ORGANIZACIÓN MUNDIAL 
DEL COMERCIO IJ>/r-J/1/1~/1'/1* 
17 de julio de 1996 
(96-2728) 
Consejo de los Aspectos de los Derechos de J>ropiedad 
Intelectual relacionados con el Comercio Original: inglés 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
Irlanda 
En el presente documento se reproducen1 las leyes y reglamentos siguientes, notificados por 
Irlanda en virtud de lo dispuesto en el párrafo 2 del artículo 63 del Acuerdo (véase el documento 
IP /N / 1/IRL/ 1): 
Ley de Marcas de Fábrica o de Comercio, 1963 
Ley de Marcas de Fábrica o de Comercio, 1963 
(Orden de Entrada en Vigor de 1964) 
Ley de Marcas de Fábrica o de Comercio, 1996 
*Este documento anula y reemplaza al documento IP /N / 1/IRL/T / 1 de 17 de julio de 1996. 
1En inglés solamente. 2 
42 
44 IPINI 1I1RL/T /1 
Page 2 
.Vllmber 9 of 1963 
TRADE MARKS ACT, 1963 
ARRANGE}IENT OF SECTIONS 
PART I 
PRELIMINARY AND GENERAL 
Section. 
1. Short title a.nd commencement. 
2. Interpretation. 
3. Power of Minister to make rules. 
4. Fees. 
5. Exercise of powers of l\1inister. 
6. Excluded days. 
7. Expenses. 
8. Repeal and savings. 
PART II 
PROVISIONS RELATING TO REGISTRATION 
9. The register of trade marks. 
10. No action for infringement of unregistered trade mark. 
11. Registration to be in respect of particular goods. 
12. Right given by registration in Part A and infringement 
thereof. 
13. Right given by registration in Part B and infringement 
thereof. 
14. Infringement by breach of certain restrictions. 
15. Saving for vested rights. 
16. Saving for use of name, address or description of goods. 
17. Distinctiveness requisite for registration in Part A. 
~E-krHA. CLIATR: 
ARNA rnoILsro AG OIFIG AN tSOLATRAIR. 
Le oetUlnach on 
OIFIG DtOLTA FOILSEACRAN RIALTAIS. AN STUARA. ARD.OIFro AN PROlST. 
BAILE ATRA CLIATE, 
00 trl aon dloltoir .Iesbh&r. 
[Luach Ceithre..Scilling is Se Phiri.gi?i. Glan] 
DUBLIN: 
PUBLISHED ""BY-THE STATIONERY. OFFICE. 
To be purcha.eed from· t.h~ 
GOVERNMENT PUBLICATIONS SALE..--OFFICE, a.p.o. ARCADE, DUBLIN, 
or through any Book.eeUor. 
[Price. POUr. Shillings and SixP6'nU- Net] [1963.] Trade J}farks Act, 1963. 
Section. IP IN 11 IIRL/T 11 
Page 3 
[No. 9.] 
18. Capability of distinguishing requisite for registration in 
Part B. 
19. Prohibition of registration of deceptive and certain other 
matter. 
20. Prohibition of registration of identical and resembling 
trade marks. 
21. Registration in Part A to be conclusive as to validity 
after seven years. 
22. Registration subject to disclaimer. 
23. Words used as name or description of an article or sub-
stance. 
24. Effect of limitation as to colour and of absence thereof. 
25. Application for registration. 
26. Opposition to registration. 
27. Registration. 
28. Duration and renewal of registration. 
29. Registration of parts of trade marks and of trade marks 
as a series. 
30. Powers of and restrictions on assignment and transmission. 
31. Certain trade marks to be associated so as to be assignable 
and transmissible as a whole only. 
32. Power of registered proprietor to assign and give receipts. 
33. Registration of assignments and transmissions. 
34. Removal from the register and imposition of limitations on 
ground of non-use. 
35. Defensive trade marks. 
36. Registered users. 
37. Proposed use of trade mark by corporation to be con­
stituted. 
38. Use of one of associated or substantially identical trade 
marks equivalent to use of another. 
39. Use of trade mark for export trade. 
40. General power to rectify entries in register. 
41. Power to expunge or vary registration for brea.ch of 
condition. 
