STATUTORY INSTRUMENTS. 
S.I. No. 229 of 2000. 
 
TRADE MARKS ACT, 1996 (COMMUNITY  TRADE MARK) REGULATIONS, 2000. 
S.I. No. 229 of 2000. 
TRADE MARKS ACT, 1996 (COMMUNITY  TRADE MARK) REGULATIONS, 2000. 
I, TOM KITT, Minister of State at th e Department of Enterprise, Trade and 
Employment, in exercise of the powers conf erred on me by sections 57, 66, 81 and 82 of 
the Trade Marks Act, 1996 (No. 6 of 1996)  (as adapted by the Enterprise and 
Employment (Alteration of Name  of Department and Title of  Minister) Order, 1997 ( S.I. 
No. 305 of 1997 ), and the Enterprise, Trade and Employment (Deleg ation of Ministerial 
Functions) (No. 2) Order, 1997 ( S.I. No. 330 of  1997 )), and, in so far as the following 
regulations are made under the said section 82, with the sanction of the Minister for 
Finance, and a resolution approving a draft of these regulations having been passed by 
both Houses of the Oireachtas in accordance w ith section 3(3) of the said Act, hereby 
make the following regulations: 
Citation and Commencement.  
1. (1) These Regulations may be cited as  the Trade Marks Act, 1996 (Community 
Trade Mark) Regulations, 2000. 
(2) These Regulations shall come into  operation on the 20th day of July 2000. 
Interpretation.  
2. (1) In these Regulations— 
“Act of 1996” means the Trade Marks Act, 1996 (No. 6 of 1996) , a nd a reference to a 
section is a reference to a section of that Act,  unless it is indicated that reference to some 
other enactment is intended; 
“Community Trade Mark Regulation” mean s Council Regulation (EC) No. 40/94 of 20 
December 1993 on the Community trade mark(1) ; 
“Community Trade Mark Rules” means Co mmission Regulation (EC) No. 2868/95 of 13 
December 1995 implementing Council Regulation (EC) No. 40/94 on the Community 
trade mark(2) . “Rules” means the Trade Marks Rules, 1996 ( S. I. No. 199 of 1996 ), and a reference to a 
rule shall be construed as a reference to a ru le of those Rules unle ss the context otherwise 
requires. 
(2) A word or expression that is used in th ese Regulations and is al so used in the Rules 
has, unless the contrary intention appears, the same meaning in these Regulations as it 
has in the Rules. 
(3) In these Regulations a reference to a Regulation, paragraph or subparagraph is a 
reference to a Regulation, paragraph or subparagraph of the provision in which the 
reference occurs unless it is indicated that re ference to some other provision is intended. 
Notification to the Controller of seniority.  
3. Where the Controller receives a notific ation under Rule 28(3 ) of the Community 
Trade Mark Rules pursuant to Article 34 or 35 of the Commu nity Trade Mark Regulation 
of a seniority claim based on an earlier regist ered trade mark, the Controller shall note the 
said seniority claim and such claim is hereby prescribed as a matter to be entered in the 
register. 
Determination a posteriori  of invalidity and liability to revocation.  
4. (1) Where the proprietor of a Community trade mark claims the seniority of a 
registered trade mark which has been removed from the register under section 48 or has 
been surrendered under secti on 50 after registration of the Community trade mark, 
application may be made to the Controller or to the Court by any person for a declaration that, if the registered trade mark had not b een so removed or surre ndered, it would have 
been liable to be revoked pursuant to section 51 or deemed invalid pu rsuant to section 52, 
and the Controller or the Court may grant such a declaration accordingly. 
(2) Where a declaration is made pursuant to  paragraph (1) the re gistered trade mark 
shall be deemed to have been revoked pursuan t to section 51 or invalidated pursuant to 
section 52, as the case may be, and the Controller shall notify the Office for 
Harmonisation in the Internal Market  of any such declaration made. 
(3) Where a registered trade mark has been surrendered only in respect of some of the 
goods and services for which it is registered, pa ragraph (1) shall apply only in relation to 
such goods and services. 
(4) The provisions of section 51 or, as th e case may be, section 52, and sections 76, 78 
and 79 shall apply, with necessa ry modifications, in relation to an application to which 
paragraph (1) applies. 
