STATUTORY INSTRUMENTS.
S.I. No. 562 of 2018
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TRADE MARKS (AMENDMENT) RULES 20182[562]
S.I. No. 562 of 2018
TRADE MARKS (AMENDMENT) RULES 2018
I, HEATHER HUMPHREYS, Minister for Business, Enterprise and Inno-
vation, in exercise of the powers conferred on me by section 81 of the TradeMarks Act 1996 (No. 6 of 1996), as adapted by the Jobs, Enterprise and Inno-vation (Alteration of Name of Department and Title of Minister) Order 2017(S.I. No. 364 of 2017), hereby make the following rules:
Citation and commencement.
1. These Rules may be cited as the Trade Marks (Amendment) Rules 2018
and shall come into operation on 14 January 2019.
Definition.
2. In these Rules, “Principal Rules” means the Trade Marks Rules 1996 (S.I.
No. 199 of 1996), and (except where the context otherwise requires) a referenceto a Rule is a reference to a Rule of those Rules.
Amendment of Rule 4.
3. Rule 4 of the Principal Rules is amended—
(a) by substituting the following paragraphs for paragraphs (2) and (3):
“(2) Fees shall be paid in the currency of the State.(3) Payment of a fee or fees may be made by any method acceptable
to the Controller.”, and
(b) by deleting paragraph (4).
Amendment of Rule 6.
4. Rule 6 of the Principal Rules is amended by the substitution of “Nice
Agreement Concerning the International Classification of Goods and Servicesfor the Purposes of the Registration of Marks of 15 June 1957” for “Nice NiceAgreement Concerning the International Classification of Goods and Servicesfor the Purposes of the Registration of Marks (1957), as revised at Stockholm(1967) and at Geneva (1977), and as amended”.
Representation of trade mark.
5. The Principal Rules are amended by inserting the following Rule after
Rule 12:
“12A. (1) For the purposes of section 37 of the Act, an application
for registration of a trade mark shall be made in accordance with para-graph (2)( a)t o( k), as appropriate and—
Notice of the making of this Statutory Instrument was published in
“Iris Oifigiúil” of 28th December , 2018.[562] 3
(a) shall include a representation of the mark in respect of which
registration is being sought, and
(b) may include a description of the representation concerned
and, where such a description is included, shall accord withthe representation and shall not extend the scope of thatrepresentation.
(2) Where the application for the registration of a trade mark con-
cerns any of the trade mark types listed in subparagraphs ( a)t o( k),
the type of the trade mark and its representation shall accord witheach other as follows:
(a) in the case of a trade mark consisting exclusively of words
or letters, numerals, other standard typographic charactersor a combination thereof (in these Rules referred to as a“word mark”), the representation of the mark shall consistof a reproduction of the mark in standard script and layout,without any graphic feature or colour;
(b) in the case of a trade mark where non-standard characters,
stylisation or layout, or a graphic feature or a colour areused and consist exclusively of figurative elements (in theseRules referred to as a “figurative mark”), the representationof the mark shall consist of a reproduction of the mark show-ing all its figurative elements and, where applicable, itscolours;
(c) in the case of a trade mark consisting of a combination of
elements of a word mark as referred to in subparagraph ( a)
and elements of a figurative mark as referred to in subpara-graph ( b), then the representation of the mark shall consist
of a reproduction of the mark showing both the word andfigurative elements and, where applicable, the colours (inthese Rules referred to as a “combined mark”);
(d) in the case of a trade mark consisting of, or extending to, a
three-dimensional shape, including the product itself, pack-aging, containers or their appearance (in these Rulesreferred to as a “three-dimensional shape mark”), the fol-lowing applies:
(i) the representation of the mark shall consist of either a
graphic reproduction of the shape, including computer-generated imaging, or a photographic reproduction;
(ii) the graphic or photographic reproduction may contain
different views;
(iii) where the representation is not provided electronically,
it may contain up to six different views;4[562]
(iv) the representation which most characteristically illus-
trates the mark shall be shown in the space indicatedin Form No. 1 and the additional perspectives shall besubmitted on different sheets;
(e) in the case of a trade mark consisting of the specific way in
which the mark is placed or affixed on the product (in theseRules referred to as a “position mark”), the followingapplies:
(i) the representation of the mark shall consist of a repro-
duction which appropriately identifies the position ofthe mark and its size or proportion with respect to therelevant goods;
(ii) the elements which do not form part of the subject-
matter of the registration shall be visually disclaimedpreferably by broken or dotted lines;
(iii) the representation may be accompanied by a description
detailing how the sign is affixed on the goods;
(f) in the case of a trade mark consisting exclusively of a set of
elements which are repeated regularly (in these Rulesreferred to as a “pattern mark”), the representation of themark shall consist of a reproduction showing the pattern ofrepetition. The representation may be accompanied by adescription detailing how its elements are repeatedregularly;