42. Correction of register. 
43. Alterat~on of registered trade mark. 
44. Adaptation of entries in register to amended or substituted 
classification of goods. 
45. Certification trade marks. 
46. Registration of marks by Ministers. 
47. Misuse of trade marks indicative of Irish origin. 
PART ITI 
PROVISIONS RELATING TO POWERS AND DUTIES OF CONTROLLER 
AND TO LEGAL PROCEEDINGS. 
48. Preliminary advice by Controller as to distinctiveness. 
49. Controller may consult Attorney General. 
50. Hearing before exercise of Controller's discretion. 
51. Power of Controller to award costs. IP IN 11 IIRL/T 11 
Page 4 
[1963.] Trade lvlarks Act, 1963. [No. 9.] 
Section. 
52. Registration to be prima facie evidence of validity. 
53. Certificate of validity. 
54. Costs of the Controller in Court proceedings. 
55. Trade usage and other matters to be considered. 
56. Controller's appearance in proceedings. 
57. Appeal to the Court. 
58. Court's power to review Controller's decision. 
59. Procedure in cases of option to apply to Court or Con-
troller. 
60. Mode of giving evidence. 
61. Evidence of entries in register. 
62. Evidence of things done by Controller. 
PART IV 
MISCELLANEOUS 
63. Falsification of entries in register. 
64. Fine for falsely representing a trade mark as registered. 
65. Unauthorised user of State badges. 
66. Change of form of trade connection not to be deemed to 
cause deception. . 
67 . Jointly owned trade marks. 
68. Trusts and equities. 
69. Recognition and registration of trade mark agents. 
70. International agreements. 
71. Offences by bodies corporate or unincorporated bodies. 
72. Transitional provisions. 
FIRST SCHEDULE 
CERTIFICATION TRADE ~Lo\.RKS 
SECOND SCHEDULE. 
TRANSITIONAL PROVISIONS Short title and 
commencement. 
Interpretation. 
1927, ~o. 16. IP/N/I/IRL/T/l 
Page 5 
Number 9 of 1963 
TRADE MARKS ACT, 1963 
AN ACT TO MAKE NEW PROVISION IN RESPECT OF 
TRADE !lURKS .AND RELATED nUTTERS, IN SUB­
STITUTION FOR THE PROVISIONS OF PART IV AND 5 
(SO FAR AS 1'1' RELATES TO TRADE ~!ARKS) PART V 
OF THE INDUSTRIAL AND COMMERCIAL PROPERTY 
(PROTECTION) ACT, 1927, AND OTHER ENACTlIENTS 
RELATING THERETO, Al'ID TO PROVIDE FOR OTHER 
MATTERS CONNECTED WITH THE MATTERS 10 
AFORESAID. [3rd April, 1963.] 
BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS :-
PART I. 
PRELDiINAR~ AND G&'ffiRAL. 
1.-(1) This Act may be cited as the Trade :Marks Act, 1963. 15 
(2) This Act shall come into operation on such date as the 
.iUinister may by order appoint. 
2.-(1) In this Act, unless the context otherwise requires-
•• the Act of 1927 " means the Industrial and Commercial Pro­
perty (Protection) Act, 1927; 
" assignment" means assignment by act of the parties concerned; 
" the Controller" means the Controller of Industrial and Com­
mercial Property appointed under thc Act of 1927; 
•• the Court " means the High Court; 20 
•• the Journal" means the Official Journal of Industrial and 25 
Commercial Property; 
" limitations 11 means any limitations of the exclusive right to 
the use of a trade mark given by the registration of a person as 
proprietor thereof, including limitations of that right as to mode 
of use, as to use in relation to goods to be sold (or otherwise 30 
traded in) in any place within the State, or as to use in relation 
to goods to be exported to any market outside the State; 
" mark" includes a device, brand, heading, label, ticket, name, 
signature, word, letter, numeral, or any combination thercof; 
" the Minister" means the :Minister for Industry and Commerce; 35 
,. the Office" means the Industrial and Commercial Property 
Registration Offir.e established under thE' Act of 1927; IP IN 11 IIRL/T 11 
Page 6 
[1963.] , Trade .1riarks Act, 1963. [No 9.] 
