unof ficial consolidated version  
 
(3) Without prejudice to the provisions of the lice nse or the licensing c ontract, the licensee 
may bring proceedings for infringement of a trade mark only if its proprietor consents 
thereto.  
 
(4) Where infringe ment proceedings are brought by a licensee by vir tue of this section, the 
licensee may not, witho ut the leave of the Co urt, proceed with the action unless the 
proprietor is either joi ned as a plaintiff or added as a defendant; but this subsection does not 
affect the granting of interlocutory relief on an  application by a licensee alone.  
 
(4) Where inf ringement proceedings have been brought by a licensee under subsection (3), 
the licens ee may not, without the leave of the Court appropriate court , proceed wit h the 
action unless the proprietor is either join ed as a plaintiff or added as a defendant.  
 
(4A) A licensee shall,  for the purpose of obtaining compensation for damage suffered by 
him, be entitled to intervene in infringement proceedings brought by the pr oprietor of the 
trade mark .* 
 
(5) A proprietor wh o 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 p roceedings.  
 
(6) In infringement proceedings brought by the proprietor of  a registered trade mark the 
Court appropriate co urt† shall take into account any loss suffered or likely to be suffere d by 
licensees;  and the Court appropriate court  may give such di rections as it thinks fit as to the 
extent to which the plaintiff is to h old the proceeds of any pecuniary remedy on behal f of 
licensees.  
 
(7) The provisions of this section shall apply in rel ation to an exclusive licensee if  or to the 
extent that the lice nsee has, by virtue of section 35 (1) , the rights and remedies of an assi gnee 
as if the licensee were the proprietor of th e registered trade mark.  
 
Exclusive licensee having rights and remedie s of assignee.  
 35.—(1) An exclus ive licence may provide that th e licensee shall have, to such extent as 
may be provided by the licence, the same rights and remedies in respect of matter s occurring 
after the grant of the licence as if the licence had been an assignment.  
 
(2) Where or to t he extent that provision is mad e as mentioned in subsection (1) , the licensee 
shall be entitled, subject  to the provisions of the licence and to the foll owing provisions of 
this section, to bring infringement proceedings, a gainst any person other than the proprietor, 
in the licensee's o wn name.  
 
(2A) The holder of an exclusive licence may bring infringement  proceedings if the proprietor 
of the trade mark, after formal notice,  does not himself bring infringement proceedings 
within an appropriate  period.‡ 
 
(3) Any such rights and remedies of an exclusive licensee shall be concurrent with those of 
the proprietor  of the registered trade mark; and references to the proprietor of a registered 
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018 
† Copyr ight and Other Intellectual Property L aw Provisions Act 2 019 
 Unof ficial consolidated version  
 
trade mark in the provisions of this Ac t relating to infringement shall be construed 
accordingly.  
 
(4) In an action brought by an exclusive licensee by virtue of this section a  defendant may 
avail himself of any defence which  would have been available to him if the action had been 
brought by th e proprietor of the registered tr ade mark.  
 
Exercise of concurre nt rights.  
 36.—(1) Where proceedings for infringement of a registered tr ade mark brought by the 
proprietor or an exclusiv e 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 ac tion unless the other is either joined as a plaintiff or added as a de fendant; but this 
subsection does not affect the gra nting of int erlocutory relief on an application by a 
proprietor or exclusive licensee  alone. 
 
(2) A person who is added as a defendant  as mentioned in subsection (1)  shall not be liable 
for any costs in t he action unless he takes part in the proceedings.  
 
(3) Where an  action for infringement of a registered trade mark is brought which rela tes 
(wholly or partly) to an infringement in resp ect of which the proprietor and an exclusive 
licensee have or had conc urrent rights of action — 
(a) the Court appropriate court  shall i n assessing damages take into account — 
(i) the terms of the licence, and  
(ii) any pecuniary remedy already awarded or avai lable to either of them in 
respect of the infringement;  
(b) no account  of profits shall be directed if an award of damages has been ma de, or 
an account of profits has been directed, in favour of the other of  them in respect of the 
infringement; and  
(c) the Court appropriate court  shall, if an account of profits is directed, apportion the 
profits between them as the Court appropriate cour t considers just, subject to any 
agreement  between them.  
 
(4) The provisi ons of subsection (3)  apply whether or not the pr oprietor and the exclusive 
licensee are both parties to the action; an d if they are not both parties the Court appropriate 
court  may g ive such directions as it thinks fit as to the extent to whi ch the party to the 
proceedings is to hold the proceeds of any  pecuniary remedy on behalf of the other.  
 
(5) The proprietor of a reg istered trade mark shall notify any exclusive licensee who has a  
concurrent right of action before applying for an order und er section 20  ; and the Court 
appropriate court  may on the app lication of the licensee make such order under that section 
as it thin ks fit having regard to the terms of the licence.  
 
(6) The provi sions of this section shall have effect subject to any agreement to the c ontrary 
between the exclusive licensee and the pr oprietor.  
 
                                                 
* Copyright and Other Intellectual Property Law Provisions Act 2019  
 Unof ficial consolidated version  
 
 Application for Registered Trade Mark  
 
Application for reg istration.  
 37.—(1) An application for registration of a trade m ark shall be made to the Controller in 
such manner and containing such in formation as may be prescribed.  
 
(2) The applicat ion shall state that the trade mark is being used, by or with the cons ent of the 
applicant, in relation to the goods or services speci fied in the application, or that the applicant 
has a bona fide  intention that it should be so used.  
 
(3) The application s hall be subject to the payment of the appropriate fee or fees.  
 
Date o f filing.  
38.—(1) The date of filing of an application for regis tration of a trade mark is the date on 
which the prescribed documents are  furnished to the Controller by the applicant; an d if those 
documents are furnished on different days, the date of fili ng is the last of those days.  
 
(2) References in this Act to the  date of application for registration are to the date of filing of 
the ap plication. 
 
 
Classification of goods and services . 
39.(1) Goods and services shall be classified for the purposes of th e registration of trade 
marks according to a prescribed system o f classification; and every trade mark shall be 
registered in respect of particular goods or services or in respect of cla sses of goods or 
services.  
 
(2) Any question arising as to the class w ithin which any goods or services fall shall be 
determined by th e Controller, whose decision shall be final.* 
 
Designation and Classifica tion of goods and services  
39. (1) Goods and serv ices shall be classified for the purposes of the registration of trade  
marks in conformity with the Nice Agreement Concerning the Inte rnational Classification of 
Goods and Services for the Purposes of the Re gistration of Marks of 15 June 1957 (herein  
refer red 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 to enable the Controller and the pu blic, on that sole basis, 
to determine the extent  of the protection sought. † 
 
(3) For the purposes of subsection (2), the general indications included in the class headings 
of the Ni ce Classification or other general terms may be used, provided that they comply 
with the requisite standards of clarity an d precision referred to in this section.  
 
(4) The Controller shall rej ect an application in respect of indications or terms which are 
unclear or imprecise, where the applicant does not suggest an acceptable wording within a 
period set by the Controller to that effect.  
                                                 
* *S.I. No. 561 of 2018 European Union (Trad e Marks) Reg ulations 2018  
 Unof ficial consolidated version  
 
 
(5) The use of general terms, including the general indi cations of the class headings of the 
Nice Classification — 
 
(a) shall be interpreted as including all the goods or services clearly covere d by the 
literal meaning of the indication or ter m, and  
 
(b) shall not be interpreted as comprising a claim to goods or  services which cannot 
be so understood.  
 
(6) Where the applican t requests registration for more than one  class, the applicant shall — 
 
(a) group the goods and services according to the c lasses of the  Nice Classification,  
 
(b) precede each group by the numb er 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 servi ces 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 Class ification. 
 
(8) Any question arising as to the cl ass within which any goods or  services fall shall be 
determined by the  Controller, whose decision shall be final .* 
 
 Priority  
 
Claim t o priority of Convention application.  
40.—(1) A person who has duly filed  an application for protection of a trade mark in  a 
Convention country (in this Act referred to as a “ Convention applic ation ”), or the successor 
in title to such a person, has a right  to priority, for the purpose of registering the same trade 
mark under th is Act for some or all of the same goods or servi ces, for a period of six months 
from the date of filing of the first C onvention application.  
 
(2) If the application for registration under this Act is made within the period specified in 
subsection (1) — 
(a) the relevant date for the purposes of establishi ng which rights take precedence 
shall be the date of filing of the fir st Convention application, and  
(b) the registrability of the tra de mark shall not be affected by any use of the mark in 
the State in the period between that date and the date of the appl ication under this 
Act. 
 
                                                 
*  *S.I. No. 561 of 2018 European Union (Trade  Marks) Reg ulations 201 8 Unof ficial consolidated version  
 
(3) Any filing which in a Convention country is equivalent to a regular national filing, under 
its domestic l egislation or an international agreement, shall be treated as giving rise  to the 
right of priority; and for this purpose a  “regular national filing ” means a filing which is 
adequate to establi sh the date on which the application was filed in that country, irrespective 
of the outcome of the application.  
 
(4) A subsequent applica tion concerning the same subject as the first Con vention application, 
filed in the same Convention country, shall be co nsidered the first Convention application (of 
which the filing d ate is the starting date of the period of priority) if, at the time of th e 
subsequent application — 
(a) the previous applic ation has been withdrawn, abandoned or refused, without 
having been la id open to public inspection and without leaving any rights 
outstanding; and  
(b) it has not yet served as a basis for claiming a right of  priority; 
and in such a case the previous applic ation may not thereafter serve as a basis for 
claiming a right of prio rity. 
 
(5) Provision may be made by rules as to the manner of cl aiming a right to priority on the 
basis of a Convention application.  
 
(6) A right to priority arising as a result of a Con vention application may be assigned or 
otherwise transmitted, either w ith the application or independently; and the reference in 
subse ction (1)  to the applicant's successor in title shall be construed accord ingly. 
 
Claim to priority from other relevant ove rseas application.  
41.—(1) This section applies to any country or terr itory in relation to which the State has 
entered into a treaty, convention, arrangement or engagement for the reciprocal protection of 
trade marks.  
 
(2) The Government may by order make provision for conferring on a person or the 
successor in title to such  a person,* who has duly filed an application for protection of a trade 
mark in a country or territory to which this section applies a ri ght to priority, for the purpose 
of registering t he same trade mark under this Act for some or all of the same goods or  
services, for a specified period from the date of filing of tha t application.  
 
(3) In relation to a country or territory to which this s ection applies, an order under this 
section may m ake provision corresponding to that made by section 40  in relation to 
Convention countries or such other provision as appears to the G overnment to be appropriate.  
 
 Registration Procedure  
 
Examination of app lication. 
42.—(1) The Controller shall examine wh ether an application for registration of a trade mark 
satisfies the re quirements of this Act (including any requirements imposed by ru les); and in 
this section those requirements are referred to as “ the requ irements for registration ”. 
 
                                                 
* Patents Amendment Act 2006 ( 31/2006 ) 
 Unof ficial consolidated version  
 
(2) If it appears to  the Controller that the requirements for registration are not met, th e 
Controller shall inform the applicant and give the applicant a n opportunity, within such 
period as the Controller may specify, to make representations or to amend the application.  
 
(3) If the applicant fails to satisfy the Controller that the requirement s for registration have 
been met, or to amend the application so  as to meet them, or fails to respond before the end 
of the specified per iod, the Controller shall refuse to accept the ap plication.  
 
(4) If it appears to the Controller that the requirements for registration are met, the Controller 
shall accept the applic ation. 
 
Publication, opposition proceedings and observations.  
43.—(1) Whe n an application for registration has been accept ed, the Controller shall cause 
the application to be published in the Journal.  
 
(2) Any person may, within the prescribed time from th e date of the publication of the 
application in the Journal, give notice to the Controller of opposition to the registrati on; and  
opposition to the registration on the grounds provided for in section 10 and  any such notice shall be 
given in writing in the prescribed manner, and shall include a statement of the grounds of 
opposi tion. 
 
(2A) ( a) A notice of opposition under subs ection (2) may be filed on the basis of one or more 
earlier trade mark s or other earlier rights, provided that they all belong to the same 
proprietor.  
 
(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 which  
the earlier rights are protected or applied for, and m ay be directed against part or the totality 
of the goods or services in r espect of which the contested mark is applied for . 
 
(2B) At any stage following the commencement of opposition proceedi ngs, the parties shall 
be granted, at their joint request, a sta y in 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 settlement  
between the opposing party and the applicant. ”, 
 
(3) Where an application has been published in the Journal, any person may, at any time 
before the registration of the trade mark, ma ke observations in writing to the Controller as t o 
whether the trade mark should be registered; and the Controller shal l inform the applicant of 
any such observations.  
 
(3) Where an a pplication has been published in the Journal, any  natural or legal person  and 
any group or body representing manufacturers , producers, suppliers of services, traders or 
consumers may, at  any t ime before the registration of the trade mark, make observations* 
in writing to the Controller explaining on which grounds the trade  mark  should not be 
registered; and the Controller sha ll inform the  applicant  of any such observations.† 
 
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks ) Regulatio ns 2018  
 Unof ficial consolidated version  
 
(4) A person who m akes observations as mentioned in subsection (3)  shall not there by 
become a party to the proceedings on the application . 
 
(4) Persons and  groups or bodies who make observations under sub section (3) shall not be a 
party to the proceedings on the application . 
 
Non-use as defence in opposition proceedings  
43A. (1) In oppo sition proceedings pursuant to section 43(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 must 
have been put to genuine use as provided for in section 16A had expired, at the r equest  
of the applicant, the proprietor of the earlier trade mark who has  given notice of opposition 
shall furnish proof — 
 
(a) that the earlier trade mark has been put to genuine use during th e 5 year period 
preceding the filing date or date of priority of  the later trade mark, or  
 
(b) that proper reasons for non -use existed.  
 
(2) In the absence of proof referred to in subsec tion (1), the opposition shall be rejected.  
 
(3) If the earlier trade mark has been used in relation to only part of the goods or serv ices for 
which it is registered, it shall, for the purpose of the examina tion of the opposition as 
provided for in subsect ion (1), be deemed to be registered in respect of that part of the goo ds 
or services only.  
 