Privilege for communication with professional representatives.  
5. A professional representative, within th e meaning of Article 89 of the Community 
Trade Mark Regulation, whose name appears on the list maintained  pursuant to that Article shall be deemed, for the purpose of a conversion application, to be a registered 
agent for the purposes of section 91. 
Power of seizure and search concerning infringements of Community trade mark.  
6. For the purposes of section 25— 
(a) the reference in that section to a regi stered trade mark shall be construed as 
including a reference to a Community trade mark, and 
(b) section 21(2) (definition of infringing goods) shall appl y as if references to a 
registered trade mark in that section included a reference to a Community 
trade mark. 
Designation of Community trade mark courts.  
7. For the purposes of the Community Trade Mark Regulation— 
(a) the High Court is hereby designated as a Community trade mark court of first 
instance, and 
(b) the Supreme Court is hereby designated as a Community trade mark court of 
second instance. 
Conversion applications.  
8. (1) Where the Controller decides that a request for conversion of a Community trade 
mark application or of a Community trade ma rk into a national trade mark application 
pursuant to Article 108 is admissible (in this Regulation referred to as a “preliminary 
decision”), the request shall, subject to Article 110 of the Community Trade Mark 
Regulation, be treated as an application for registration of a trade mark under the Act of 
1996. 
(2) The fees prescribed by the Rules in re spect of an application under the Act of 1996 
shall be payable in respect of a request to which paragraph (1 ) applies where the 
preliminary decision is to the effect  that the request is admissible. 
(3) Where the Controller has made a prelimin ary decision that the request is admissible 
he or she shall notify the a pplicant or holder in writing to that effect, and such 
notification shall also: 
(a) request payment of the fees refe rred to in paragraph (2), and 
(b) request one or more of the following to be forwarded to him or her, namely— 
(i) a translation in the English la nguage of the request and of the 
documentation accompanying it; (ii) a representation of the trade mark, 
and (iii) if not already indicated in the ap plication, an address for service in the 
State. 
(4) The fees referred to in paragraph (3)( a) and the matters specified in paragraph 
(3)(b ) shall be furnished to the Controller w ithin three months of the giving of the 
notification by the Controller. 
(5) Where the fees referred to in paragraph 3( a) or any of the items specified in 
paragraph 3( b) are not furnished to the Controller  within the period referred to in 
paragraph (4), the Controller may refuse the application. 
(6) The provisions of Rule 9 of the Rules sh all apply to the translation referred to in 
paragraph (3)( b)(i). 
Pending conversion applications.  
9. (1) The fees prescribed by the Rules in respect of an applic ation under the Act of 
1996 shall be payable in respect of a re quest to which paragraph (2) applies. 
(2) Where, on the commencement of these Re gulations, a request for the conversion of 
a Community trade mark application or of a Community trade mark into a national trade 
mark application pursuant to Article 108 had be en received by the Patents Office, and the 
request was still pending at such date, the Controller shall,  as soon as pr acticable after 
such commencement, decide whether the request is admissible and, where so admissible, the request shall, subject to Article 110, be tr eated as an application for registration of a 
trade mark under the Act of 1996, and the Contro ller shall notify the a pplicant or holder, 
in writing, of the making of these Regulations, and such notif ication shall also— 
(a) request payment of the fees refe rred to in paragraph (1), and 
(b) request one or more of the following to be forwarded to him or her, namely— 
(i) a translation in the English la nguage of the request and of the 
documentation accompanying it, 
(ii) a representation of the trade mark, 
and 
(iii) if not already indicated in the ap plication, an address for service in the 
State. (3) The fees referred to in paragraph (2)( a) and the matters specified in paragraph 
(2)(b ) shall be furnished to the Controller w ithin three months of the giving of the 
notification by the Controller. 
(4) Where the fees referred to in paragraph 2( a) or any of the items specified in 
paragraph 2( b) are not furnished to the Controller  within the period referred to in 
paragraph (3), the Controller may refuse the application. 
(5) The provisions of Rule 9 of the Rules sh all apply to the translation referred to in 
paragraph (2)( b)(i). 
Provision relating to certain conversion applications.  