" partnership " has the meaning assigned to it by section 1 :i th0 
Partnership Act, 1890; 1890, o. 39. 
~: permitted use" has the meaning assigned to it by paragmph (b) 
of subsection (1) of section 36 of this Act; 
5 "prescribed" means, in relation to proceedings before the Court, 
prescribed by rules of court, and, in other cases, prescribed by 
this Act or the rules; 
" the register " means the register of trade marks kept under this 
Act; 
10 "registered trade mark" means a trade mark that is actually 
on the register; 
"registered user" means a person who is for the time being 
registered as such under section 36 of this Act; 
" the rules" means rules made by the Minister under section 3 
15 or section 44 of this Act; 
" trade mark" means, except in relation to a certification trade 
mark, a mark used or proposed to be used in relation to goods 
for the purpose of indicating, or so as to indicate, a connection 
in the course of trade between the goods and some person having 
20 the right either as proprietor or as registered user to use the mark, 
whether with or without any indication of the identity of that 
person, and means, in relation to a certification trade mark, a 
mark registered or deemed to have been registered under section 45 
of this Act; 
25 "transmission". means transmission by operation of law, 
devolution on the personal representative of a deceased person, 
and any other mode of transfer not being assignment. 
(2) (a) In this Act references to the use of a mark shall be 
construed as references to the use of a printed or other 
30 visual representation of the mark, and references to 
the use of a mark in relation to goods shall be construed 
as references to the use thereof upon, or in physical 
or other relation to, goods. 
(b) In any other Act references to a trade mark shall be 
35 construed as references to a trade mark under this Act. 
40 
45 
50 -<---.----.....~-
3.-(1) The Minister may from time to time make such rules, Pbwer of "-.. "'" 
prescribe such forms and generally do such things as he thinks M~5t~ to ) 
expedient- m_a_.~_. __ ~~ 
(a) for regulating thc practice under this ~~ct, including the 
service of documents; . 
(b) for classifying goods for the purposes of registration of 
trade marks; 
(c) for making or requiring duplicates of trade marks and 
other documents; 
(d) for securing and regulating the publishing and selling or 
distributing, in such manner as the Minister thinks 
fit, of copies of trade marks and other documents; 
(e) generally, for regulating the business of the Office in 
relation to trade marks and all things by this Act 
placed under the direction 01' control of the Controller 
or of the JIinister; 
(t) for prescribing any matter referred to in this Act as 
prescribed or to be prescribed. 
(2) Rules made under this Act shall, while in force, be of the 
55 same effect as if they were contained in this Act. Fees. 
1879, c. 58. 
Exercise of 
powers of 
:\Iinister. 
Excluded days. 
Expenses. 
Repea1and 
savings. 
The register of 
trade marks. [1963.] Trade Marks Act, 1963. IP IN 11 IIRL/T 11 
Page 7 
[No. 9.] 
(3) Every rule made under this Act shall be advertised twice 
in the Journal, and shall be laid before each House of the Oireachtas 
as soon as may be after it is made and if a resolution annulling 
the rule is passed by either House within the next subsequent 
twenty-one days on which that House has sat after the rule is 5 
laid before it, the rule shall be annulled accordingly but without 
prejudice to the validity of anything previously done thereunder. 
4.-(1) There shall be paid in respect of applications, registra­
tions, notices, notifications, statements, counter-statements, amend· 
ments, renewals, cancellations, declarations, certificates, certified 10 
copies, entries and other matters in relation to trade marks under 
this Act such fees as may from time to time be prescribed by the 
Minister with the sanction of the Minister for Finance. 
(2) All fees prescribed under this section shall be collected 
and accounted for in such manner as the Minister with the sanction 15 
of the Minister for Finance shall direct. 
(3) The Public Offices Fees Act, 1879, shall not apply in respect 
of any fees payable under this Act. 
5.-All things required or authorised under this Act to be done 
by, to or before the :Minister may be done by, to or before the 20 
secretary of the Department of Industry and Commerce or any 
person authorised in that behalf by the Minister. 
6.-\Vhenever the last day fixed by this Act for doing anything 
under this Act falls on a day which is specified by the rules as an 
excluded day, the rules may provide that the thing may be done 25 
on the next subsequent day which is not specified by the rules as 
an excluded day. 