(4) Subsections (1), (2) and (3) shall als o apply where the earlier trade mark is an European 
Union trade mark and the genuine use of the European Union trade mark shall be determined 
in accordance with Article 18 of the European Unio n trade mark regulation.* 
 
Withdrawal, restriction or amendment of application.  
44.—(1) An applicant may at any time by notice in writing  withdraw his application or 
restrict the goods o r services covered by the application; and, if the application has bee n 
published in the Journal, any withdrawal or restriction of the  application shall also be 
published in the Journal.  
 
(2) Any such withdr awal as is mentioned in subsection (1)  shall be i rrevocable after the 
expiry of three months from the date of notice of  the withdrawal.  
 
(3) In a case not falling within subsection (1 ), an application may be amended, at the request 
of the applicant, so lon g as the amendment does not substantially affect the identity of the 
trade mark or extend the goods or services covered  by the application and, in particular, an 
amendment may be made  (subject to that qualification) to correct — 
(a) the name or address of t he applicant;  
(b) errors of wording or of copying ; or 
(c) obvious mistakes.  
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks ) Regulatio ns 2018  
 Unof ficial consolidated version  
 
(4) Provision shall be made by rules for t he publication of any amendment which affects the 
representation of the trade mark, or the goods or services covered by the application, and for 
the making of objections by any person cl aiming to be affected by it.  
Registration.  
45.—(1) Where an applicati on has been accepted and — 
(a) no notice of opposition has been giv en within the period referred to in section 43 
(2), or 
(b) all oppositi on proceedings have been withdrawn or decided in favour of the 
applicant,  
the Controller shall register the trade mark unless it appears to him, having regard to 
matters coming to his n otice since accepting the application, that it was accepted in 
error.  
 
(2) A trade mark shall not be registered unless a ny fee prescribed for the registration has been 
paid within the prescr ibed period and, if the fee has not been so paid, the application shall be 
deemed to be withdrawn.  
 
(3) A trade mark when registered shal l be registered as of the date of filing of the a pplication 
for registration; and that date shall be deemed for the pur poses of this Act to be the date of 
registration.  
 
(4) On the regi stration of a trade mark the Controller shall publish the registration in the 
Journal and issue to the applicant a certi ficate of registration.  
 
(5) The registration procedure shall be regar ded as completed on the date of publication 
under subsection (4) ; and that date shall be entered in the register.  
 
Registration: suppleme ntary provisions.  
46.—(1) Provision may be made b y rules as to — 
(a) the division of an application for the registration  of a trade mark into several 
applications, each having the same f iling date as the original application;* 
 
(a) the division of an applicatio n for the registration of a trade mark and for th e     
division of a registration of a trade mark into several applicat ions or registrations, 
each having the same filing date as the ori ginal application;† 
(b) the merging of separate applications or registr ations; and  
(c) the registration of a series of t rade marks in one registration.  
 
(2) A “series of trade marks ” means a  number of trade marks which resemble each other as 
to their mater ial particulars and differ only in respect of matter of a non -distincti ve character 
which does not substantially affect the identity of the trade mark.  
 
Duration, Renewal and Alteration of R egistered Trade Mark  
  
Duration of registration.  
47.—(1) A trade m ark shall be registered for a period of ten years from the date of 
registration. 
                                                 
* *S.I. No. 5 61 of 2018 Euro pean Union (Trade M arks) Regulations 2018  
 Unof ficial consolidated version  
 
 
(2) Registration may be renewed in acc ordance with section 48  for further periods of ten 
years.  
 
Renewal of registration.  
48.—(1) Subject to payment of the prescribed renewal  fee, the registration of a trade mark 
may be renewed at the request of  the proprietor.  
 
(1A) Where the request is submi tted or the fees paid in respect of only some  
of the goods or services  for which the trade mark is registered, registration shall  
be ren ewed for those goods or services only.* 
 
(2) Provision shall be made by  rules for the Controller to inform the proprieto r of a registered 
trade mark, before the expiry of the registration, o f the date of expiry and the manner in 
which the registration may be renewed.  
 
(3) Subject to subsection (4) , a request for renewal must be made, and the prescribed renewal 
fee paid, bef ore the expiry of the registration.  
  
(4) If subsection (3)  is not com plied with, a request for renewal may be made and the fee 
paid wit hin such further period (of not less than six months) as may be prescri bed; in which 
case the prescribed additional rene wal fee must also be paid within that period.  
 
(5) A term of renewal s hall take effect from the expiry of the previous registration.  
 
(6) If the registration is not renewed in accordance with the preceding p rovisions, the 
Controller shall remove the trade mark from the register; but provision may be made by rules 
for the res toration of the registration of a trade mark which has been remove d from the 
register, subject to such conditions (if any) as may be pres cribed. 
  
(7) The renewal, removal or restoration  of the registration of a trade mark shall be published 
in the Journal . 
 
Alteration of registered trade mark.  
49.—(1) The proprietor of a registered trade mark may apply in the prescribed manner to the 
Contr oller for leave to add to or alter the trade mark  in any manner which does not 
substantially affect its identity; and t he Controller may refuse leave or grant it on such terms 
and subje ct to such limitations as the Controller thinks fit.  
 
(2) In any case w here it appears to the Controller expedient to do  so, the Controller may 
cause an application under subsection (1)  to be advertised in the Journal.  
 
(3) If, within the prescribed time f rom the date of the advertisement of an application under 
subsection (2 ), any person gives notice to the Controller in t he prescribed manner of 
opposition to the application, the Controller shall, after hearing the parties if so required, 
decide the matter . 
 
                                                 
* *S.I. No. 561 of 2018 European Union (Trade  Marks) Reg ulations 2018  Unof ficial consolidated version  
 
(4) Where leave is granted as mentioned in subsection (1)  and the tr ade mark concerned, in 
its altered form, has not already been advertised in an advertisement of the application under 
subsection (2) , the trade mark, in its altered form, shall be adver tised in the Journal.  
 
 Surrender, Revocation and Invalidity  
 
Surrender  of registered trade mark.  
50.—(1) A registered t rade mark may be surrendered by the proprietor in respect of some or 
all of the goods or services for which it is registered.  
 
(2) Provi sion may be made by rules — 
(a) as to the manner and effect of a surrend er; and 
(b) for protecting the interests of other  persons having a right in the registered trade 
mark.  
 
Revocation of r egistration.  
51.—(1) The registration of a trade mark may be revok ed on any of the following grounds — 
(a) that, within the period of five  years following the date of publication of the 
registration, the trade mark has not been put to genuine use in the Sta te, by or with the 
consent of the proprietor, in relation to the g oods or services for which it is registered, 
and there are no proper re asons for non -use; 
(b) that such use has been sus pended for an uninterrupted period of five years, and 
there are no pro per reasons for non -use; 
(c) that, in consequence of acts or inact ivity of the proprietor, it has become the 
common name in the trade for  a product or service for which it is registered;  
(d) that, in consequence of the use made of it by or with the consent  of the proprietor 
in relation to the goods or services for which it is registered, it is liable to mislead the 
public, particularly as t o the nature, quality or geographical origin of t hose goods or 
services.  
 
 
 
(2) For the purposes of subsection (1) , use of a trade mark includes use in a form differing in 
elements whic h do not alter the distinctive character of the mark in the form in whi ch it was 
*†registered,  in the form in which it w as registered, regardless of whether or not  the trade 
mark in the form  as used is also registered in the name of the proprietor  ‡and use  in the State 
includes affixing the trade mark to goods or to the packa ging of goods in the State solely for 
export purp oses.  
 
(3) The registration of a trade mark shall not be revoked on th e ground mentioned in 
paragraph (a)  or (b) of subsection (1)  if such use as is referred to in that paragraph is 
commenced or resumed afte r the expiry of the five year period and before t he application for 
revocation is made; but, for this purpose, any such  commencement or resumption of use 
occurring after the expiry of t he five year period and within the period of three months before 
the ma king of the application shall be disregarded unle ss preparations for the commencement 
or resumption began before the pr oprietor became aware that the application might be made.  
 
                                                 
 
 
‡ *S.I. No. 561 of 2018  European Union (Trade  Marks) Regulations 2018  Unof ficial consolidated version  
 
(4) An application for revocation may be made by any person, and may be made e ither to the 
Controller or to the Court  High Cour t*, except that — 
(a) if proceedings concerning the trade mark in quest ion are pending in the Court  
High Court , the application must be m ade to the Court  High Court ; and  
(b) if in any other case the applicati on is made to the Controller, he may at  any stage  
of the proceedings refer the application to the Court  High Court . 
 
(5) Where grounds for revocation exist in respect of only some of th e goods or services for 
which the trade mark is registered, revocation shall relate to those goods or services only.  
 
(6) Where the registration of a trade mark is revoked to any extent, the  rights of the 
proprietor shall be deemed to have ceased to that e xtent as from — 
(a) the date of the application for revocation; or  
(b) if the Controller or the Court  High Court† is sati sfied that th e grounds for 
revocation existed at an earlier date, that  date.  
 
(7) Revocation of a trade mark shall be entered in the reg ister and the Controller shall publish 
the revocation of a trade mark i n the Journal.  
 
Grounds for invalidity of registr ation.  
52.—(1) The registration of a trade mark may be declared invali d on the ground that the trade 
mark was registered in breach of section 8  or any of the provisions referred to in that section; 
but where  a trade mark was registered in breach of subsect ion (1) (b), (c) or (d) of that 
section, it shall not be declared inva lid if, in consequence of the use which has been made of 
it, it has after registration acquired a distinctive character   it has before th e date of  
application for a declaration of invali dity, acquire d a distinctive character in relation to the 
goods or ser vices for which it is registered.  
 
(2) The registration of a trade  mark may be declared invalid on the grounds — 
 
(a) that there is an ear lier trade mark in relation to which any of the c onditions set  out in 
subsections (1)  to (3) of section 10  obtains, or  subsections (1) to (3A) of section 10 obtains , 
or”, 
 
(b) that ther e is an earlier right in relation to which the condition set out in paragraph (a)  or 
(b) of subsection (4)    paragraph ( a), (b) or ( c) of subsection (4)  of that section is satisfied,  
unless the proprietor of that earlier trade mark or earlier right has con sented to the 
registration.  
 
(c) that the trade mark was registered in brea ch of section 8(4)( a) and section 9, or  
 
(d) that the  trade mark w as registered in breach of section 10(5A),”‡ 
 
(2A) An app lication for a declaration of invalidity on the basis of an earlie r trade mark shall 
not succeed at the date of application for invalidat ion if it would not have been successful at 
the filing date or  the priority date of the later trade mark for any of the  following reasons:  
  
                                                 
*  Copyright and Other Intellectual Property Law Provisions Act 2019  
† Copyright and Othe r Intellectual Property La w Provisions Act 2019  
‡ *S.I. No. 561 of 2018 Eur opean Union (Trade Marks) Re gulations 20 18 Unof ficial consolidated version  
 
(a) the earlier trade mark, liable to be dec lared invalid pursuant  to section 8(1)( b), (c) 
or (d), had not yet acqu ired a distinctive  character as referred to in se ction 8(1);  
 
(b) the application for a declaration of invalidity is ba sed on  section 10(2) and the 
earlier trade mark had not become  sufficiently distinctive to support a finding of 
likelihood of  
confusion w ithin the meaning of section 10(2);  
 
(c) the appl ication for a  declaration of invalidity is based on  section 10(3) and (3A) 
and the earlier trade mark had not  yet acquired a reputation within the meaning of 
section  10(3) and (3A).  
 
(2B) An application for a declaration of invalidity may be filed on  the b asis of one o r more 
earlier rights, provided they all belong to the sa me proprietor.  
 
(3) An application for a declaration of invalidity  may be made by any person, and may be 
made either to the Controller or  to the Court  High Court*, except that — 
(a) if proceedings concerning the trade mark in question are pending in the Court 
High Court , the application must be made to the Court  High Cour t; and  
(b) if in any other case the application is made to the Controll er, the Controller may at 
any stage of the procee dings refer the application to the Court  High Court . 
 
(4) In the case of bad faith in the registration of a trade mark, the Controller m ay apply to the 
Court  High Court  for a declaration of the invalidity of  the registration.  
 
(5) Where the grounds of inva lidity exist in respect of only some of the goods or services for 
which the trade mark is registered, the trade mark shall be declared i nvalid as regards those 
goods or services only.  
 
(6) Where the registra tion of a trade mark is declared invalid to any e xtent, the registration 
shall to that extent be deemed never to have been made, provided that this shall not affect 
transactions past an d closed.  
 
Non-use as defence in proceedings seeking a declaration of i nvalidity  
52A. (1) In proceedings for a declarati on of invalidity based on a registered trade mark with 
an earlier fil ing date or priority date, if the proprietor of the later trade mar k so requests, the 
proprietor of the earlier trade mark shall furnish p roof that - 
 
(a) during the 5 year period preceding th e date of the application for a declaration of 
invalidity, the earlie r trade mark has been put to genuine use, as provided for in 
sectio n 16A, in connection with the goods or services in respect of which it is 
registered and which are cited as justificatio n for the application, 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 co mpleted for not less than 5 years.  
                                                 
* Copyright and Other In tellectual Property Law Provisions Act 2019  
† *S.I. No.  561 of 2018 European Union (Trade Mar ks) Regulations 201 8 Unof ficial consolidated version  
 
 
(2) Where, at  the filing date or date of priority of the later trade  mark, the 5 y ear period 
within which the earlier trade mark was to  have been put  to genuine use, as provided for in 
section 16A, had  expired, the propr ietor of the earlier trade mark shall, in additio n to 
the proof required under subsection (1), furnish proof that the earlier  trade mark was put to 
genuine use during the 5 year period preceding  the filing date or date of priority of the later 
trade mark, or that proper reasons for non -use existed.  
 
(3) In the absence of the proof referred to in subsections (1) and (2), a n application for a 
declaration of invalidity on the basis of an ea rlier trade mark shall be rejected.  
 
(4) If the earlier trade mark has been used in accordance with section 16A in relat ion to only 
part of the goods or services for which it is registered,  it shall, for the purpose of the 
examination of the application fo r a declaration of invalidity, be deemed to be registered in  
respect of  that part of the goods or services only.  
 