10. Where an application for a Community trade mark— 
(a) is filed on 1st April 1996, or 
(b) is deemed to have been filed on that  day by virtue of Article 143(4) of the 
Community Trade Mark Regulation, or 
(c) is filed within 3 months after that da te, it shall, subject to Regulation 11, 
maintain its filing date, and shall, for the purposes of conversion of that 
application into a national  application, be treated as having been filed on 1st 
April 1996 in a case to which paragraph ( a) or ( b) applies and shall be 
considered by the Patents Office on the sa me basis as if it were an application 
which had been filed in the Patents O ffice after the commencement of the Act 
of 1996. 
Priority and Seniority of conversion applications.  
11. A trade mark application resulting from the conversion of a Community trade mark 
application or Community trade mark shall maintain the date of priority of the said Community trade mark application or said Community trade mark and, where 
appropriate, the seniority of an  earlier registered trade ma rk claimed under Article 34 or 
35 of the Community Trade Mark Regulation. 
Designation of central industrial property office in the State.  
12. The Patents Office is hereby designated as the central industrial property office in 
the State for the purposes of Articles 109 and 110 of the Community Trade Mark Regulation. 
Amendment of Trade Marks Rules, 1996.  
13. The Rules are hereby amended by the substitution— (a) in Rule 19(1) of “Within three months  of the issue by the Controller to the 
applicant” for “Within three months of receipt by the applicant”, 
(b) in Rule 20(1) of “Within three months  of the issue by the Controller to the 
opponent” for “Within three months of receipt by the opponent”, and 
(c) in Rule 41(3) of “Within three months  of the issue by the Controller to the 
proprietor” for “Within three months of receipt by the proprietor”. 
The fees prescribed by these Regulations ar e sanctioned by the Mini ster for Finance. 
GIVEN under my Official Seal , this 18th day of July, 2000. 
CHARLIE McCREEVY, 
Minister for Finance. 
GIVEN under my hand, 14th July, 2000. 
TOM KITT, 
 
Minister of State at the Depart ment of Enterprise, Trade and 
Employment. 
EXPLANATORY NOTE. 
(This note is not part of these Regulati ons and does not purport to be a legal 
interpretation. ) 
The Office for Harmonisation in the Intern al Market (OHIM), based in Alicante, 
Spain, is primarily engaged in the registrati on of Community trade marks which are valid 
in all EU Member States. The Community tr ade mark system was introduced in April 
1996. It co-exists with nationally registered  trade marks. Having regard to the co-
existence of Community trade marks and national trade marks, these Regulations 
introduce certain technical provisions. 
Under Community trade mark law a Community  trade mark may claim the seniority of 
an earlier trade mark that has been register ed in the State. Where seniority has been 
claimed OHIM notifies the Patents Office. Thes e Regulations provide that the Controller 
of Patents, Designs and Trade Marks shall r ecord this seniority claim in the register. 
Seniority is maintained even after the ear lier registered trade mark is removed under 
section 48 of the Trade Marks Act, 1996 or surr endered under section 50 of the same Act 
by the proprietor. In order to allow any person to challenge the seniority of a Community 
trade mark, these Regulations provide that a pplications for revocation or invalidity of 
registered trade marks may be made a posteriori  — i.e., after the registered marks are 
removed under section 48 or surrendered under section 50. For the purpose of conversion applications th e existing statutory ri ghts of privileged 
communications between a person and his/her registered trade mark agent will be 
extended to a professional representative with respect to Community trade marks. 
The Regulations extend the provisions of section 25 of the Trade Marks Act, 1996 
(which deals with infringing goods, materials or articles and the power of seizure and 
search in relation to such goods etc) to cover a Community trade mark as well as a 
registered trade mark. 
The Regulations designate the High Court as  a Community trade mark court of first 
instance and the Supreme Court as a Commun ity trade mark court of second instance. 
Where the Controller decides that the c onversion of a Community trade mark or 
Community trade mark application is admissible, it will be treate d as a national trade 
mark application. 
The Patents Office is designated as the central industrial property offi ce in the State for 
the purposes of Articles 109 and 110 of th e Community Trade Mark Regulations. 
Certain time limits in the Trade Mark Rule s ( S.I. No. 199 of 1996 ) are amended in 
order to ensure that there is consistency in the methods of determining time limits. 
(1) O.J. No. L11, 14.1.94, p.1. 
(2) O.J. No. L303, 15.12.95, p.1.