7.-The expenses incurred bv the Minister in the administra­
tion of this Act shall, to such ertent as may be sanctioned by the 
Minister for Finance, be paid out of moneys provided by the 30 
Oireachtas. 
8.-(1) The following sections of the Act of 1927, namely, 
sections 3 and 9 (in so far as they refer to trade marks), 80 to 
123, and (in so far as they refer to trade marks) 124, 125, 127 to 
138, and 140 to 153, are hereby repealed. 35 
(2) Nothing in this Act shall affect any order, rule, regulation 
01' requirement made, table of fees or certificate issued, notice, 
decision, determination, direction or approval given, application 
made, thing done or trade mark or mark registered under the 40 
Act of 1927 j and every such order, rule, regulation, requirement, 
table of fees, certificate, notice, decision, determination, direction, 
approval, application, thing, trade mark or mark, shall, if in 
force at the commencement of this Act, continue in force and 
shall, so far as it could have been made, issued, given, done or 45 
registered under this Act, have effect as if made, issued, given or 
done under the corresponding section of this Act. 
(3) Any document referring to any enactment repealed by this 
Act shall be construed as referring to the corresponding section 
of this Act. 50 
PART 11. 
PROYISIO~S RELATING '1'0 REGISTRATION. 
9.-(1) There shall continue to be kept at the Office for the 
purposes of this Act a book called the register of trade marks, 
wherein shall be en tercd all registered trade marks with the 55 
names, addresses and descriptions of their proprietors, notifica-IP/N/l IIRL/TI 1 
Page 8 
[1963.] Trade iv/arks Act, 1963. [No. 9.] 
tions of assignments and transmissions, the names, addresses and 
descriptions of all registered users, disclaimers, conditions, limita­
tions, and such other matters relating to registered trade marks 
as may be prescribed. 
5 (2) The register shall continue to consist of two parts called 
respectively Part A and Part B. 
(3) The register shall at all convenient times be open to the 
inspection of the public, subject to such regulations as may be 
pres';ribed. 
J 0 (4) The register shall be kept under the control and manage-
15 ment of the Controller. 
(5) The register may, in lieu of being kept in the form of a 
book, be kept in sueh other form of record as may from time to 
time be approved by the Minister. 
IO.-No person shall be entitled to institute any proceeding 
to prevent, or to recover damages for, the infringement of an 
unregistered trade mark, but nothing in this Act shall be deemed 
to affect rights of action against any person for passing off goods 
as the goods of another person or the remedies in respect thereof. No action for 
infringement of 
unregistered 
trade mark. 
20 11.-A trade mark must be registered in respect of particular Registration to 
goods or classes of goods, and any question arising as to the class ;!:t~c~!:J"s. 
within which any goods fall shall be decided by the Controller. 
12.-(1) Subject to this section, and to sections 15 and 16 of 
this Act, the registration (whether before or after the commence-
25 ment of this Act) of a person in Part A of the register as proprietor 
of a trade mark (other than a certiiication trade mark) in respect 
of any goods shall, if valid, give or be deemed to have given to \ 
that person the exclusive right to the use of the trade mark in 
relation to those goods and, without prejudice to the generality 
30 of the foregoing words, that right shall be deemed to be infringed 
by any person who, not being the proprietor of the trade mark 
or a registered user thereof using by way of the permitted use, 
uses a mark identical with it or so nearly resembling it as to be 
likely to deceive or cause confusion, in the course of trade, in 
35 relation to any goods in respect of which it is registered, and in 
such manner as to render the use of the mark likely to be taken 
either-
(a) as being use as a trade mark; or 
(b) in a case in which the use is use upon the goods or in 
40 physical relation thereto or in an advertising circular 
or other advertisement issued to the public, as import­
ing a reference to some person having the right either 
as proprietor or as registered user to use the trade 
mark or to goods with which such a person as afore-
45 said is connected in the course of trade. 
(2) The right to the use of a trade mark given by registration 
as aforesaid shall be subject to any conditions or limitations 
entered on the register, and shall not be deemed to be infringed 
by the use of any such mark as aforesaid in any mode, in relation 
50 to goods to be sold or otherwise traded in in any place, in relation 
to goods to be exported to any market, or in any other circum­
stances, to which, having regard to any such limitations, the 
registration does not extend. Right given by 
registra.tion in 
Part A /Uld 
infringement 
thereC'f. Right given by 
registration in 
Part B and 
infringement 
thereof. 