(5) Su bsections (1) to (4) of this section shall also apply where the  earlier trade mark is a 
European Union trade mark and genuine use  of the  European Union trade mark shall be 
determined in accordance  with Artic le 18 of the European Union trade mark regulation .* 
 
Effect of acquiescence.  
53.—(1) Where the proprietor of an earlie r trade mark or other earlier right has acquiesced 
for a continuous  period of five years in the use of a registered trade mark in the Stat e, while 
being aware of that use, the proprietor shall no longer be entitled, on the basis of that earlier 
trade mark or other right — 
(a) to apply for a declaration that the registratio n of the later trade mark is invalid, or  
(b) to oppose the use of the l ater trade mark in relation to the goods or servi ces in 
connection with which it has been so used,  
unless the registra tion of the later trade mark was applied for in bad faith.  
 
(2) Whe re subsection (1)  applies, the proprietor of the later trade mark shall  not be entitled to 
oppose the use of the earlier  trade mark or, as the case may be, the exploitation of the earlier 
right, notwithstanding that the earlier trade mark or right may no l onger be invoked against 
the proprietor's later trade mark.  
 
 Collectiv e Marks 
 
Collective marks.  
54.—(1) A collective m ark is a mark distinguishing the goods or services of members of the 
association which is the proprietor of the mark from those of other  undertakings.  
 
(1A) Associations of manufacturers, producers, supplier s of services or traders, which, under 
the terms of the law governing them, have the capacity in their own name to hav e rights and 
obligations, to make contracts or accomplish other leg al acts, and to sue and be sued, as well 
as legal persons governed by p ublic law, may apply for collective marks.† 
 
                                                 
 
† *S.I.  No. 561 of 2018 E uropean Union (Trade Marks) Regulations 2018  Unof ficial consolidated version  
 
(2) The provisions of this Act apply to collective marks subject to the pr ovisions of the First 
Schedule  . 
 
  
Certification Marks  
 
Certifica tion marks.  
55.—(1) A certification mark is a mark indicating that the g oods or services in connection 
with which it is u sed are certified by the proprietor of the mark in respect of origin,  material, 
mode of manufacture of goods or performance of services , quality, accuracy or other 
characteristics.  
 
(2) The provisions of thi s Act apply to certification marks subject to the  provisions of the 
Second Schedule . 
 
 
 PART III  
 
Community Trade Mark s and International Matters  
 
 Community Trade Marks  
 
Meaning of “ Community trade mark ” and “ Community Trade Mark Regulation ”. 
56.—In this Act— 
(a) “Community trade mark ” has the meaning g iven by Article 1 (1) of the 
Community Trade Mark Regulation; and  
(b) “the Community Trade Mark Regulation ” means Council Regulation (E C) No. 
40/94 of 20 December, 1993 on the Community trade mark.  
 
Meaning of ‘European Union trade mark’, ‘European Union T rade Mark Regulation’ and 
‘Directive’* 
 
56. (1) In this Act — 
 
(a) ‘Eu ropean Union trade mark’ has the meaning given by  Article 1 (1) of  the European 
Union trade mark regulation;  
 
(b) ‘European Union trade ma rk regulation’ means regulation  (EU) 2017/1001 of  the 
European Parliament and of the  Council of 14 June 20173 on the E uropean Union trade  
mark (codification);  
 
(c) ‘Directive’ means Di rective (EU) 2015/2436 of the European  Parliament and of the 
Council of 16 December 20154 to  approximate the laws of the Member States relating to 
trade  marks (Recast).  
 
(2) A word or expres sion that is used in this Act and that is also  used in the EU trad e mark 
regulation or the Directive shall have the  same meaning in this A ct as it has in the EU trade 
mark regulation or t he Directive .* 
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  Unof ficial consolidated version  
 
 
 
Power to make provision in connection with Community  Trade Mark Regulation.  
57.—(1) The Minister may by regulations ma ke such provision as he considers appropriate in 
connection with the ope ration of the Community Trade Mark Regulation.  
 
(2) Provision may, in particular, be made with respect to — 
(a) the fil ing of applications for Community trade marks through the Patents Office; 
(b) the procedures for determining a posteriori  the invalidity, or liability to 
revocation, of the registration o f a trade mark from which a Community trade mark 
claims seniority;  
(c) the conversion of a Community trade mark or an application  
for a Community trade mark into an application for registration under this Ac t; and 
(d) the designation of Courts in the State  having jurisdiction over proceedings arising 
out of the Community Tr ade Mark Regulation.  
 
(3) Without prejudice to the generality of subsection (1) , provision may be made by 
regulations under this section m aking in relation to the list of professional rep resentatives 
maintained in pursuance of Article 89 of the Community T rade Mark Regulation, and 
persons on that list, provision correspo nding to that made by, or capable of being made 
under, sections 84  to 90 in relation to the register of trade mark agents  and registered trade 
mark agents.  
 
(4) Section 24  (remedy for ground less threats of infringement proceedings) and Part VI  
(offences) s hall apply in relation to a Community trade mark as they apply in relati on to a 
registered trade mark.† 
 
 
  
The Madrid Pr otocol: International Registration  
 
The Madrid Protocol.  
58.—In this Act— 
“the Madrid Protocol ” means the Protocol relating to the Madr id Agreement concerning the 
International Registration of Marks, adopted  at Madrid on 27th June, 1989;  
“the International  Bureau ” has the meaning given by Article 2 (1) of that Protocol; and  
“international trade mark ” means a trade mark which is entitled t o protection in the State 
under that Protocol.  
 
 
Power to make provision  giving effect to Madrid Protocol.  
59.—(1) The Mi nister may by regulations make such provision as he considers appropr iate 
for giving effect in the State to the provisions of the Madri d Protocol.  
 
(2) Provision may, in particular, be made with respect to — 
(a) the filing of applications for international registrations through the Patents Office 
as office of origin;  
                                                                                                                                                        
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  
 Unof ficial consolidated version  
 
(b) the procedures to be followed where the basic application or registra tion in the 
State fails or ceases to be in force;  
(c) the procedures to be followed where the Patents Office receives fro m the 
International Bureau a request for extension of protection to t he State;  
(d) the effects of a successful request for extension of  protection to the State;  
(e) the transformation of an international reg istration or an application for an 
international registration into a national application for registration;  
(f) the co mmunication of information to the International Bureau;  
(g) the pa yment of fees and amounts prescribed in respect of applications for 
international registrations, extensions of protection  and renewals.  
 
(3) Section 24  (remedy for groundless threats of infr ingement proceedings); and Part VI  
(offences) shall apply in relat ion to an international trade mark as they apply in relation to a 
regist ered trade mark.  
 
 The Paris Convention: Suppleme ntary Provisions  
 
The Paris Convention.  
60.—(1) In this Act — 
(a) “the Paris Convention ” means the Paris Convention for the Protection o f 
Industrial Property of March 20th, 1883, as amended or supplemented by  any 
protocol to that Convention which is for the  time being in force in the State; 
and 
(aa)  “Agreement establishing the World Trade Organisation” means the 
Agreement establishing the  World Trade Organisation done at Marrakesh on 
15 April 1994, as amended  or supplemented by any protocol to that 
Agreemen t which is for the time being in force in the State;**  
(b) a “Convent ion country ” means a country, other than the State, which is a 
party to that Convention  the Paris Convention or the Agreement establishing  
the World Trade Organisation .  
 
(2) The Minister  may by order make such amendments of this Act and rules made under t his 
Act as appear to the Minister appropriate in consequence of a ny revision or amendment of 
the Paris Convention or the Agreement establi shing the World Trade Organisation  after the 
passing of this Act.  
 
Protection of well -known trade marks: Article 6bis  
61.—(1) References in this Act to a trade mark which is entitled to protection under the Paris 
Convention or the Agreement establishing th e World Trade Organisation  as a well -known 
trade mark are to a mark which is well known in the State as being the mark  of— 
(a) a national of a Convention country, or  
(b) a person who is domiciled in, or has a real and effective industrial or commercial 
establishment in, a Convention country,  
whether or n ot that person carries on business, or has any goodwill, in the State ; and 
references to the proprietor of such a mark shall be constr ued accordingly.  
 
                                                 
*  Patents Amendment Act 2006 (31/2006 ) Unof ficial consolidated version  
 
(2) Subject to section 53  , the proprietor of a trade m ark which is entitled to protection under 
the Par is Convention or the Agreement establishing the World Trade Organisat ion* as a well -
known trade mark shall be entitled to restrain by injunction the use in the State of a trade 
mark which, or the essential p art of which, is identical or similar to the prop rietor's mark, in 
relation to identical or similar goods or services,  where the use is likely to cause confusion.  
 
(3) Nothing in subsection (2)  shall affect the continuation of any bona fide  use of a trade 
mark begun before the commencement of this sectio n. 
 
National emblems &c. of Convention countries: Article 6ter  
62.—(1) A trade mark which consists of or contains the flag of a Conven tion country shall 
not be registered without the authorisation of the com petent authorities of that country, unless 
it app ears to the Controller that use of the flag in the manner proposed is  permitted without 
such authorisation.  
 
(2) A trade mark which co nsists of or contains the armorial bearings or any other state 
emblem of a Convention country which is protected under the  Paris Convention or the 
Agreement establishing the World Trade Organ isation shall not be registered without the 
authorisation of the competent authorities of that country.  
 
(3) A trade mark which consists o f or contains an official sign or hallmark adopte d by a 
Convention country and indicating control and warranty shall n ot, where the sign or hallmark 
is protected under the Paris Conve ntion or the Agreement establishing the World Trade 
Organisation , be regi stered in relation to goods or services of the sa me or a similar kind as 
those in relation to which it indicates contr ol and warranty, without the authorisation of the 
competent autho rities of the country concerned.  
 
(4) The provisions of this section as t o national flags and other state emblems and offi cial 
signs or hallmarks apply equally to anything which, from a heral dic point of view, imitates 
any such flag or other emblem, sign o r hallmark.  
 
(5) Nothing in this section prevents the registration of a t rade mark on the application of a 
national of a c ountry who is authorised to make use of a state emblem or official si gn or 
hallmark of that country, notwithstanding that it is simila r to that of another country.  
(6) Where, by virtue of this section, the a uthorisation of the competent authorities of a 
Convention country is or would be required for the registration of a tr ade mark, those  
authorities shall be entitled to restrain by inj unction any use of the mark in the State without 
their authorisation.  
 
Emblems &c. of certain international organisations:  Article 6ter.  
63.—(1) This section applies to — 
(a) the armorial bea rings, flags or other emblems, and  
(b) the abbreviations and names , 
of international intergovernmental organisations of which one or more Convention 
countries are members.  
 
(2) A trade ma rk which consists of or contains any such emblem, abbreviation or nam e which 
is protected under the Paris Convention  or the Agreement e stablishing the World Trade 
                                                 
 Unof ficial consolidated version  
 
Organisation* shall not be registered withou t the authorisation of the international 
organisa tion concerned, unless it appears to the Controller that the use of t he emblem, 
abbreviation or name in the manner proposed — 
 
 
 
(a) is not such as to suggest to the public that a connection exists between th e 
organisation and the trade mark; or  
(b) is not likely to mislead the public as to the existence of a connection betw een the 
user and the organisation.  
 
(3) The provisions of this sec tion as to emblems of an international organisation apply 
equally to any thing which, from a heraldic point of view, imita tes any such emblem.  
 
(4) Where, by virtue of this section, the autho risation of an international organisation is or 
would be required for the registration of a trade mark, that organisation shall be entitle d to 
restrain by injunction any use of the mark i n the State without its authorisation.  
  
(5) Nothing in this section affects the right of a person whose bona fide  use of the trade mar k 
in question began before 9th June, 1967 (when the relevant provisions of the Paris 
Convention entered into force in rel ation to the State).  
 
Notification under Article 6ter of the Conventi on. 
64.—(1) For the purposes of section 62  state emblems of a Conv ention country (other than 
the national flag) and official signs or hall marks shall be regarded as protected under the 
Paris Convention only if, or to the extent that — 
(a) the country in que stion has notified the State in accordance with Article 6ter (3) o f 
the Convention that it desires to protect the emblem, sign or hallmark ; 
(b) the notification remains in force; and  
(c) the State has not objected to it in accordance with Article 6ter (4) or any such 
objection has been withdrawn.  
 
(2) For the purposes of  section 63  , the emblems, abbreviations and names of an international 
organisation shall be regarded as protected under the Paris Convention only if, or to the 
extent that — 
(a) the organisa tion in question has notified the State in accordance with Article  6ter 
(3) of the Convention that it desires to protect that emblem, abbr eviation or name;   
(b) the notification remains i n force; and  
(c) the State has not objected to it in accordance with Article 6ter (4) or any such 
objection has been withdrawn.  
 
(3) Notification under Article 6ter (3) of the Paris Convention shall have eff ect only in 
relation to applications for registra tion made more than two months after the receipt of the 
notification.  
 
(4) The Controller shall keep and make available for public insp ection by any person, at all 
reasonable hours and free of charge, a list  of— 
(a) the state emblems and official signs or hallmarks, and  
                                                 
* Patents Amend ment Act 2006 (31/2006 ) Unof ficial consolidated version  
 
(b) the emblems, abbreviations and names of internatio nal organisations,  
which are for the time being protected under th e Paris Convention by virtue of notification 
under Article 6ter (3).  
 
(5) A reference in this section to Article 6 ter of the Paris Convention shall be read as a 
reference to that Article as applied by the Agreement establishing the World Trade 
Organisation*.  
  
Acts of agent or representative: Article 6septies.  
65.—(1) The fol lowing provisions apply where an application for registration of a trade mark 
is made by a person who is an agent or r epresentative of a person who is the proprietor of the 
mark in a C onvention country and the application is made without the proprietor's 
authorisation.  
 
(2) Where the proprietor opposes t he application, registration shall be refused.  
 
(3) Where the applica tion (not being so opposed) is granted, the proprietor may — 
(a) apply for a declaration of the invalidity of the registration; or  
(b) apply for the rectification of the register so as to substitute the proprietor's name 
as the proprietor of the registered trade mark.  
 
(4) The proprietor may (notwithstanding the rights co nferred by this Act in relation to a 
registered trade mark) apply to the  Court High Court† to restrain by injunction any use of the 
trade mark in the State which is not authorised by the pro prietor . 
 
(5) Subsections (2) , (3) and (4) shall not apply if, or to the extent that, the agent or 
representative justifies his action.  
 
(6) An application under subsection (3) (a)  or (b) must be mad e within three years of the 
proprietor becoming aware of the registra tion; and no injunction shall be granted under 
subsect ion (4)  in respect of a use in which the proprietor has acquiesced for a  continuous 
period of three years or more.  
 