(g) in the case of a trade mark referred to in clause (i) or (ii) (in
these Rules referred to as a “colour mark”), where the trademark consists exclusively of—
(i) a single colour without contours, the representation of
the mark shall consist of a reproduction of the colourand an indication of that colour by reference to a gener-ally recognised colour code, or
(ii) a combination of colours without contours, the represen-
tation of the mark shall consist of a reproduction thatshows the systematic arrangement of the colour combi-nation in a uniform and predetermined manner and an
indication of those colours by reference to a generallyrecognised colour code and may include a descriptiondetailing the systematic arrangement of the colours;
(h) in the case of a trade mark consisting exclusively of a sound
or combination of sounds (in these Rules referred to as “asound mark”)—[562] 5
(i) the representation of the mark shall consist of an audio
file reproducing the sound or by an accurate transcrip-tion of the sound in musical notation, and
(ii) where the representation of the mark consists exclus-
ively of an audio file, the entire application shall be sub-mitted in electronic format;
(i) in the case of a trade mark consisting of, or extending to, a
movement or a change in the position of the elements of themark (in these Rules referred to as “a motion mark”)—
(i) the representation of the mark shall consist of a video
file or by a series of sequential still images showing themovement or change of position,
(ii) where still images are used, the images may be num-
bered or accompanied by a description explaining thesequence, and
(iii) where the representation of the mark consists exclus-
ively of a video file, the entire application shall be sub-mitted in electronic format;
(j) in the case of a trade mark consisting of, or extending to, the
combination of image and sound (in these Rules referred toas “a multimedia mark”)—
(i) the representation of the mark shall consist of an audio-
visual file containing the combination of the image andthe sound, and
(ii) where the representation of the mark consists exclus-
ively of an audio-video file, the entire application shallbe submitted in electronic format;
(k) in the case of a trade mark consisting of elements with holo-
graphic characteristics (in these Rules referred to as “a holo-gram mark”)—
(i) the representation of the mark shall consist of a video
file or a graphic of photographic reproduction contain-ing the views which are necessary to sufficiently identifythe holographic effect in its entirety, and
(ii) where the representation of the mark consists exclus-
ively of a video file, the entire application shall be sub-mitted in electronic format.6[562]
(3) Where the representation of the trade mark is required to be
provided electronically, the Controller shall determine the format andsize of the electronic file as well as any other technical specifications.
(4) Where the representation of the trade mark is not required to
be provided electronically, that representation shall be provided inaccordance with Rule 12(3)( a).”.
Amendment of Rule 13.
6. Rule 13 of the Principal Rules is amended by inserting “or such documen-
tary evidence as the Controller may require” after “a certificate by the com-petent national authority”.
General powers of Controller in relation to opposition proceedings.
7. The Principal Rules are amended by inserting the following Rule after
Rule 18:
“18A. (1) Save as otherwise provided by these Rules or the Act, the Con-
troller may give such directions as to the management of any oppositionproceedings as he or she thinks fit, and may in particular do any of thefollowing:
(a) require a document, information or evidence to be filed within
such period as the Controller may specify;
(b) require a translation of any document;
(c) elect to hold a hearing by video conference or any other method
of direct oral communication;
(d) consolidate proceedings;
(e) direct that part of any proceedings be dealt with as separate pro-
ceedings;
(f) subject to Rules 20, 21, 22 and 23, exclude any evidence which the
Controller considers to be inadmissible.”.
Amendment of Rule 21.
8. Rule 21 of the Principal Rules is amended—
(a) by designating Rule 21 as paragraph (1),
(b) by substituting, in that designated paragraph (1), “the applicant may”
for “the applicant shall”, and
(c) by inserting, after that designated paragraph (1), the following
paragraph:
“(2) If the applicant chooses not to file evidence under this Rule,
the evidence filing stage shall be deemed to be completed and pro-ceedings shall progress in accordance with the provisions of Rule 25.”.[562] 7
Amendment of Rule 25.
9. Rule 25 of the Principal Rules is amended—
(a) by inserting the following paragraph after paragraph (2):
“(2A) Subject to paragraph (6), a party who does not elect a prefer-
ence pursuant to paragraph (1) shall be deemed to have concludedtheir presentation of evidence and arguments.”,
(b) by inserting the following paragraph after paragraph (3):
“(3A) ( a) If both parties elect to file written submissions, the Con-
troller shall forward to each party a copy of the written sub-missions of the other party.