Infringement 
by breach of 
certain 
reetrictiollS. [1963.] Trade ;.v[arks Act, 1963. IP/NIl/IRL/TI 1 
Page 9 
[No. 9.] 
(3) The right to the use of a. tradc mark given by registration 
as aforesaid shall not be deemed to be infringed by the use of any 
such mark as aforesaid by any person- . 
(a) in relation to goods connected in the course of trade with 
the proprietor or a registered user of the trade mark 5 
if, as to those goods or a bulk of which they form 
part, the proprietor or the registered user conforming 
to the permitted use has applied the trade mark and 
has not subsequently removed or obliterated it, or has 
at any time expressly or impliedly consented to the 10 
use of the trade mark; or 
(b) in relation to goods adapted to form part of, or to be 
accessory to, other goods in relation to which the trade 
mark has been used without infringement of the right 
given as aforesaid or might for the time being be so 15 
used, if the use of the mark is reasonably necessary in 
order to indicate that the goods are so adapted and 
neither the purpose nor the effect of the use of the 
mark is to indicate otherwise than ,in accordance with 
the fact a connection in the course of trade between 20 
any person and the goods. 
(4) The use of a registered trade mark, being one of two or 
more registered trade marks that are identical or nearly resemble 
each other, in exercise of the right to the use of that trade mark 
given by registration as aforesaid, shall not be deemed to be 25 
an infringement of the right so given to the use of any other of 
those trade marks. 
13.-(1) Except as provided by subsection (2) of this section, 
t.he registration (whether before or after the commencement of this 
Act) of a person in Part B of the register as proprietor of a trade 30 
mark in respect of any goods shall, if valid, give or be deemed to 
have given to that person the like right in relation to those goods 
as if the registration had been in Part .A. of the register, and the 
provisions of section 12 of this Act shall have effect in like manner 
in relation to a trade mark registered in Part B of the register as 35 
they have effect in relation to a trade mark registered in Part A 
of the register. 
(2) In any action for infringement of the right to the use of 
a trade mark given by registration as aforesaid in Part B of the 
register, otherwise than by an act that is deemed to be an 40 
infringement by virtue of section 14 of this Act, no injunction or 
other relief shall be granted to the plaintiff if the defendant estab­
lishes to the satisfaction of the Court that the use of which the 
plaintiff complains is not likely to deceive or cause confusion or 
to be taken as indicating a connection in the course of trade 45 
between the goods and some person having the right either as 
proprietor or as registered user to use the trade mark. 
14.-(1) Where, by a contract in writing made with the prop­
prietor or a registered user of a registered trade mark, a pur­
chaser or owner of goods enters into an obligation to the effect 50 
that he will not do, in relation to the goods, an act to whieh this 
seetion applies, any person who, being the owner for the time 
being of the goods and having notice of the obligation, does that 
act or authorises it to be done, in relation to the goods, in the 
co~rse of trade or ,vith 3. view to any dealing therewith in the 55 
course of trade, shall be deemed thereby to infringe the right to 
the use of the trade mark given by the registration thereof. unless 
that person became the owner of the goods by purchase for money 
or money's worth in good faith before receiving notice of the 
obligation or by virtue of a title derived through another who so 60 
became the owner thereof. IP IN 11 IIRL/T 11 
Page 10 
[1963.] Trade Jlark.s Act, H)63. [No. 9.] 
(2) The ucts to which this section applies al'C-
(a) the application of the trade mark upon the good~ after 
they have suffered alteration in any manner specified ./' 
in the contract as respects their state or condition, 
5 get-up or packing ; 
(b) in a case.in which the trade mark is u~on t~e goods, th~ / 
alteratlOn, part removal or part ohhteratlOn thereof ;' 
10 
15 (c) in a case in which the trade mark is upon the goods, 
and there is also thcreoll other mutter, being matter 
indicating a connection in the course of trade between 
the proprietor or registered user and the goods. the 
removal 01' obliteration, whether wholly or partly, of 
the trade mark unless that other matter is wholly 
removed or obliterated ; . 