 
 
 
 
 
PAR T IV  
 
Admini strative Provisions  
 
The Register  
 
The register.  
                                                 
* Patents Amen dment Act 2006 (31/2006 ) 
† Copyright and Other Intellectual Property Law Provisions Act 2019  
 Unof ficial consolidated version  
 
66.—(1) The Controll er shall keep a Register of Trade Marks; and refere nces in this Act to 
registration (in particular, in the expression “ registe red trade mark ”) are, unless the context 
otherwis e requires, to registration in the register.  
 
(2) There shall be e ntered in the r egister in accordance with this Act — 
(a) registered  trade marks;  
(b) particulars of registrable transactions affecting a regis tered trade mark; and  
(c) such other matters as m ay be prescr ibed.  
 
(3) The register shall be kept in such form as may be prescrib ed, and provision shall in 
particular be made for — 
(a) public inspection of the register; and  
(b) the supply of certified or u ncertified copies of, or extracts from, entries i n the 
regist er. 
 
Rectification or correction of the register.  
67.—(1) Any person having a sufficient interest may apply for the rect ification of an error or 
omission in the register:  
Provided that an applica tion for rectification may not be made in respect  of a matter  affecting 
the validity of the registration of a trade  mark.  
 
(2) An application for rectification may be made either to  the Controller or to the Court  High 
Court*, except that — 
(a) if proceeding s concerning the trade mark in question are pendi ng in the Court 
High Court , the app lication must be made to the Court High Court ; and  
(b) if in any other case the application is ma de to the Controller, he may at any stage 
of the proceedings refer the appl ication to the Court  High Court . 
 
(3) Unless the Controller or the Court  High Court  otherwise directs, the effect o f rectification 
of the register is that the error or omission in q uestion shall be deemed never to have been 
made.  
 
(4) The Controller may (o f his own motion) correct any error made by him i n any entry in the 
Register but, before doing so, he shall give no tice of the proposed correction to any person 
who appears to him t o be concerned.  
 
(5) The Controller may, on request made in the prescribed manner by the proprietor of a 
registered trade ma rk— 
(a) enter any change in the proprietor's name or address as re corded in the register;  
(b) amend the specification of the goods i n respect of which a trade mark is 
registered, provided that the amendment does not in any way extend the rights given 
by th e existing registration of the trade mark; or  
(c) enter a disclaim er or memorandum relating to a trade mark which does not in any 
way extend the rights given by the existing registration of the trade mark.  
(6) The Controller may, on request made in the pre scribed manner by the licensee of a 
registered trade mark, enter a ny change in the licensee's name or address as recorded in the 
register. 
  
                                                 
* Copyright and Other Intellectual Property Law Provisions Act 2019  Unof ficial consolidated version  
 
(7) The Controller may remove from the register matter appearing t o him to have ceased to 
have effect.  
 
Adaptation of entries to new classification.  
68.—(1) Provision may be made by  rules authorising the Controller to do such things as the 
Control ler considers necessary to implement any amended or substituted classificat ion of 
goods or services for the purposes of the registration of trade marks.  
 
(2) Provision may, in particular, be  made for the amendment of existing entries on the 
register so as to accord with the new classification.  
 
(3) Any such power of amendment sha ll not be exercised so as to extend the rights co nferred 
by the registration, except where it appears to the Contro ller that compliance with this 
requirement would involve undue com plexity and that any extension would not be substantial  
and would not adve rsely affect the rights of any person.  
 
(4) The r ules may empower the Controller — 
(a) to require the proprietor of a registered trade mark, within such time as may be 
prescribed, to  file a proposal for amendment of the register; and  
(b) to cancel or refuse  to renew the registration of the trade mark in t he event of the 
proprietor failing to do so.  
 
(5) A proposal under  subsection (4) (a)  shall be advertised, and may be opposed, in su ch 
manner as may be prescribed.  
 
  
 
Powers and Duties of the Controller  
 
Power to require use of forms.  
69.—(1) The Controll er may require the use of such forms as he may direct for any purp ose 
relating to the registration of a trade mark or any other proc eedings before the Controller 
under this Act.  
 
(2) The forms, and any direc tions of the Controller with respect to their use , shall be 
published in the Journal.  
 
Information about applicatio ns and registered trade marks.  
70.—(1) After publication of an app lication for registration of a trade mark, the Controller 
shall on request provide a person with such information as may be prescribed and permit him 
to inspect such documents as may be pres cribed relating to the application or to any 
registered trade mark  resulting from it.  
 
(2) A request for the purposes of subsection (1)  must be made in the prescribed manner and 
be accompani ed by the appropriate fee (if any).  
 
(3) Before publication of an application for registration of a trade mark, documents or 
informa tion constituting or relating to the application shall not be published by the Controller 
or communicated by the Controller to any person except — 
(a) in such classes of case and to such exte nt as may be prescribed; or  Unof ficial consolidated version  
 
(b) with the consent of the applicant;  
but subject to the following provisions of this section.  
 
(4) Where a pers on has been notified — 
(a) that an application for  registration of a trade mark has been made, and  
(b) that the appl icant will if the application is granted bring proceedings against  that 
person in respect of acts done after publication of the application,  
that person may make a request under subsection ( 1) notwithstanding that the application has 
not been published and  that subsection shall apply accordingly.  
 
Exercise of discretiona ry powers by Controller.  
71.—Where any discretionary power is, by or under this Act, given to the Controller, that 
power sha ll not be exercised adversely to any applicant for or proprietor o f a trade mark or to 
any party in any proceedings before the Contr oller, without that applicant, proprietor or party 
being given an opportuni ty of being heard as regards the exercise of that  power.  
 
Costs and security for costs.  
72.—(1) The Controller may,  in any proceeding before him under this Act, order the 
payment to  any party of such costs (if any) as the Controller may consider reasonable  and 
direct how and by what party they are to be paid; and any such order may, by leave of the 
Court  High Court*, be enforced in the same manner as a judgment or order of the Court  High 
Court  to the same effec t. 
 
(2) Where, under this Act, a party who neit her resides nor carries on business in the State or 
in any other state which may be prescribed is a party to any pr oceedings before the 
Cont roller, the Controller or, in the case of  any appeal, the Court  High Court , may require 
that party to give security for the costs of the proceedings.  
  
(3) If a requ irement under subsection (2)  is not complied with, the Controller or the Court  
High Court , as may be appropriate,  may treat the proc eedings as abandoned.  
 
Evidence before the Control ler. 
73.—In subsection (1 ) of section 92 of the Patents Act, 1992 (which r elates to evidence in 
proceedings before the Controller under that  Act or any other enactment) after the words 
“before the Controlle r” there shall be inserted “ (including proceedings  under the Trade 
Marks Ac t, 1996) ”. 
 
 
Exclusion of liability in respect of official acts.  
74.—(1) The Controller shall not be taken to warra nt the validity of the registration of a trade 
mark under this Act  or under any treaty, convention, arrangement or en gagement to which 
the Sta te is a party.  
 
(2) The Controller shall not have  any liability by reason of, or in connection with, any 
examinati on required or authorised by this Act, or any su ch treaty, convent ion, arrangement 
or engagement, or any report or ot her proceedings consequen t on such examination.  
  
 
                                                 
* Copyright and Other Intellectual Property Law Provisi ons Act 2019  Unof ficial consolidated version  
 
(3) No proceedings shal l lie against an officer of the Controller in respect of any matt er for 
which, by virtue of this section, the Con troller is not lia ble. 
 
 
Content of Controller's annual report.  
75.—In the report on the execut ion of the provisions of this Act included in the  Controller's 
annual report, prepared in accordance with section 103 of the Patents Act, 1992 , there shall 
be in cluded a report o n the discharge of the Controller's functions in rel ation to the Madrid 
Proto col. 
 
 Legal Proceedings and Appeals  
 
Registratio n to be prima facie evidence of validity.  
76.—In all legal procee dings relating to a registered trade mark (inclu ding proceedings for 
rectification of the register) the registration of a person as proprietor  of a trade mark shall be 
prima facie  evidence of  the validity of the original registration and of any subsequent 
assignment or other transmission of it.  
 
Certifi cate of validity of contested registration.  
77.—(1) If, in proceeding s before the Court  High C ourt*, the validity of the registration of a 
trade mark is contested and it is found by the Court  High Court  that the trade mark is validly 
registered, the Court  High Court  may gi ve a certificate to that effect.  
 
(2) If the Court  High Court  gives such a ce rtificate and in sub sequent proceedings — 
(a) the validity of the registration is again questioned, and  
(b) the pro prietor obtains a final order or judgment in the proprietor's fav our, 
the proprietor shall be  entitled to his costs as between solicitor and c lient unless the Court  
High Court  otherwise direc ts. 
  
(3) Subsection (2)  does not extend to the costs of an appea l in any proceedings.  
 
Controller's appearance in court proceedin gs. 
78.—(1) In any proceedings before t he Court  High Court  (including an appe al) which 
involve or relate to — 
(a) the re vocatio n of the registration of a trade mark, or  
(b) a declaration of th e invalidity of the registration of a trade mark, or  
(c) the rect ification of the register, or  
(d) any other matter  in which the relief sought  would affect the register,  
the Controller  shall be entitled to appear and be heard, and shall appear if so direct ed by the 
Court  High Court . 
  
(2) Unless otherwise directed by th e Court  High Court , in any proceedings before the Court 
High Court  the Contro ller may instead of appearing submit to the Court  High Court  a 
statement in writing si gned by the Controller, givi ng particulars of — 
(a) any proceedings before the Controller in r elation to the matter in issue;  
(b) the grounds of any decision given by the Controller affect ing it;  
(c) the practice of the Patents Office in like cases; or  
                                                 
* Copyright and Other Intellectual Property Law Provisions Act 2019  Unof ficial consolidated version  
 
(d) such matters relevant to the  issues and within the Controller's knowledge as the 
Controller t hinks fit;  
and the statement shall be deemed to form part of the evidence in the proceedings.  
 
79.—(1) Unless otherwise provided by ru les of court, within the per iod of three months from 
the date of a decision of the Controlle r under this Act, an appeal sh all lie from the decision to 
the Court.  
 
(1) (a) Save as otherwis e provided by this Act and subje ct to paragraph ( b), except by leave 
of the Court  High Court , an appeal shall lie to the Court  High Court  from a decision of the 
Controller under this Act with in three months from the date of the decision.  
(b) Where a written statement of the gro unds of th e decision of the Controller, in the exercise 
of his discre tionar y power, has been requested in the prescribed manner and within the 
prescribed period by a par ty to the proceedings, the period of three month s shall begin on the 
date on which the written st atement is furnished to the party requesting it.*  
 
(2) On an app eal under this section — 
(a) the Controller shall be entitled to appear and be heard, and shall  appear if so 
directed by the Court  High Court†: and 
(b) the Court  High Court  may exercise any po wer which cou ld have been exercised 
by the Controller in the proc eedings from whic h the appeal is brought.  
 
(3) By leave of the Court High Court , an appeal fro m a decision of the Court  High Court  
under this section shall lie to the Supreme Court on a speci fied point of law.  
 
No award of cos ts to or against the Controlle r. 
80.—In any proceedings before the Co urts any court  under this  Act, the Controller shall not  
be awarded or be ordered to pay costs.  
 
 
 Rules  and Fees  
 
Power of Minister to make rules.  
81.—(1) The Minister may make rules — 
(a) for the p urposes of any provi sion of this Act authorising the making of rules with 
respect to  any matter; and  
(b) for presc ribing anything authorised or required by any pr ovision of this Act to be 
prescribed,  
and general ly for regulating practice and procedure unde r this Act.  
  
(2) Without prejudice to the generality of subsection ( 1), provision m ay, in particular, be 
made by rules under this section — 
(a) as to the manner o f filing of applications and other documents;  
(b) requiring and regulating the translation of documents and the fi ling and 
authentication of any translation;  
(c) as to the servic e of documents;  
(d) authorisin g the rectification of irregularities of procedu re; and 
                                                 
* Patents Amendment Act 2006 (31/2006 ) 
† Copyright a nd Other Intellectual Property Law Provisions Act 2019  Unof ficial consolidated version  
 
(e) prescribing time limits for anything required to be done in connection with any 
proceeding under this Act, and providing for the extension of any such limit (whether 
or not it has already expired) . 
 
Fees.  
82.—(1) There shall be charged by the C ontroller and paid in respect of applications and  
registration and other matters under this Ac t, such fees as may from time to time be 
prescribed by the Minister w ith the sanctio n of the Minister for Finance.  
 
(2) Provision may be made by rules to enable t he payment of a single fee in respect of two or 
more matters.  
 
(3) All fees charged by the Con troller under this s ection shall be collected and accounted for 
in su ch manner as sh all be determined by the Minis ter with the consent of the Minister for 
Finance . 
 
(4) The Public Offices Fees Act, 1879, shall n ot apply in respect of any fees payable under  
this section.  
 
PART  V 
 
Trade Mark Agents  
 
Authorised agent may act.  
83.—(1) Subject  to rules made under section 9 0 , whenever, under this Act, any act has to be 
done by or to any person in connection with the r egistration of a trade mark or any procedure 
relating to a regist ered trade mark, the act may be done by or to an agent — 
 
 
(a) who is authorised by that person  orally or in writing; and  
(b) who is a regist ered trade mark agent.  
(b) who is — 
(i) a register ed trade mark agent, or  
(ii) a person referre d to in subsection (4A ) of section 85 and  
the relevant provisions of that section with  regard to the person’s acting  as 
agent in the foregoing circumstances are c omplied with.”, and* 
  
(2) A person duly authorise d by another person under subsection (1)  to act as his registered 
trade mark agent may (subject to any provision t o the contrary i n any agreement between the 
agent and that person), on giving notice to the C ontroller and the other person, cease to act as 
registered trade mark agent for the other pers on. 
 
(2) A person ref erred to in paragraph ( b)(i) or (ii) of subsecti on (1) who is du ly authorised by 
another perso n under that section to act as his agent may (s ubject to any provision to the 
                                                 
* S.I. No. 6 22 of 2007 European Communities (Provision o f services concerning Trade  Marks and Industrial 
Designs Regulations  2007 
*S.I. No. 47 of 2016 European Communities (Trade Mark Agent s) Regulations 2016  
 
 Unof ficial consolidated version  
 
contrary in any ag reement between the person so authorised and the other person), on  giving 
notice to the Controller and the other p erson, cease to act as agent for the other per son*.  
 