(b) Within one month of the receipt of the written submissions
of the other party under paragraph (3), each party may filewith the Controller written submissions which shall be con-fined to matters strictly in reply to the other party’s sub-missions, and, shall send a copy of any submissions so filedto the other party.”,
(c) in paragraph (7), by deleting “and pay the prescribed fee”, and
(d) in paragraph (8), by deleting “and pay the prescribed fee”.
Division of registration.
10. The Principal Rules are amended by inserting the following Rule after
Rule 28:
“28A. (1) ( a) At any time after the registration by the Controller
of an application, the proprietor may send to the Controllera request for a division of the registration (“the originalregistration”) into 2 or more separate registrations(“divisional registrations”), indicating for each divisionalregistration those goods or services of the original regis-tration which are to be covered by it.
(b) A request for a division of a registration shall be
accompanied by the prescribed fee.
(2) A divisional registration shall be treated as a separate regis-
tration for the purposes of the Act and these Rules. A divisional regis-tration shall have the same date of filing and priority date (if any) asthe original registration.
(3) A request under paragraph (1)( a) shall, in relation to the original
registration, have the effect that the goods or services which are tobe covered by any divisional registration shall be excluded from theoriginal registration.8[562]
(4) Upon division of an original registration in respect of which
notice had been given to the Controller of particulars relating to thegrant of a licence, or a security interest or any right in or under themark, the notice and the particulars shall, where appropriate, bedeemed to apply in relation to each of the divisional registrations.”.
Amendment of Rule 32.
11. Rule 32 of the Principal Rules is amended by substituting the following
paragraph for paragraph (2):
“(2) Following acceptance of amended regulations, the Controller shall
publish notice in the register and in the Journal to that effect and any suchnotice shall state the date of acceptance and that copies of the amendedregulations are available for public inspection at the Office.”.
Amendment of Rule 37.
12. Rule 37 is amended—
(a) by substituting “not later than six months” for “not earlier than six
months nor later than one month”, and
(b) by substituting “expiry however, the Controller shall not be held
liable if he or she fails to give such information” for “expiry”.
Amendment of Rule 41.
13. Rule 41(3) of the Principal Rules is amended—
(a) in subparagraph ( a), by substituting “shall send a copy thereof to the
applicant” for “the Controller shall send a copy thereof to the appli-cant”, and
(b) by inserting the following subparagraph after subparagraph ( b):
“(ba) where the proprietor has filed the notice of opposition,
accompanied by evidence of use, the proprietor shall send acopy thereof to the applicant.”.
Amendment of Rule 61.
14. Rule 61 of the Principal Rules is amended, in paragraph (3), by deleting
“and pay the prescribed fee”.
GIVEN under my Official Seal,
18 December 2018.
HEATHER HUMPHREYS,
Minister for Business, Enterprise and Innovation.[562] 9
EXPLANATORY NOTE
(This note is not part of these Rules and does not purport to be a legal
interpretation.)
The amendments to Rules 32 and 37 and the inclusion of new Rules 12A and
28A of the Trade Marks Rules 1996 are necessary to give effect to Directive(EU) 2015/2436 of the European Parliament and of the Council of 16 December2015 amending Directive 2008/95/EC relating to trade marks. Rule 12A laysdown specific rules and requirements for the representation of certain types oftrade mark, in accordance with the trade mark's specific nature and attributes;Rule 32(2) is amended to provide that amendments to regulations governingCollective Marks, should be recorded in the register; the amendment to Rule37 changes the timeframe within which the Controller shall send the registeredproprietor a notice that the registration may be renewed, in line with Article 49of the Directive; and new Rule 28A provides for the division of a registrationin line with Article 41 of the Directive.
The amendment to Rule 4 is for the purpose of updating practice and pro-
cedure relating to fee payments.
The amendment to Rule 6 corrects a typographical error.The amendment to Rule 13 provides for a more up-to-date and flexible
approach relating to the submission of priority documents.
The inclusion of new Rule 18A and the amendments to Rules 21 and 25 are
for the purposes of setting out general powers of the Controller relating toopposition proceedings and further clarifying certain procedural steps regardingthe filing of evidence, exchanges of written submissions and hearings in oppo-sition proceedings. In particular, amendments to Rule 25 and 61 remove refer-ences to the payment of a prescribed fee by applicants for hearings as a fee isno longer prescribed.
The amendment to Rule 41 is for the purpose of clarifying certain procedural
steps around oppositions to the filing of an application for revocation orinvalidity.BAILE ÁTHA CLIATH
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