(d) in a case in which the trade mark is upon the goods, the 
application of any other trade mark to the goods ; 
(e) in a case in which the trade mark is upon the goods, the 
addition to the goods of any other matter in writing 
that is likely to injure the reputation of the trade mark. 
20 (3) In this section references in relation to any goods to the 
proprietor, to a registered user, and to the registration, of a trade 
mark shall be construed, respectively, as references to the pro­
prietor in " .... hose name the trade mark is registered, to a registered 
user who is registered, and to the registration of the trade mark, 
25 in respect of those goods, and "upon" includes in relation to 
any goods a reference to physical relation thereto. 
IS.-Nothing in this .Act shall entitle the proprietor or a Saving for 
registered user of a. rcgistered trade mark to interfere with or vested rights. 
restrain the use by any person of a trade mark identical with 
30 or nearly resembling it in relation to goods in relation to which 
that person or a predecessor in title of his has continuously used 
that tra.de mark from a date anterior-
(a) to the use of the first-mentioned trade mark in relation 
to those goods by the proprietor or a predecessor in 
35 title of his; or 
(b) to the registration of the first-mentioned trade mark in 
respect of those goods in the name of the proprictor or 
a predecessor in title of his; 
whichever is the earlier, or to object (on such use being proved) 
40 to that person being put on the register for that identical or 
nearly resembling trade mark in respect or those goods under 
subsecnon (2) of section 20 of this Act. 
16.-No registration of a trade mark shall interfere with- Saving for use 
of name. addresa 
(a) any bona fide use by a person of his own name 01' of the or description} of goods. name of his place of business, or of the name, or of 45 the name of the place of business, of any of his 
predecessors in business j or 
(b) the use by any person of any bona fide description of 
the character or quality of his goods, not being a 
50 description that would be likely to he taken as 
importing any such reference as is mentioned in para­
graph (b) of subsection (1) of section 12, or in para­
graph (b) of sub:lection (3) of section 45, of this Act. 
17.-(1) In order for a trade mark (other than a certification Distinotiven_ 
55 trade mark) to be re2'istrabl"! in Part A. of the register it must req~iaite. for. 
t> , regIStratIon 1.Q 
ParlA. Capability of 
distinguishing 
requisite for 
registration in 
Part B. 
Prohibition of 
registration of 
deceptive and 
certain other 
matter. [1963.] Trade .Jlal'ks Act, 1963. IP IN 11 IIRL/T 11 
Page 11 
[No. 9.] 
contain or consist of at least onc of the following essential 
particulars: -
(a) the name of CL company, individual, or firm, represented 
in a special or particular manner; 
Cb) the signature of the applicant for registration or some 5 
predecessor in his business; 
(c) an invented word or invented words; 
(d) a word or words having no direct reference to the 
character or quality of the goods, and not being 
according to its ordinary signification a geographical 10 
name or a surname; 
(e) any other distinctive mark, but a name, signature, or 
word or words, other than such as fall within the 
descriptions in paragraphs (a), (b), Cc) and (d) of this 
subsection, shall not be registrable under this paragraph 15 
except upon evidence of its distinctiveness. 
(2) For the purposes of this section "distinctive" means 
adapted, in relation to the goods in respect of which a trade mark 
is registered or proposed to be registered, to distinguish goods 
with which the proprietor of the trade mark is or may be connected ::!O 
in the course of trade from goods in the case of which no such 
connection subsists, either generally or, where the trade mark 
is registered or proposed to be registered subject to limitations, in 
relation to use within the extent of the registration. 
(3) In determining whether a trade mark is adapted to 25 
distinguish as aforesaid the Court or the Controller (as the case 
may be) may have regard to the extent to which-
(a) the trade mark is inherently adapted to distinguish as 
aforesaid; and 
Cb) by reason of the use of the trade mark or of any other 30 
circumstances, the trade mark is in fact adapted to 
distinguish as aforesaid. 