Register of Trade Mark Agents.  
84.—The Register which, immediately before the commenceme nt of this section, was known 
as the Register  of Trade Mark Agents  shall continue to be known as such and to be 
maintained by the Controller; and in this Part — 
(a) “the Register ” means the Register of Trade Mark Agents;  
(b) “registered trade mark agent ” me ans a person whose name is entered in the 
Register; and  
(c) “regis tration ”, in relation to a person who is or has been a registere d trade mark 
agent, means the entry of that person's name in the Register.  
 
Business to be carried on only by registered trade  mark agents &c.  
85.—(1) Subject to the provi sions of this section , an individual who is not a registered trade 
mark agent shall n ot— 
(a) carry on a business (o therwise than in partnership) under any name or  other 
description which contains the words “ registered trade mark agent ”, or 
(b) in the cours e of a business other wise describe or hold himself out, or permit 
himself to be descr ibed or held out, as a registe red trade mark agent.† 
  
(1) Subject to the prov isions of the section - 
 
(a) a person established in the State shall not carry on the business  of acting as a     
trade  mark agent in the State unless that  person is for the time  being registered in the     
Register;  
(b) a person acting for gain shall not practise, describe himself  or hold himself out as    
a  registered trade  mark agent  or trade   mark agent, or permit  himself to be so 
described or held  out, unless that person is for the time being registered in the  
Register . 
 
 
(2) A partnership shall not — 
(a) carry on a business under any name or other d escription which contains the words 
“register ed trade mark agent ”, or 
(b) in the course of a business otherwise de scribe or hold itself out or permit itself to  
be described or held out, as a firm of register ed trade mark agents,  
unless all the partners are  registered trade mark agents or the partners hip satisfies such 
conditions as may be prescribed for the purposes o f this section.  
  
(3) A body corporate shall not— 
(a) carry on a business (otherwise than in partnership) under any name or other 
description which contains the words “ registered trade ma rk agent ”, or 
(b) in the course of a business otherwise describe or h old itself out,  or permit itself to 
be descri bed or held out, as a registered trade mark agen t, 
                                                 
 
† *S.I. No. 47 of 2016 European Communities (Trade Mark Agent s) Regulations 2016  
 Unof ficial consolidated version  
 
unless all the directors of the body corporate  and any manager who is not also a director a re 
registered trade m ark agents or the body satisfies such conditions  as may be pres cribed for 
the purposes of thi s section.  
  
(4) With a view to the fulfilment b y the Government on behalf of the State of any 
international agreement to which the State is a  party, the Minister may permit any person 
who is not a registered tr ade mark agent but who is a citizen of a stat e which is also a party to 
that international ag reement, upon application made by that person, to  act on behalf of others 
in relation to trade  marks subject to any  conditions that the Minister considers appropri ate. 
 
(4A) Notw ithstanding subsections (1) to  (3) but subject to subsections (4B) to (4E), a person 
established in a Member State of the Europ ean Community (other than the State) and 
qualified under the law o f that state to act as a trade mark agent in tha t state may car ry on the 
business of acting a s a trade mark agent for others in connection wi th the registration of a 
trade mark or any proced ure relating to a registered trade mark.  
 
(4A) Notwithstanding sub section  (1) but subject to subsections  (4B) to ( 4E), a person 
established in another EEA stat e and qualified  under the law of that state to a ct as a trade 
mark agent in that state  may carry on the business of acting as a trade mark age nt for others  
in conn ection with the registration of a trade mark or any procedure  relating to a registered 
trade mark  
 
(4B) On or before the first occasion on wh ich a person acts, in  reliance on subsection (4A) , 
on behalf of another before the Controller in connection with th e registration of a trade mark 
or any procedure relating to a r egistered trade mark, the pers on shall provide to the Controller 
such evidence  as may be prescribed relating to — 
(a) the person ’s being established in another Member State   EEA state   
(b) the p erson’s being qualified under the law of that st ate to act as a  trade mark agent 
in that stat e, and  
(c) whichever of the following is appropr iate— 
(i) the person’s nationality, or  
(ii) the p erson’s falling within paragraph ( b) of the d efinition of ‘person’  in 
subsection (4F).* 
 
 
 
 
(4C) In acting, in relianc e on subsec tion (4A), on behalf of anothe r in connection with the 
registration of a trade mar k or any procedure relating to a registered trade  mark, the person 
†shall use the applicable pr ofessional title  (if any) but its use in the State shall be subject t o 
the foll owing requirements —‡ 
 
(a) the title is to be expressed in the official language or one of the official languages 
of the Member State  EEA state  referred to in subsection (4A), an d 
                                                 
*S.I. No. 47 of  2016 European Communities (T rade Mark Agent s) Regulations 2016  
* S.I. No. 622 of 2007 European Com munities (Provision o f services concerning Trade Marks and Industrial 
Designs Regulations  2007 
 
†  
 Unof ficial consolidated version  
 
(b) in a case where the language in which the title is expressed is  also an o fficial 
language of the State,  the use of the title is not such as is likely to be understood as 
indicating that the person is a tra de mark agent registered under this Act.  
 
(4D) It shall be su fficient compliance with subsection (4C)( b) if the us e of the t itle concerned 
is accompanied by an indication of the Member State  EEA state  in whi ch the person 
concerned is established as a trade  mark agent.  
 
(4E) If there is no applicable professional tit le, then the person, in acting as mentioned in 
subsec tion (4C),  shall indicate that the perso n possesses the applicable qualifications and 
those q ualifications shall be expressed in the official language or one of the official 
languages of the Member State  EEA state  referred to in subsection (4A).  
 
(4F) In t his sectio n— 
‘applicable professional ti tle’, in relation to a person, means the professional  title that, by 
virtue of the person’s being qual ified to act as a trade mark agent in the Mem ber State  EEA 
state referred to in subsection (4A), the person is ent itled to u se in that state;  
 
‘applicable  qualifications’, in relation to a person, means the qualifications that the person 
must possess, unde r the law of the Member State  EEA state  refer red to in subsec tion (4A) so 
as to be qualified to act as a trade mar k agent in  that state;  
 
‘person’ means — 
 
(a) in the case of an individual, a national of a Me mber State of the European 
Community , an EEA stat e and 
(b) in the case of a person which is no t an individual,  a company or firm (within the 
meaning of Article 48 of the Tre aty establishing the European Community) formed in 
accordance with the law of a Mem ber State of the European Community and having it s 
registered office, central administration o r principal plac e of business within the European 
Community*. an EEA state and having its registered office, central administration or 
principal place of business  within an EEA state.  
 
 (5) The legal personal re presentative of a deceased registered trade m ark agent may ca rry on 
the business or practice of the deceased agent  for a per iod not exceeding three years from the 
agent's death, or for such further period (i f any) as the Court  High Court† allows if the 
personal representative — 
(a) is authorised by the Court  High Cou rt to manage the business or practice; or  
(b) employs another p erson who is so authorised to manage the business or practice 
on behalf of the pers onal representative.  
  
(6) Any person who contrav enes any provision of this section shall be liable on summary  
convic tion to a fine not exceeding £500  class D fine  in the ca se of a first offence and,  in the 
                                                 
* S.I. No. 622 of 2007  European Communities (Provision of services concerning Trade Ma rks and Industrial 
Designs) Regulations 2007  
*S.I. No. 47 of  2016 Eu ropean Communities (Trade Mark Agents) Regulations 2016  
* Copyright and  Other Intellectual Property Law Provisions A ct 2019  
 
 
 Unof ficial consolidated version  
 
case of a second or subsequent offence, £1,000  a class C fine; and, notwithstanding section 
10 (4)  of the Petty Sessions (Ireland) Act, 1851, proceedings for a n offence under this section 
may be  commenced at any time withi n twelve months from the date of the offe nce. 
  
(7) Nothing in this Act shall be co nstrued as prohibiting solicitors or barristers f rom taking 
such part in proceedings under this Act as has her etofore been taken by solicitors or  barristers 
in connection wi th a trade mark or any procedu re relating  to a trade mark or the registration 
there of. 
  
(8) A registered trade mark agent shall not  be guilty of an offence under section 58 of the 
Solicitors A ct, 1954 (which prohibits the prepa ration for reward of certain  instruments by 
persons not le gally quali fied), by reason only of the preparation b y the agent of — 
(a) a deed assigning the property  in a trade mark application or trade mark; or  
(b) any docume nt (not being a deed) for use in pr oceedings under this Act bef ore the 
Controller or the Cour t appropriate court . 
  
(9) No offence is committed un der any enactment restricting the use of certain expressions in 
reference to any person not qualified to act a s a solicitor by use of the term “ Community 
Trade Mar k Attorney ” “European Union or EEA Trade  Mark Attorney ”*† in referenc e to a 
Registered Trade Mark Agent.  
 
Entitlement to be registered as trad e mark agent.  
86.—(1) Any person who — 
(a) resides in the Stat e or in such other state as may be prescribed,  
(b) has a place of business in the State,  
 
(a) resides in the European Comm unity,  
(b) has a place o f business in the European Community‡,  
(c) posse sses the prescribed educational and professional qualificatio ns, and  
(d) complies with the prescribed conditions,  
shall be e ligible to be a registered tra de mark agent and a partnersh ip shall be so eligible if 
every partner is registered in accordance with  the provisions of this section; and, on 
application in the p rescribed form and manner and on payment of the presc ribed fee,  a person 
or partnership so el igible shall be registered.  
 
            (a) resides in the State or in an EEA state,  
            (b) has a place of business in the State or in an EEA state,  
            (c) possesses the prescribed educational and profession al qualifications, and  
            (d) complies with the pr escribed conditions,  
shall be eligible to be a registered trade mark agen t and a person so eligible shall, on 
application in the presc ribed form and manner and on payment of the prescribe d fee, be so 
registered . 
   
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulat ions 2018  
† *S.I. No. 47 of  2016 European Communities (Trade M ark Age nts) Regulations 2016  
Copyright and Other Intellectual Property Law Pr ovisions Act 2019  
 
 Unof ficial consolidated version  
 
(2) Persons and partnerships whose names were entered in the Regi ster under the Act of 1963 
immediately before the  commencement of this Act shall continue to be registered tra de mark 
agents. * 
 
A person or partnership whose name was entere d in the Register of Trade Mar k Agents 
immediately before t he commencement of these  Regulations shall continue to be registered 
in the Register of Trade Mark Agents.* 
 
Removal from Register.  
87.—The Controller may, upon the application of any per son who is  a registered trade mark 
agent , remove that person's name f rom the Register.  
 
Suspe nsion and erasure of registration of trade mark a gent.  
88.—(1) Where, in the opinion of the Controller, a pers on who is a registered trade mark 
agent ceases to be eligible t o be registered or has been gu ilty of conduct disgraceful t o that 
person in the cap acity of a registered trade mark agent, the Contr oller may, after giving that 
person an opportunity to be hear d, decide that the name of that person should be eras ed from 
the Register or that, during a p eriod of specified duration, that person's registrati on should not 
have effect.  
  
(2) On making a deci sion under subsection (1) , the Controller shall forthwith sen d by post to 
the person to whom the decision relates (in this s ection referred to as “ the per son in default ”), 
at that per son's address as stated in the Register, a notice in writing stating the decision, the 
date thereof and the reason therefor.  
  
(3) On giving notice to the Controller in the prescribed man ner, the p erson in default may, 
within t he period of 21 days beginnin g on the date of the dec ision in question, apply to the 
Court  High Court† for cancellation of the decision; and, if that person so app lies, the Court  
High Court , on hearing the application, may eit her— 
(a) cancel the decision, or 
(b) declare that it was proper for the Controller  to make a decision under subsection 
(1) in relati on to the person in default and either (as the Court  High Cou rt may 
consider proper) — 
(i) direct the Controller to erase the  name of the person in d efault  from the 
Register; or  
(ii) direct that, during a spe cified per iod (beginning not earlier than 7 days 
after the decision of the Court  High Court ), the registration  of the person in 
default shall not have effect.  
 
(4) If at any  time the Controller satisfies  the Court  High Court‡ that the person in default has 
delayed unduly in proceeding wit h an application under subsection (3) , the Court  High Court  
shall, unless it sees good reason to the contrary, declare that it was proper fo r the Controller 
to make a dec ision under subsection (1)  in relation to the person i n default and either (as the 
Court  High Court  may consider proper) — 
                                                 
* *S.I. No. 47 of 2016 Eu ropean Communities (Trade Mark Agents) Regulations 2016  
* Copyright and  Other Intellectual Property Law Provisions Act 2019  
 
 
 Unof ficial consolidated version  
 
(a) direct the Controller to erase the na me of the person in default from the Register; 
or 
(b) direct th at, during a specified period (beginning not earlier than 7 days afte r the 
decision of the Court  High Court ), the registration of the  person in defau lt shall not 
have effect.  
  
(5) Where the pe rson in default does not, within the period of 21 days beginnin g on the date 
of the decision in question, apply to the Court  High Court* for cancell ation of the decision, 
the Controller may apply exparte  to the Court  High Court  for con firmation of the decis ion; 
and, if the Controller so applies, the Court  High Court  on the hearing of the applicati on shall, 
unless it sees good reason to the contrary, d eclare accordingly and either  (as the Court  High 
Court  may consider proper) — 
(a) direct the Controller to era se the name of the person in default from the Register; 
or 
(b) direct that, during a specifi ed period (beginning not earlier than 7 days after the 
decision of the Court  High Court ), the registrati on of the person in default shall not 
have effect.  
 
(6) The decision of  the Court  High Court  on an application under subse ction (3)  or 
subsection (5)  shall be final, save that, by leave of the Court  High Cou rt or the Supreme 
Court, an appeal by the Control ler or the person in def ault from the decision shall lie to the 
Supreme Court on a specified question of law.  
 
Notice of e rasure or suspension: subseque nt restoration.  
89.—(1) Upon the erasure of the name of  a person from the Register the Controller shall 
forthwith send by pre -paid post to that person, at that pers on's address as stated in the 
Register, notice in writing of t he erasure.  
  
(2) Where a deci sion is made under section 88  that, during a specified period, a person's 
registration shall not have ef fect, the Controller sha ll, before the commencement of that 
period, send by pre -paid post to that person, at that person's  address as stated in the Regi ster, 
notice in writing of the decision.  
  
