STATUTORY INSTRUMENTS . 
 
 
 
 
S.I. No. 628 of 2019  
 
 
 
 
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TRADE MARKS (AMENDMENT) RULES 2019  
 
  
2  [628] 
 
S.I. No. 628 of 2019 
 
TRADE MARKS (AMENDMENT) RULES 2019  
 
I, JOHN HALLIGAN, Minister of State at the Department of Business, 
Enterprise and Innovation, in exercise of the powers conferred on me by 
section 81 of the Trade Marks Act 1996 (No. 6 of 1996 ) (as adapted by the 
Jobs, Enterprise and Innovation (Alteration  of Name of Department and Title 
of Minister) Order 2017 (S.I. No. 364 of 2017)), and the Business, Enterprise 
and Innovation (Delegation of Ministerial Functions)(No. 2) Order 2017 (S.I. 
No. 570 of 2017), hereby make the following rules:  
 
Citation and com mencement . 
1. These Rules may be cited as the Trade Marks (Amendment) Rules 
2019.  
 
Definition.  
2. In these Rules, - 
“Act” means the Trade Marks Act, 1996 (No.6 of 1996);  
 “Principal Rules” means the Trade Marks Rules 1996 (S.I. No. 199 of 
1996), and (except wh ere the context otherwise requires), a reference to 
a Rule is a reference to a Rule of those Rules.  
 
Amendment of Rule 10.  
3. Rule 10 of the Principal Rules is amended in paragraph 3(c) by 
inserting “and Rule 41A” after “application under Rule 41”.     
 
4. The Principal Rules are amended by the insertion of the following Rule 
after Rule 17:  
 
“Observations  
 17A.  (1) An observation  made to the Controller under section 43(3) 
may include a request that the application be amended or refused on the 
grounds that it was filed in bad faith.  
(2) Any such request shall be submitted in duplicate and shall contain 
a statement in writing of the  grounds on which bad faith is claimed and 
shall be accompanied by evidence by way of statutory declaration.  
(3) The Controller shall on receipt of a request made under paragraph 
(2) send a copy of the request and accompanying statutory declaration 
to the applicant.  
(4) Unless the Controller otherwise directs, where a request made 
under paragraph (2) is not accompanied by evidence by way of a 
Notice of the making of this Statutory Instrument was published in  
“Iris Oifigi úil” of 13th December , 2019 . 
 [628]  3 
 
statutory declaration, the request shall be deemed to have been 
abandoned and the Controller shall proceed with the application 
accordingly.  
(5) An applicant who wishes to contest the request shall, within 28 
days of the issue by the Controller of copies of the statement mentioned 
in paragraph (3), file a counter -statement in duplicate with the 
Controller setting out th e extent to which that statement is admitted or 
disputed.  
(6) Unless the Controller otherwise directs, where an applicant fails 
to furnish a counter -statement within the period referred to in paragraph 
(5), the Controller shall be entitled to presume that  the applicant does 
not wish to contest the request and the Controller shall proceed with the 
application accordingly.  
(7) Persons and groups or bodies who make observations in 
accordance with paragraph (1) shall not thereby become a party to the 
proceedings on the application.”.  
 
Amendment of Rule 18A.  
5. Rule 18A of the Principal Rules is re -numbered as Rule 18B.  
 
6. The Principal Rules are amended by the insertion of the following after 
Rule 18:  
 
“Stay in Opposition proceedings  
(1) 18A.  (1) For the purposes of section 43(2B), at any stage during 
opposition proceedings, the Controller shall grant the parties, at their joint 
request, a stay in the proceedings for a minimum period of 2 months and a 
maximum period of one year from the date of the  request, for the express 
purpose of allowing for the possibility of a friendly settlement between the 
parties.  
 
(2) A second joint request for a stay, limited in duration as set out in 
paragraph (1) above, may be granted at the discretion of the Controller, b ut 
only if the Controller is satisfied that meaningful progress to reach a friendly 
settlement has been made.  
 
(3) The Controller shall refuse all subsequent requests for a stay.”.  
 
Amendment of Rule 19.  
7. Rule 19 of the Principal Rules is amended by inserting the following 
after paragraph (1):  
“(1A) Where the provisions of section 43A apply, the counter -statement 
filed by the applicant pursuant to paragraph (1) shall explicitly require 
the opponent to furnish proof of genuine use.”.  
 4  [628] 
 
Amendment of Rule  20. 
8. Rule 20 of the Principal Rules is amended by substituting the following 
paragraphs for paragraph (2):  
 
“(2) If the counter -statement filed in accordance with Rule 19 
contains a request pursuant to section 43A(1) that the opponent furnish 
proof that  the earlier mark(s) relied upon has  been put to genuine use 
within the 5 year period allowed for doing so, and where that 5 year 
period had expired at or before the filing date or date of priority of the 
applicant’s mark, the Controller shall require the opponent to furnish 
such proof by way of statutory declaration in its evidence under 
paragraph (1)  and shall send to the applicant a copy thereof.  
 
(3) The Controller shall refuse to accept a request that an opponent 
furnish proof of use which is received  after the opponent has filed 
evidence under paragraphs (1) and (2).  
 
(4) Unless the Controller otherwise directs, an opponent who fails 
to file evidence, including proof of genuine use pursuant to paragraph 
(2), shall be deemed to have abandoned his or her opposition and the 
Controller shall proceed with the application accordingly.”.  
 
Amendment of Rule 41.  
9. Rule 41 of the Principal Rules is amended –  
 
(a) by substituting “ Procedure on application for revocation, and 
rectification of the register ” for the heading to this Rule , 
 
(b) in paragraph (1) by deleting “or for a declaration of invalidity 
under section 52” , 
 
(c) in paragraph (3) by deleting subparagraphs (c) and (d) , 
 
(d) in paragraph (4) by deleting “In the case of an application to the 
Controller for revocation under section 51 or for the rectification 
of an error or omission in the register under section 67,”.  
 