18.-(1) In order for a trade mark to be registrable in Part B 
of the register it must be capable, in relation to the goods in 
respect of which it is registered or proposed to be registered, of 33 
distinguishing goods with which the proprietor of the trade mark 
is or may be connected in the course of trade from goods in the 
case of which no such connection subsists, either generally or, 
where the trade mark is registered or proposed to be registered 
subject to limitations, in relation to use within the extent of the 40 
registra tio n. 
(2) In determining whether a trade mark is capable of dis­
tinguishing as aforesaid the Conrt or the Controller (as the case 
may be) may have regard to the extent to which-
(a) the trade mark is inherently capable of distinguishing 45 
as aforesaid; and 
(b) by reason of the use of the trade mark or of any other 
circumstances, the trade mark is in fact capable of 
distinguishing as aforesaid. 
(3) .A. trade mark may be registered in Part B notwithstanding 50 
any registration in Part .A. in the name of the same proprietor of 
the same trade mark or any part or parts thereof. 
19.-It shall not be lawful to register as a trade mark or part 
of a trade mark any matter the use of which would, by reason of 
its being likely to deceive or cause confusion or otherwise, be 55 
disentitled to protection in a court of law, or would be ~ontrary 
to law or morality, or uny scandalous design. JP IN 11 IJRL/T 11 
Page 12 
[1963.] Trade J..llarks Act, 1963. [No. 9.] 
20.-(1) Subject to subsection (2) of this section, no trade 
mark shall be registered in respect of any goods or description of 
goods that is idcntical with a trade mark belonging to a differcnt 
proprietor and already on the register in respect of the same 
5 goods or description of goods, or that so nearly resembles such a 
trade mark as to be likely to deceive or cause confusion. 
(2) In case of honcst concurrent nse, or of other spccial circum­
stances which in the opinion of the Court or the Controller make 
it proper so to do, the Court or the Controller (as the case may 
10 be) may permit the registration of trade marks that are identical 
or nearly rescmble each other in respect of the same goods or 
description of goods by more than one proprietor subject to such 
conditions and limitations, if any, as the Court or the Controller 
(ns the case may be) may think it right to impose. 
15 (3) Where separate applications are made by different persons 
to be registered as proprietors respectively of trade marks that 
arc identical or nearly resemble each other, in respect of the same 
goods or description of goods, the Controller may refuse to register 
any of them until their rights have been determined by the Court, 
20 or have been settled by agreement in a manner approved by him 
or by the Court on an appeal, as the case may be : 
Provided that where separate applications by different persons 
to be registered as proprietors respectively of trade marks that are 
identical or nearly resemble each other arc made on different 
~5 dates, the Controller may refuse to proceed with the second or later 
of those applications until the first application shall have been 
determined, and that the trade mark the subject of the first 
application shall, if that trade mark is thereupon registered, be 
deemed to be a trade mark already on the register under subsection 
30 (1) of this section in relation to the trade mark the subject of 
the second or later application. 
21.-(1) In all legal proceedings relating to a trade mark 
registered in Part A of the register (including applications 
under section 40 of this Act) the original registration in Part A 
35 of the register of the trade mark shall, after the expiration of 
seven years from the date of that registration, be taken to be valid 
in all respects, unless-
(a) that registration was obtained by fraud, or 
(b) the trade mark offends against section 19 of this Act. 
40 (2) Nothing in subsection (1) of .~ection 13 of this Act shall be 
construed as making applicable to a trade mark, as being a trade 
mark registered in Part B of the register. the foregoing provisions 
of this section relating to a trade mark registered in Part A of 
the register. Prohibition of 
registrntion of 
identical and 
resembling trade 
marks. 
Registration 
in Part A to 
be conclusive as 
to validity after 
seven years. 
45 22.-If a trade mark- Registration 
subject to 
(a) t'ontains any part not separately registered by the disclaimer. 
proprietor as a trade mark; or 
(b) contains matter common to the trade or otherwise of a 
nOll-distinctiye character; 
50 the Court or the Controller (as the case may be), in deciding 
whether the trade mark shall be cntered or shall remain on the 
register, may require as a condition of its being on the registel'-
(i) that the proprictor shaH disclaim any right to 
the exclusiye usc of any part of the trade mark, 
55 <)1' to the exclusiye use of all or any portion of any 
!'ut'h mattcr :1S aforC'~ald. to the t'xclush'e use of Word trade mark 
used as name of 
article or 
substance. [1963.] Trade J.}larks Act, 1963. IP/N 11IIRL/T 11 
Page 13 
[No. 9.] 