(3) The name  of any person which has been erased from the Reg ister may at any time be  
restored to the Register by directi on of the Controller but not othe rwise; and, when a person's 
name is so restored to the Regi ster, the Controller may attach to the restoration such  
conditions (including the payment of a fee not e xceeding the fee which w ould be payable by 
the person for re gistration if that person was bei ng registered for the first t ime) as the 
Controller thinks fit. 
 
(4) Where a person's registration has ceased to h ave effect under section 88  for a specified 
perio d, the Controller may, i f he so thinks fit, on application m ade to him by that person, 
termin ate the suspension.  
 
Rules re lating to trade mark agents.  
90.—(1) The Minister may make rules for the management o f the Register and may, by those 
rules, prescribe  any matter or thing ref erred to in this section or section 85 and, in particular, 
                                                 
*S.I. No. 47 of 2016 European Communities (Trade Mark Agent s) Regulations 2016  
* Copyright and Other Intellectual Property Law Pr ovisions Act 2019  
 Unof ficial consolidated version  
 
may so pre scribe the educational and pr ofessional qualifications and the conditions 
(including conditions relating to nation ality or citizenship) for eligibility for registr ation and 
the maximum fe es which may be charged by any perso n who is registered for such serv ices 
in connection with trade  marks as may be specified in the rules.* 
 (1) The Minister may make rules for the man agement of the Register and may by 
such rules pre scribe any matter or thi ng referred to in this section, sect ion 86 or section 88, 
and in part icular may so prescribe — 
(a) the educational and professio nal qualifications and the conditions (including conditi ons 
relating to nationality or citizenship), whic h must be satisfied for eligibility for registration  
in the Register;  
(b) the conditions whic h must be satisfied by a par tnership, body corporate or un incorporated 
body of persons for eligibility for registr ation in the Register, including conditions relat ing† 
 
to the following:  
(i) evidence of establishment as a p artnership, body corporate or uni ncorporated body;  
(ii) evide nce that a trade mark agent es tablished in an EEA state (other than the State) is 
acting as a trade mark agent in accordance with the l aw of that state;  
(iii) evidence that the partnership, body corporate or unincorporated body is performing the 
services o f a trade mark agent in the St ate;‡ 
(c) the maximum fees which may be charged by any p erson registered in the Register for 
such service s in connection with the  obtaining of trade marks as may be specified in such 
rules.  
 
(2) Rules under subsection (1)  may authorise the Controller to re fuse to recognise as agent in 
respect of any business un der this Act any person who does not satisfy the requirements of 
section 85 . 
 
(3) Rules under this section m ay authorise the Controller to re fuse to recognise as agent i n 
respect of any business unde r this Act a company or firm of which any director, mana ger or 
partner (as the case may be) is an individ ual whom the Controller could refuse to recognise 
as an agen t. 
 
 
 
Privileged communications.  
91.—(1) This section applies  to communications in respect of any matter relating to the 
protection of a trade mark  or in respect of any matter involving passing of f. 
  
 (2) Any communicat ion to which this section applies — 
(a) between a person and his regis tered agent, or  
(b) for the purposes of obtaining or in re sponse to a request for information which a 
person is se eking for the purpose of instructing his register ed agent,  
is privileged from disclosure in legal proceedings  in the State in the same way as a 
communication between a pe rson and his solicitor or, as the case may be, a communication 
                                                 
 
† S.I. No. 47 of   2016 European Communities (Trade Mark Age nts) Regulations 2016  
† S.I. No. 622 of 2007 Euro pean Commun ities (Provision of services concerning Trade Marks and I ndustrial 
Designs) Regulations 2007  
 
 Unof ficial consolidated version  
 
for the purpose of obta ining or in response to a request for information  which a person seeks 
for the purpose of instructing his sol icitor.  
  
(3) In subsection (2)  “registered agent ” means —* 
(a) a registered trade mark agen t; 
(b) a partnership entitled to describe itself as a fir m of registered trade mark agents; or  
(c) a body corporate entitled to de scribe itself as a registered trade mark agent.  
 
(3) In this section ‘registered agent’ means — 
(a) a registered trade mark age nt; 
(b) a partnership entitled to describe itself as a fi rm of registered trade mark agents;  
(c) a body co rporate entitled to desc ribe itself as a registered trade ma rk agent; or  
(d) a person to whom  section 85(4A) applies.* 
 
 
 
PAR T VI  
 
Offences  
 
Fraudulen t application or use of trade mark in relation to goods.  
92.—(1) Subject to the provisions of subsection ( 3), it shall be an offen ce for any person — 
(a) to apply a ma rk identical to or nearly resembl ing a registered trade mark  to goods 
or to material used or intended to be used for labelling, packaging or advert ising 
goods,  
(b) to sell, let for hire, offer or expose for sale or hire or distribute — 
(i) goods bearing suc h a mark, or  
(ii) material bearin g such a mark which is used  or intended to be used for 
labelling, packaging or advertising goods,  
(c) to use mater ial bearing such a mark in the course of a busine ss for labelling, 
packag ing or advertising goods, or  
(d) to possess in the course of a busine ss goods or material bearin g such a mark with 
a view to d oing any of the things mentioned in paragraph (a)  to (c), 
when that person is not entitled to use the mark  in relation to the good s in question or 
authorised by a per son who is so entitled.  
  
(2) Subject to the provisions of subsection (3) , it shall be an offence for any person to possess 
in the course of a busi ness goods or material bearing a mark identical t o or nearly resembling 
a registered trade mark with a view t o enabling or assisting another p erson to do any of the 
things mentioned in subsection (1)  (a), (b)  or (c), knowing or having reason to believe tha t 
the other person is not entitled to use the mar k in relation to the goo ds in question or 
authorised by a pe rson who is so entitled.  
  
(3) Any person who contravenes th e provisions of subsection (1)  or (2) shall be guilty of an 
offence if, but only if tha t person acts with a view to gain, for himself or  another, or with 
intent  to cause a loss to another and it s hall be a defence for a person ch arged with an offence 
                                                 
* S.I. No. 622 of 2007  Euro pean Commun ities (Provision of services concerning Trade Marks and  Industrial 
Designs) Regulations 2007  
Copyright and Other Intellectual Property Law Provisions Act 2019  Unof ficial consolidated version  
 
under  subsection (1)  to show that h e believed, on reasonable grounds, that he was entitled t o 
use the trade mark in relation to the goods in question.  
  
(4) A person  who commits an offence under this s ection shall be liable —  
(a) on summary conviction to impris onmen t for a term not exceedin g six months or to 
a fine not exceeding £ 1,000 class C fine*, or to both;  
(e) on conviction on indictment to i mprisonment for a term not exceeding f ive years or to 
a fine  not exceeding £100,000  €130,000 , or to both.  
 
 
 
Falsifi cation of register, &c.  
93.—(1) It shall be an offence for a person to make, or cause to be  made, an entry in the 
register which that person  knows or has reason to believe to be false.  
  
(2) It shall be an offence for a per son— 
(a) to make or cause to be m ade anything falsely purporting to  be a copy of an entry 
in the register, or  
(b) to produce  or tender or cause to be produced or tendered in  evidence any such 
thing,  
knowing or having rea son to believe that it is false.  
  
(3) A person who commits an offenc e under this section shall be liab le— 
(a) on summary conviction, to imprisonment for a term  not exceeding six months or 
to a fine not exceeding £ 1,000 class C fine†, or to both,  
(b) on conviction on in dictment, to imprisonm ent for a term not exceeding two year s 
or to a fine not exceeding £200,000  €255,000 , or to both.  
  
Falsely representing trad e mark as registered.  
94.—(1) It shall be an offence for a person — 
(a) falsely to represent that a mark is a registered  trade mark, or 
(b) to make a false representation as to the goods or  services for whic h a trade mark is 
registered,  
 knowing or having r eason to believe that the repr esentation is false.  
  
(2) For the purposes of this section, the use in the State in rela tion to a tra de mark — 
(a) of the word “ registered ”, or 
(b) of any oth er word or symbol importing a reference (express or implied) to 
“registration ”, 
shall be deemed to  be a representation as to registration under this Act unless it is shown 
that the refere nce is to reg istration elsewhere than in the State and that the trade  mark is in 
fact s o registered for the goods or services in question . 
(3) A person guilty of an of fence under this section shall be liable on summary conviction to  
a fine not exceeding £ 1,000 class C fine and, in the case of a continuing offence, to a further 
fine not excee ding £100  class E fine, for every day on which the  offence co ntinues.  
 
Offences committed by partnerships and bodies corporate.  
                                                 
 
† Copyright and Other Intellectual Property Law Provisions Act 2019  Unof ficial consolidated version  
 
95.—(1) Without prejudice to any liability of a partne r under subse ction (3) , proceedings for 
an offence under this Act alleged to have been committed by a partnership shall be b rought 
against the partnership in the name of the firm and not in that of the partners.  
 
(2) A fine imposed on a partnership on its conviction in  proceedings brought in accordance 
with subsection (1)  shall be paid out of the assets of the partnership.  
  
(3) Where a p artnership is guilty of an offence under this Act, every partner, other than a 
partner who is proved to have been ignoran t of or to ha ve attempted to prevent the 
commission of the offence, shall also be guilty of the offence and liable to be pro ceeded 
against and punished accordingly.  
 
(4) Where an offence under this Act which is committed by a body corporate is proved to 
have been commi tted with the consent or connivance of, or to be attributable  to any neglect 
on the part of, any person who, wh en the offe nce was committed, was a director, manager, 
secretary or other similar officer of the body corporate or a person who was purporting to  act 
in any such capacity, that person (as well as the body c orporate ) shall be guilty of an offence 
and liable  to be proc eeded against and punished as if guilty of the offence committed by the 
body corporate.  
 
 
 
PART VII  
 
Miscellaneous and Ge neral  
 
Jurisd iction of the Circuit Court.  
96.—Without prejudice to the pow ers conf erred by this Act upon the Court, proceedi ngs for 
an order under section 20  or section 23  may be brought in the Circuit Court in the county in 
which the infringing goods, mat erial or arti cles are situated or in the county in which resides 
any perso n having  those goods, material or articles in his possession,  custody or control.* 
 
Unauthorised use of State emblems of Ireland.  
97.—(1) A person shall not, without the authority of  the Minister,  use in connection with any 
business the State emblems of Ir eland not ified under Article 6ter of the Paris Conv ention or 
emblems so closely resembling the State emblems as to be calculated to deceive in such a 
manner as to be calculated to le ad to the beli ef that that person is duly authorised to use the 
State embl ems. 
  
(2) A person who contravenes the provisions of subsecti on (1)  shall be guilty of an offence 
and shall be liable on summary conviction to a fine not exceeding £ 1,000 class C fine and, in 
the case of a co ntinuing offence, to a further fine not exceedi ng £100  class E fine for every 
day the offence cont inues. 
 
(3) The Minister may apply to the Court  High Court† for an injunction to restrain any person 
from contravening the provisio ns of subsection (1) . 
  
                                                 
* Copyright and Other Intellectual Property Law Provisions Act 2019  
 
 Unof ficial consolidated version  
 
(4) Nothing in this section shall affect any right  of the proprietor of a registered trade mark 
containing any s uch emblem to use that trade mark.  
  
(5) In any proceedings to restrain any action prohibited under subsection (1)  or an y 
prosecution under subsection (2)  a certificate pur porting to be signed b y the Controller that 
the emblem is a State emb lem shall be su fficient evidence of its contents unless the contrary 
is proved.  
 
Misuse of trade marks indicative of Irish origin.  
98.—The Minister may take, in any place outside the Stat e, such lawful steps, whether by 
way of action or prosecution at law or otherwise, a s he shall think proper to prevent, restrain, 
or to secure punishment for, the registration, use or application, in rela tion to or in respect of 
goods not grown, produced o r manufactured in the State, of any trade mark or other mark or 
descr iption indicati ng or suggesting, or likely to lead to the belief, that the goods in respect of 
which or to which that trade mark, mark or description is used or applied were grown, 
produc ed or manufactured in the State.  
 
Burden of proving use of trade mark . 
99.—Where, in  any civil proceedings under this Act, an issue arises as to the use made by 
any person of any registered trade mark, th e onus of proving such use shall lie with the 
propri etor. 
 
 
 
Transitional provisions.  
100.—The provisions of the Third Sc hedu le shall ha ve effect with respect to transitional 
matters, including the treatment of trade marks registered under the Act of 1963,  and 
applications for registration and other proceed ings pending under tha t Act, on the 
commencement of this Act.  
 
Territ orial waters an d continental shelf.  
101.—For the avoidance of doubt, it is hereby declared that this Act applies to the following 
water s, namely, the waters in the portion of the sea whic h comprises the territ orial seas of the 
State, the waters in all area s of the sea to  which the internal or inland waters of the State are 
extended by section 5 of the Maritime Jurisdiction Act, 1959 and t he waters in any area 
which is for the time being a designated area within  the meaning of section 1 of the 
Continental Sh elf Act, 1968.  
 
Amendment and adaptation of existing statutes.  
102.—(1) In any enactment passed before, and in any provision made under  any enactment 
before, the commencement of this Act,  any reference to trad e marks or registered trade 
marks, within the m eaning of the A ct of 1963, shall, unless the context otherwise requires, be 
construed after the commencement of this Act as a reference  to trade marks or registered 
trade marks, within th e meaning of this Act.  
 
(2) In section 24 of the Consumer Information  Act, 1978 — 
(a) for the words “the Trade Marks Act, 1963 ”, in each place where they occur 
except in paragraph ( c), there shall be sub stituted “ the Trade Marks Act, 1996 ”; and  Unof ficial consolidated version  
 
(b) in par agraph ( c) for the wor ds “a person registered under section 36 of the  Trade 
Marks Ac t, 1963 as a registered user of a trade mark” there shall be substituted “ in 
the case of a registered trade mark, a pers on licensed to use it ”. 
 
 
 
FIRST SCHEDULE  
 
Collective  Marks  
 Section 54 .  
 
General  
1. The provisions of this Act shall app ly in relation to collective marks subject to the 
following provisions of this Schedule.  
 
Signs of which a collective mark may consist  
 
2. In relation to a collective mark, the reference in section 6 (1)  to distinguishing goods or 
services of one undertaki ng from those o f other undertakings shall be construed as a 
reference to distinguishing goods or services of members of the association  which is the 
proprietor of the mark from those of o ther undertakings.  
 