10. The Principal Rules are amended by the insertion of the following 
Rules after Rule 41:  
 
 
 
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“Procedure on application for declaration of invalidity  
41A. (1) An application to the Controller for a declaration of invalidity 
under section 52 shall contain a statement of the grounds on which the 
application is made and shall be accompanied by the prescribed fee.  
 
(2) Where any application is made under paragraph (1) of this Rule, 
the Controller shall send a copy of the application and the statement to 
the proprietor.  
 
Counter -statement  
41B. (1) Within three months of the issue by the Controller of the 
application for a declaration of invalidity to the proprietor, the 
proprietor may file a counter -statement in duplicate with the Controller.  
 
(2) Subject to paragraph (1), should the proprietor of the later trade 
mark wish to invoke the provisions of section 52A(1), the proprietor 
must put the applicant for a declaration of invalidity to such notice in its 
counter -statement, failing which the Controller shall reject any 
subsequent attempts by the proprietor to put the applicant for a 
declaration of invalidi ty to such notice.  
 
(3) The Controller shall not declare a trade mark to be invalid merely 
because the proprietor fails to file a counter -statement.  
 
Evidence in support of application for declaration of invalidity   
41C.  (1) Within three months of the issue by the Controller to the 
applicant of a copy of the counter -statement under Rule 41B, the 
applicant shall file with the Controller such evidence by way of 
statutory declaration as he or she desires to adduce in support of h is or 
her application for a declaration of invalidity and shall send to the other 
party a copy thereof.  
 
(2) If the proprietor’s counter -statement contains a request pursuant to 
section 52A that the applicant furnish proof that the earlier trade 
mark(s) r elied upon have been put to genuine use within the 5 year 
period allowed for doing so, and where that 5 year period had expired at 
the filing date or date of priority of the proprietor’s later trade mark, the 
applicant shall file such proof of use, (as req uired by section 52A(2)), 
by way of statutory declaration and shall send to the proprietor a copy 
thereof.  
 
(3) Thereafter, the provisions of Rules 21 to 25 shall apply mutatis 
mutandis.  6  [628] 
 
 
(4) An applicant for a declaration of invalidity who fails to file 
evidence under paragraph (1) shall be deemed to have abandoned his or 
her application for a declaration of invalidity.  
 
(5) In the event of failure to file proof under paragraph (2) if so 
requested, the application for a declaration of invalidity on the ba sis of 
an earlier trade mark shall be rejected pursuant to section 52A(3).”.  
 
Amendment of Rule 60.  
11. Rule 60 of the Principal Rules is amended in paragraph 3(f) by inserting 
“and Rule 41A(1)” after “applications under Rule 41(1)”.     
 
Amendment of Rule  63. 
12. Rule 63 of the Principal Rules is amended by substituting the following 
paragraph for paragraph (2):  
“(2) The Rules excepted from paragraph (1) of the Rules are Rule 
10(3) (failure to file address for service), Rule 12(5) (time limit for 
payment of application fee), Rule 18(1) (time for filing opposition to 
registration), Rule 19(1) (time for filing counter -statement), Rule 25(3) 
(election by party to file written submissions in lieu of attending at a 
hearing), Rule 39 (delayed renewal), Rule 40 (restoration of 
registration) and Rule 41B(1) (time for filing counter -statement in 
response to an application for a declaration of invalidity).”.  
 
13. Schedule 3 of the Patents, Trade Marks and Designs (Fees) Rules 2001 
(S.I. No. 482 of 2001) is amended in reference 15 by inserting “or Rule 41A” 
within the brackets, after “(Rule 41)”.  
 
 
 
 GIVE N under my hand,  
     11 December  2019  
 
 
 
 
JOHN HALLIGAN , 
    Minister of State at the Department of Business, Enterprise and 
Innovation  
 
  [628]  7 
 
EXPLANATORY NOTE  
 
(This note is not part of the Instrument and does not purport to be a legal 
interpretation ) 
  
The amendment of Rule 10 is a consequence of the sepa ration of procedures 
for dealing with rectifications of the register and revocations (Rule 41) from 
those dealing with applications for declarations of invalidity (now under new 
Rule 41A).   
 
The inclusion of new Rule 17A is to set out the modalities for filing 
observations on bad faith grounds in relation to a trade mark application.   
 
The inclusion of new Rule 18A is for the purpose of setting a maximum period 
for any stay requested in oppos ition proceedings.  
 
The amendment to Rule 19 is to set out when, in opposition proceedings, an 
applicant for the registration of a trade mark may request the opponent to 
furnish proof of use.  
 
The amendment to Rule 20 sets out the requirements for an oppo nent, subject 
to a request pursuant to section 43A of the Trade Mark s Act of 1996, to file 
proof of use of their trade mark.  
 
The amendments to Rule 41 are for the purposes of confining the rule to 
provisions relating to revocations and rectifications of the register.   
 
New Rules 41A, 41B and 41C are for the purposes of setting out separate 
procedures for a declaration of invalidity which were previously in Rule 41.  
 
The amendment to Rule 60 is to ensure that applications for a declaration of 
invalidity c ontinue to be available for inspection under certain prescribed 
conditions.  
 
The amendment to Rule 63 is to provide that the time period for filing a 
counter -statement in invalidity proceedings cannot be extended beyond the 
period provided for in Rule 41B( 1).  
 
The amendment to Schedule 3 of SI 482 of 2001 - Patents, Trade Marks and 
Designs (Fees) Rules, 2001 is for the purposes of inserting a reference to new 
Rule 41A in the fee item at reference No. 15.  8  [628] 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
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