Indication of geographical origin  
3. (1) Notwiths tanding the pro visions of section 8 (1) (c) , a collective mark may be registered 
which consists of signs or indications which may serve , in trade, to designate the 
geographical origin of the goods or service.  
 
(2) However, the proprietor of a mark referred  to in subparag raph (1)  shall not be entitled to 
prohibit the use of the signs or indications in accordance with honest practices in in dustrial or 
commercial matters (in particular, in th e case of a person wh o is entitled to use a 
geographical name).  
 
Mark  not to be misl eading as to character or significance  
  
4. (1) A collective mark shall not be registered if the public is liable to be misled as regards 
the character or significance of t he mark, in particula r, if it is likely to be taken to be 
something o ther than a col lective mark.  
  
(2) The Controller may, accordingly, require that a mark in respect of which an application is 
made for registration as a collective mark shall comprise som e indication that it is a 
collective mark, and, notwithstanding section 44 (3), an a pplication may be amended so as to 
comply with any such requirement.  
 
 
Regulations governing use of collective mark  
 
5. (1) An applicant for registration of a collective mar k shall file with th e Controller 
regulations governing the use of the  mark. 
  Unof ficial consolidated version  
 
(2) The regulations shall specify the persons authorised to use the mark, the conditions of 
membership of the association and , where they exist , the conditions of use of the mark , 
including any sanc tions against misuse of the mark.* 
 
(2A) The regu lations governi ng the use of the mark shall authorise any person whose goods 
or services originate in the geographical area concerned to become a member of the 
association which is the pr oprietor of the mark , provided that the  person fulfils all the other 
cond itions of t he regulations.† 
  
(3) Provision may be made by rules for further matters in respect of which regulations are 
required.  
 
Approval of regulations by Controller  
 
6. (1) A coll ective mark shall n ot be registered unless the regulations governing the use of the 
mark — 
(a) comply with paragraph 5 (2)  and any further requirements imposed by rules; and  
(b) are not contrary to public  policy or to accepted principles of morality.  
  
(2) Before the end of t he prescribed period after the date of the applica tion for regist ration of 
a collective mark, the applicant must file the regulations with the Controller and pay the 
prescribed fee; an d if the applicant does not do so, the application sh all be deemed to be  
withdrawn.  
 
7. (1) If it appears to the Controlle r that the requ irements (other than those specified in 
paragraph 6 ) for registration have been met, the Controller shall consider the matters 
specified in paragraph 6 (1)  and may — 
(a) accept the application ; 
(b) accept it subject to conditions (including a mend ment of the  regulations or 
otherwise); or  
(c) refuse to accept it.  
 
(2) Where the Controller accepts an application subject to spe cified conditions, and those 
conditions are complied with within the pre scribed period, the Controller shall proceed with 
the publication  in the Journal in accordance with section 43  . 
 
(3) Where the Controller accepts an application subject to specified c onditions and those 
conditions are not complied with within the prescrib ed period, the application shall be 
deemed to be w ithdrawn. 
  
8. (1) The regulations governing the use of the mark shall be open to public inspection and 
notice of opposition may be gi ven, and observations may be made, relating to the ma tters 
specified in paragraph 6 (1) . 
  
(2) The provisions of this para graph are in ad dition to any other grounds on which an 
application may be opposed or observations made.  
 
                                                 
* *S.I. No. 5 61 of 2018  European Union (Trade Marks) Regulations 2018  
*S.I. No. 56 1 of 2018  European Union (Trade Marks) Regulations 2018  Unof ficial consolidated version  
 
Regulations to be open to ins pection  
 
9. The regulations governing the use of a re gistered collective  mark shall, in like manner as 
the register, be op en to public in spection.  
 
Amendment of regulations  
 
10. Where the regulations governing the use of a registered collective mark are am ended, the 
regulations, as amended, shall not be effe ctive unless and un til the amended regulations are 
filed with and acc epted by the Co ntroller  the Controller and the mention of the amendment of 
the regulations is entered in the register.* 
 
 
 
Infringeme nt proceedings: rights of authorised users  
 
11. (1) Subject to any agree ment to the contrary between an authorised user an d the 
proprieto r, the provisions of this paragraph shall have effect in relation to the infringement of 
a registered collective mark.  
  
(2) An authorised user shall be entitled to call on  the proprietor to take infringement 
proceedings in respect of any ma tter which affe cts the authorised user's interests.  
  
(3) Where the proprietor refuses or fails to take infringement proceedings in ac cordance with 
subparagraph (2)  within two months afte r being called upon  to do so, the authorised user 
may bring the proce edings in the a uthorised user's name as if the authorised user were the 
proprietor.  
 
(3) Without prejudice to the provisions of any ag reement, the authorised user may bring 
proceedings fo r infringement of a  trade mark only if its proprietor consents theret o.”,† 
  
(4) Whe re the infringement proceedings are brought by virtue of subparagraph (3) — 
(a) the authorised user may not, without the  leave of the Court  appropriate court‡, 
proceed with the action unless t he proprietor is either joined as a plaintiff or added  as 
a defen dant; and  
(b) a proprietor who is so added as a defendant shall not be liable for any costs in the 
action unless he tak es part in the proceedings.  
  
(5) Nothing in subparagraph (4)  shall affe ct the granting of interlocutory relief on an 
applicat ion by an a uthorised user alone.  
  
(6) In the course of infringement proceedings brought by the proprietor of a registered 
collect ive mark, any loss suffered or likely to be suffered by authorised users  shall be taken 
into account by the Court  appropriate court; and the Court  appropriate court  may give suc h 
directions as it thinks fit regarding the extent to which the plaintiff shall  hold the proceeds of 
any pecuniary remedy on behalf of such users.  
 
                                                 
 
† *S.I. No. 561 of 2018 E uropean Unio n (Trade Marks) Regulation s 2018 
‡ Copyright and Other Intellectual Property Law Provision s Act 2019  Unof ficial consolidated version  
 
(7) An authorised user shall for the pu rpose of obtaining  compensati on for damage suffered 
by him or her, be  entitled to intervene in infringement proceedings brought by the proprietor  
of a registered collective mark.  
 
 
Grounds for revocation of registratio n 
  
12. Apart from the grounds of rev ocation provided f or in section 51  , the registration of a 
collective  mark may shall be revoked on the ground that — 
(a) the manner in which the mark  has been used by the proprietor  persons authorised 
to use it has made it misleading to the public in the ma nner referred to i n paragraph  4 
(1); or 
(b) the proprietor has failed  to observe, or to secure the observance of the regulations 
governing the use o f the mark; or  
            (b) the proprietor has not taken reasonable steps to prevent the mark being used in a    
            manner th at is incompatible with the conditions o f use laid down in the regulations  
            governing the use of the mark, including any amendments thereto mentioned in the  
            register ; or”,  
 
(c) an amendment of the regu lations has been m ade so that  the regulations — 
(i) no longer comply w ith paragraph 5 (2)  and any further conditions imposed 
by rules; or  
                        (i) no longer comply with paragraph 5(2) and any further c onditions imposed  
                        by rules unl ess the pro prietor  of the mark, by further amending  the regulations  
governing use, complies with the requirements of the First Sch edule; or”,  
(ii) are contrary to public policy or to accepted principl es of morality.  
 
Grounds for invalidi ty of registration  
 
  
13. Apart from the grounds of invalidity provid ed for in section 52  , the registration of a 
collective mark may be declared in valid on the ground that the mark was registered contrary 
to the provis ions of paragraph 4 (1)  or 6 (1) . 
 
13. In addition to t he 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 geographical or igin of the goods or services, the re gistration of a co llective  
mark shall be declared invalid on the grou nd that the mark was registered contrary to the 
provisions of paragraph 4(1) or  6(1), unless the proprietor of the mark, by further amending 
the regul ations governing use, complies with t he requirements of  the First Schedule.* 
 
 
 
 
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  
 
 Unof ficial consolidated version  
 
SECOND SCHEDULE  
 
Certificati on Marks  
 Section 55 .  
  
General  
 
1. The provisions of this Act shall apply in relation to certification marks subject to the 
following provisions  of this Schedule.  
 
Signs of which a cert ification mark may  consist  
 
2. In relation to a certification mark, t he reference in section 6 (1)  to distinguishing goods or 
services of one und ertaking from those of other undertakings shall be construed as a 
reference to distinguishing goods or services  which are certifi ed from tho se which are not 
certified.  
 
Indicati on of geographical origin  
 
3. Notwithstanding the provisions of section 8 (1 ) (c), a certification mark may be registered 
which consists of signs or indications which may serve, in trade,  to designate the 
geographica l origin of the goods or services:  
 
Prov ided that the proprietor of such a mark shall not be entitled to restrain th e use of the 
signs or indications in accordance with honest practices in industrial or commercial matters, 
in particular, by a pe rson who is  entitled to use a geographical name.  
 
Nature of proprietor's business  
4. A certification mark shall not be register ed if the proprietor carries on a business involving 
the supply of goods or services of the kind certified.  
 
4. Any natural or le gal person,  including institutions, authorities  and bodies governed by 
public law, may apply for certification marks  provided t hat such person does not carry on a 
business involving the  supply of good s or services of the kind certified*. 
 
Mark not to be mis leading as to character or significance  
5. (1) A certification mark shall not be registered if the public is liable to be misl ed as regards 
the character or significance of the mark, in particular, i f it is likely to be taken to be 
someth ing other than a c ertificatio n mark.  
  
(2) The Controller may, accord ingly, require that a mark in respect of which an application is 
made for r egistration as a certification mark shall comprise some indication that i t is a 
certification mark; and notwiths tanding section 44  (3), an ap plication may be amended so as 
to comply  with any such requirement.  
 
                                                 
* *S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018  
 Unof ficial consolidated version  
 
Regulations governing use of certification mar k 
 
6. (1) An applicant for registration of a certification mark shall fi le with the Controller 
regulations gover ning the use of th e mark. 
 
6A. The requirement of use referred to in section 16A shall be satisfied where genuine use of 
a certification mark is  made by any person who has the authority to use it.* 
 
(2) The regulatio ns shall indicate who is authorised to u se the mark, the c haracterist ics to be 
certified by the mark, how the  certifying body is to test those characteristics and to supervise 
the use of the mark, the fees (if any) to be paid in connection with the operati on of the mark 
and the procedures for re solving disputes.  
  
(3) Provi sion may be made by rules for further ma tters in respect of which regulations are 
required.  
Approval of regulations , &c. by Minister  
  
7. (1) A certification mark shall not be registered unless the Minister is satisfied that — 
(a) the regulations  governing the use of the mark — 
(i) comply with paragraph 6 (2)  and any further requirements imposed by 
rules; and  
(ii) are no t contrary to public policy or to accepted principles of morality; and  
(b) the applicant is competent to certify  the goods or serv ices for wh ich the mark is to 
be registered.  
  
(2) If it appears to the Controller that the requirements for registration othe r than those in 
subparagraph (1)  are met, the Controller shall authorise  the applicant to proceed with the 
appli cation.  
 
(3) Withi n the presc ribed period of authorisation to proceed , the applicant must file the 
regulations (if this has not already been don e) and pay the prescribed fee, failing which, the 
application shall be d eemed to be withdrawn.  
  
8. (1) The Mini ster shall conside r the matte rs mentioned in paragraph 7 (1)  and may direct 
that the application for registration be accepted, be accepted subje ct to conditions (as to 
amendment of the regulations or otherwise), or b e not accepted.  
  
(2) Where the Minister  directs that the application  be accepted, and any conditions are 
complied with within the prescribed period, the Controller shall proceed in ac cordance with 
section 43  . 
  
(3) Where the Minister directs that an appl ication be accepted subject to specified  conditions 
and th ose conditi ons are not complied with within the pre scribed period, the application shall 
be deemed to be withdrawn.  
  
                                                 
* *S.I. No.  561 of 2018 European Union (Trade Marks) Regulations 2018  
 Unof ficial consolidated version  
 
9. The r egulations shall be published and notice of opposition may be given, and  
observations may be made, relating to t he matters mention ed in parag raph 7 (1) , in addition 
to any other gro unds on which an application may be opposed or observations made.  
  
Regulat ions to be open to inspection  
  
10. The regulations governing the use of  a registered certification mark shall, in like manner 
as the registe r, be open to public inspection.  
  
Amend ment of regulations  
  
11. (1) An amendment of the regulations governing the  use of a registered certification mark 
shall not be effective unless an d until the Minister consents to the ame ndment and the 
amended regula tions are filed with the Controller.  
  
(2) The Minister may cause an application for consent under subparagraph (1)  to be 
published in any case where it appears expedient to do so.  
  
(3) Any person may, within the prescribed ti me from the date o f the publi cation of the 
application, give notice t o the Minister of opposition to the application and any such notice 
shall b e given in writing in the prescribed manner and shall include a statemen t of the 
grounds of opposition.  
  
(4) After the Minister h as consente d to such an amendment as is mentioned i n subparagraph 
(1), the Controller shall publish notice in the Journal when  the amended regulations are filed 
with him.  
 
Consent to assignment of r egistered certification mark  
  
12. The a ssignment or other  transmissi on of a registered certification mark sh all not be 
effective without the consent of the Minister.  
  
 
Infringement p roceedings: rights of authorised users  
  
13. (1) Subject to any agreemen t to the contrary between an authorised user and the 
propr ietor, the provisions of this paragraph shall have effect in relation to the infringement of 
a registered certification mark.  
  
(2) An authorised user shall be entitled to call on the proprietor to take infringement 
proceedings in respect  of any matter whi ch affects the authorised user's interests.  
  
(3) Where the proprietor refuses or fails to take infringement proceedings in ac cordance with 
subparagraph (2)  within two months after being called upon  to do so, the authorised user 
may bring  the proceedings i n the autho rised user's own name as if the authoris ed user were 
the proprietor.  
  
(4) Where infringement proceedings are broug ht by virtue of subparagraph (3) — Unof ficial consolidated version  
 
(a) the authorised user may not, witho ut the leave of the Court  appropriate court*, 
proceed with  the action  unless the proprietor is either joined as a plaintiff or a dded as 
a defendant; and  
(b) a proprietor who is so adde d as a defendant shall not be liable for any costs in the 
action unless the proprietor takes part in the proceedings.  
  
(5) Nothin g in subpar agraph (4)  shall affect the granting of interlocutory relie f on an 
application by an authorised user alone.  
 
(6) In the course of infringement proceedings brought by the proprietor of a r egistered 
certification mark, any loss suffered or likely to be suffe red by authorised users shall be taken 
into account by the Court  appropriate court ; and the Court  appropriate court  may give such 
directions as it thinks fit regarding the extent to which  the plaintiff shall hold the proceeds of 
any pecuniary re medy on beh alf of such users.  
 
Ground s for revocation of registration  
  
14. (1) Apart from the grounds of revocation provided for in section 51  , the registration of a 
certification mark may be revo ked on the ground that — 
 
(a) the proprietor has begun to c arry on suc h a business as is mention ed in paragraph 
4; or 
(b) the manner in which the mark has been used by the proprietor ha s made it 
misleading to the public in the manner referred to in paragrap h 5 (1); or 
(c) the proprietor has failed to observe, or t o secure th e observance of, the regul ations 
governing the use of the mark; or  
(d) an amendment of the regu lations has been mad e so that the regulations — 
(i) no longer comply with paragraph 6 (2)  and any further conditions imposed 
by rules; or  
(ii) are cont rary to pub lic policy or to accepted principles of morality; or  
(e) the proprietor is no longer competent to certify the goods  or services for which the 
mark is registered.  
 
(2) An application for r evocation on the ground mentioned in subparagraph (1) (c),  (d) or (e) 
shall be made to the Mini ster. 
  
(3) For the purposes of this paragraph the reference in section 51 (6)  to the Con troller or the 
Court  High Court† shall be construed as a reference to th e Minister.  
 
Grounds for invalidity of registration  
 
15. (1) Apart fr om the grounds of invalidity provided for in section 52, the registration of a 
certification mark may be de clared i nvalid on the ground that the mark was registered 
contrary to the provis ions of paragraph 4, 5 (1)  or 7 (1) . 
  
(2) An application for a decla ration of invalidity on the ground tha t the registration was made 
contrary to the provisions of paragraph 7  (1) shall be made to the Minister.  
                                                 
* Copyright and Other Intellec tual Property Law P rovisions Act 2019  
 Unof ficial consolidated version  
 
 
General provisions as to functions of Minis ter 
  
16. (1) The provisions of sections 69  to 74 shall ap ply in rela tion to the Minister and the 
Minister' s functions under this Schedule as they apply in relation to the Cont roller a nd the 
Controller's functions.  
  
(2) Section 79  shall apply in relation to a decision of the Minister under this Schedule as they 
apply in re lation to a decision of the Controller . 
 
(3) The Minister may, for the purpose of discharging any of his fu nctions under this 
Schedule, refer any matter to a body or person appearing to t he Minister to have experience 
of matters of that descript ion, and ma y take their report or advice into acc ount in reaching his 
decision.  
 
 
 
THIRD SCHEDULE  
 
Transitional Provis ions 
 Section 100 .  
 
Introductory  
 
1. (1) In this Schedule — 
“commencement ” means  the commencement of this Act; “ existing registered mark ” means a 
trade mark or certification trade mark, w ithin the meaning of the Act of 1963, registered 
under that Act immed iately b efore commencement;  
“the former register ” means the register of trade ma rks kept under the Act of 1963;  
“the old law ” means the Ac t of 1963 a nd any other enactment or rule of law applying to 
existing registered marks immediately before commencement ; 
“the n ew register ” means the Register of Trade Marks kept under this Act.  
  
(2) For the purposes of this Schedule an application shall b e treated a s pending at 
commencement if it was ma de but not finally determined before commencement.  
  
 
 
Existing regis tered ma rks 
  
2. (1) Existing registered marks (whether registered in Part A or Part B of the former register) 
shall, on commencement, be deemed to b e transferred to the new register and shall have 
effect, subject to the provisions of this Schedule, as if register ed under this Act.  
  
(2) Subparagraph (1)  shall apply to all entries rel ating to existing registered marks as it 
applies to the ma rks themsel ves. 
  
(3) Entries indicating that exi sting registered marks are associated with other marks shall 
cease to  have ef fect on commencement.  
  Unof ficial consolidated version  
 
(4) A condition entered on the former register i n relation to an existing registered mark 
immediately befo re commence ment shall cease to have effect on com mencement; and 
proceedings under section 41 of the Act of 1963 (appli cation t o expunge or vary registration 
for breach of condition) which are pendin g at commencement shall be dealt with under the 
old law (w ith any nec essary alteration being made in the ne w register).  
  
(5) A disclaimer or limitation entered on the former r egister in relation to an existing 
registered mark and in force immediately befo re commencement shall be deemed to be 
transferred to the n ew register  and have effect as if entered on the new register in pursuance 
of section 17  . 
  
Effects of registration: infringe ment  
 
3. (1) Sections 13  to 16 (effects of registration) apply in relati on to an existing registered 
mark as from commencement and  section 18  (action for infringement) applies in relation to 
infringement of an existing registered mark after commenc ement, s ubject to subparagraph 
(3). 
  
(2) Without prejudice to the operation of the Interpretation Act, 1937 , the old law shall 
continue to apply in  relation to infringements committed b efore commencement.  
  
(3) It shall not be an infringement of — 
(a) an existing  registered mark, or  
(b) a registered trade mark of which the distinctiv e elements are the same or 
substantially the same as those  of an exis ting registered mark and which is regi stered 
for the same goods or services,  
to continue after commencement  any use  which did not amount to infringement of the 
existing registered mark un der the old law.  
  
Infringing goods, material or articles  
  
4. Sectio n 20 (order for delivery up of infring ing goods, material or articles) shall apply to 
infringing goods, mat erial or  articles made before, as well as after, commencement.  
  
Rights and reme dies of licensee or authorised user  
 
5. (1) Section 34  (general provi sions as to rights of licensees in cas e of infringement) shall 
apply to licences granted before commencemen t, but o nly as regards infringements 
committed after commencement.  
  
(2) Paragra ph 13 (6)  of the Second Schedule  shall apply only in relat ion to infr ingements 
committed after commencement . 
 
Assignment &c. of registered trade marks  
  
6. (1) Section 28  (assignment o r other transmission of registered mark) shall apply only in 
relation to  transactions and events occurring after commencement in r elation to an existing 
registered mark; and the o ld law shall continue to apply in relation to transactions and events  
occurri ng before commencement.  
  Unof ficial consolidated version  
 
(2) An application for registration under sect ion 33 of the Act of 1963 (registration of 
assignments and  transmissi ons) which is pending at commencement shall be treated as an 
application for registration under section 29  and shal l proceed accordingly, except that the 
Controller may require the applic ant to amend the application so as to conform with the 
requirements o f this Act.  
  
(3) An application for r egistration under section 33 of the Act of 1963 which has been 
determ ined by the Controller but not finally determined before commencement shall be d ealt 
with under the old law.  
  
(4) Where, before commencem ent, a pers on became entitled by assignment or tr ansmission 
to an existing registered mark but did not make an applica tion to register his title, any 
application for registration after commencement shall be made under section 29  . 
  
(5) Any entry falling t o be made i n the old register as a result of subp aragraph (3)  shall be 
treated for the purposes of paragraph 2  as an e ntry rel ating to an existing registered mark.  
 
Licensing of registered mark  
 
7. (1) Sections 32  and 33 (2)  (licensing of registered trade mark: right s of exclusive licensee 
against granto r's successor in title) shall apply only in relation to licences gran ted afte r 
commencement; and the old law shall continue to apply in relation to l icences granted before 
commencement.  
  
(2) Existing entrie s under sec tion 36 of the Act of 1963 (registered  users) shall be deemed to 
be transferred on commencement to the new register  and shall have effect as if made under 
section 29  . 
  
(3) An applicatio n for registration as a registered user which is pending a t commencem ent 
shall be treated as an application  for registration of a licence under section 29 (1)  and shall 
proceed  accordi ngly, except that the Controller may require an applicant to amend the 
application so as to conform with the requirements of this Act. 
  
(4) An application for registration as a r egistered user which has been determined by the 
Controller but not fi nally de termined before commencement shall be dealt with under the old 
law, and any entry falling to be made in the old register as a resu lt of this subparagraph shall 
be treated for the purposes of paragraph 2  as an entry relating to an existing registere d mark.  
  
(5) Any proceedings pending on commencement under section 36 (7) or (9 ) of the Act of 
1963 (variation or cancellation of registr ation of re gistered user) shall be dealt with und er the 
old law (with any necessary alteration being made to the new r egister) . 
  
Pending applications for registration  
  
8. (1) The provisions of thi s paragraph apply where an application for registration of  a trade 
mark, within the meaning of the Act of 1 963, is pending at commencement.  
  
(2) Subject to paragraph 9 , the ap plicatio n shall be dealt with (and the registrability of the 
mark shall be deter mined) in accordance with the old law and any mark which, on that Unof ficial consolidated version  
 
determination, falls to be registered sha ll be treated for the purpose of this Schedule as an 
existing registe red mark . 
  
(3) Provision may be made by rules to enable pending applications fo r registration to 
continue in accordance with the procedur al provisio ns of this Act.  
 
Conversion of pending  application  
 
9. (1) This paragraph applies if an application which w as pendi ng at commencement has not 
been advertised under section 26 of the Act o f 1963. 
  
(2) If, in case where subparagraph (1)  applies, the applica nt gives notice to the Controller 
requesting that the registrability of the mark be determined in accordanc e with t he provisions 
of this Act, the Controller shall deal with the applicatio n accordingly.  
  
(3) Notice under subparagraph (2)  shall b e in the pr escribed form, shall be accompanied by  
the appropriate fee and shall be given no later than six months afte r commen cement.  
  
(4) Notice given under subparagraph (2)  shall be irrevocable a nd the application to which 
the notice relates shall be tr eated as if  it were made at commencement and as i f the date of 
filing were the date of commencement.  
 
Duration and ren ewal of registration  
 
10. (1) Section 47 (1)  (duration of original period of reg istration) applies in any case where 
the registrability of  a trade ma rk is determined in accordance with th e provisions of this Act; 
and the old law applies in any other case.  
 
(2) Sections 47 (2)  and 48 (renewal of registration) apply when the renewal fal ls due at or 
after commencement; and the old law applies i n any other  case.  
  
(3) For the purposes of this paragraph it is immaterial when the application is made or when 
the fee is pa id. 
 
Revocation for non -use 
 
11. (1) An application under section 34 of the Act of 1963 (removal from register or 
imposition of li mitation on  ground of non -use) which is pending a t commencement shall be 
dealt with under the old law (with any necess ary alte ration being made to the new register).  
  
(2) Subject to subparagraph (3 ), an application under section 51 (4)  on the grounds spec ified 
in section 51 (1) (a)  or (b) (revocation fo r non -use) may be made in relation to an existing 
registered mark at any time  after commencement.  
  
(3) No application for the revocation of the regi stration of an existing registered mark which 
was register ed by virtu e of section 35 of the Act of 1963 (de fensive registration of well -
known trade marks) may be made under section 51  until more than five years after 
commencement.  
  Unof ficial consolidated version  
 
Application for rectif ication &c . 
  
12. An application under section 40 or 42 of the Act of 1963 (rectification or correction of 
the register) which is pending at commencement shall be dealt with und er the o ld law (with 
any necessary alteration being made to the new register).  
 
Validity of existing registered marks  
 
13. The old law sha ll continue  to apply as regards the validity of t he registration of an 
existing registered mark; and no objection to t he valid ity of such a registration may be taken 
on the ground of failure to sat isfy the requirements of this Act.  
 
Certification marks  
 
14. (1) If, at commencement, a request is pending f or the amendment of the regulations 
governing the use of an existing certific ation mark, that request shall be dealt with under the 
old law.  
 
(2) In subparagraph (1)  “existing certification mark ” means a cer tification trade mark 
registered under the Act of  1963 immediately before commencement.  
 
Pre-commencement applications  in resp ect of trade marks for services . 
  
15. (1) If, at any time between 1st January, 1993 and commencement, an application was 
made to the Control ler for the registration of a trade ma rk in respect of services, this Act shall 
have effect, subject to subparagrap h (2) , as if — 
(a) the application were made at commencement; and  
(b) the date of filing were the date of commencement;  
and the Con troller sha ll deal with the application according ly. 
 
(2) Section 20 (3) of the Act of 1963 (separate applications for  registr ation of identical trade 
marks in respect of goods, etc.) shall apply i n relation to applications falling within 
subparagraph (1) — 
(a) with t he substitution of a reference to serv ices for the reference to goods or a 
description of goods; and  
(b) with the o mission of the proviso.  
 
16. The amendment effected by section 45  of the Patents (Amendment) Act 2006 to section 
61(2) shall not a ffect the c ontinuation of any bona fide use of a trade mark begun before 1 
January 1996.  
 
17. The amendment effected b y sectio n 43 (c)  of the Patents (Amendment) Act 2006  and the 
amendment effected  by section 45  of the said Act to section 63 shall not affe ct the righ ts of a 
person whose bona fide use of a trade mark to which section 63 applies and which is 
protected under  the Agr eement establishing the World Trade Organisation began before 1 
January  1996.* 
 
                                                 
* Patents Amendment Act 2006 (31/2006 )    Unof ficial consolidated version  
 
18. The amendments to this Act effected by the Eur opean Union  (Trade Marks) Regulations 
2018 shall not apply to any application for registration of a trade mark made un der this  Act 
before the coming into operation of those Regulations.* 
 
 Acts 
Referred to 
Copyright Act, 1963  1963, No. 10  
Consumer Informat ion Act, 19 78 1978, No. 1  
Continental Shelf Act, 1968 1968, No. 14  
Interpretation Act, 1937  1937, No. 38  
Maritime Juri sdiction  Act, 1959  1959, No. 22  
Partnership Act, 1890  53 & 54 Vict., c. 39  
Patents Act, 1992  1992, No. 1  
Petty Sessions (Ireland) Act, 185 1 14 & 15 V ict., c. 93  
Public Offices Fees Act, 1 879 42 & 43 Vict., c. 58  
Solicitors Act, 1954  1954, No. 36  
Statute of  Limitat ions, 1957  1957, No. 6  
Trade Marks Act, 1963  1963, No. 9  
 
 OJ No. L40 o f 11th February, 1989  
OJ No. Lll of 14th February, 1994  
© Government o f Ireland. Oireachtas Copyright Materi al is reproduced with the permission 
of the House of the Oireachtas  
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*S.I. No. 561 of 2018 Euro pean Union (Trade Marks) Regulations 2018