which the Court or the Controller (as the case 
may be) holds him not to be entitled; or 
(ii) that the proprietor shall make such other disclaimer 
as the Court or the Controller (as the case may 
be) may consider necessary for the purpose of 5 
defining his righ ~ under the registration: 
Provided that no disclaimer on the register shall affect any 
rights of the proprietor of a trade mark except sueh as arise out 
of the registration of the trade mark in respect of which the 
tiiSclaimer is made. 10 
23.-(1) The registration of a trade mark shall not be deemed 
to have become invalid by reason only or any use, after the date 
of the registration, of a word or words which the trade mark 
contains, or of which it consists, as the name or description of 
an article or substance: 15 
Provided that if it is proved either-
(a) that there js a well-known and established use of the word 
or words as the name or description of the article or 
substance by a person or persons carrying on a trade 
therein, not being use in relation to goods connected 20 
in the course of trade with the proprietor or a regis­
tered user of the trade mark or (in the case of a 
certification trade mark) goods certified by the pro­
prietor ; or 
tb) that the article or substance was formerly manufactured 25 
under a patent (being a patent in force on, or granted 
after, the 1st day of October, 1927), that a period of 
two years or more after the cesser of the patent has 
elapsed, and that the word or words is or are the only 
practicable name or description of the article or 30 
substance; 
the provisions of subsection (2) of this section shall have effect. 
(2) Where the facts mentioned in paragraph (a) or (b) of the 
proviso to subsection (1) of this section are proved with respect 
to any word or words, then- 35 
(a) if the trade mark consists solely of that word or those 
words, the registration of the trade mark, so far as 
regards registration in r('spect of the article or substance 
in question or of any goods of the same description, 
shall be deemed for the purposes of section 40 of this 40 
Act to be an entry wrongly remaining on the register; 
(b) 1:( the trade mark contains that word or those words and 
other matter, the Court or the Controller (as the case 
may be), in deciding whether the trade mark shall 
rcmain on the register, so far as regards registration 45 
in respect of the article or substance in question and 
of any goods of the same description, may in case of 
:l decision jn favour of its remaining on the register 
require as a condition thereof that the proprietor shall 
disclaim any right to the exclusive use in relation to 50 
that article or substance and any goods of the same 
description of that word or those words, so, however, 
that no disclaimer on the register shall affect any rights 
of the propL'ietor of no trade mark except such as arise 
out of the registration of the trade mark in respect of 55 
which the disclaimer is made: and 
!r,) for the purposes of any othcr legal proceedings relating 
to the trade mark-
(i) if· the trade mllrk consists solely of that word 01' 
those words, all rights of the proprietor, whether IP IN 11 IIRL/T 11 
Page 14 
5 [1963.] Trade .Jiarks .lct, 1963. [.,No. 9.] 
under the common law or by registration, to the 
exclusi .... e use of the trade mark in relation to the 
article or substance in question or to any goods 
of the same description, or 
(ii) if the trade mark contains that word or those words 
and other matter, all snch rights of the proprietor 
to the exclusive use of that word or those words 
in such relation as aforesaid, 
shall be deemed to hm'e ceased on the date at which the use 
10 mentioned in paragraph (a) Ot the prov;so to subsection (1) of 
this section first became well known and established, or at the 
expiration of the period of two years mentioned in pamgraph (b) 
of that proviso. 
(3) No word which is the commonly uscd and accepted name of 
15 any single chemical element or single chemical compound, as 
distinguished from a mhture, shall be registered as a trade mark 
in respect of a chemical substance or preparation; and any such 
registration in force at the commencement of this Act or there­
after shall, notwithstanding section 21 of this Act, be deemed for 
20 the purposes of section 40 of this Act to be an entry made in the 
register without sufficient cause, or an entry wrongly remaining 
on the register, as the circumstances may require: 
Provided that this subsection shall not have effect in relation 
to a word which is used to denote only a brand or make of the 
25 element or compound as made by the proprietor or a registered 
user of the trade mark, as distinguished from the element or 
compound as made by others and in association with a suitable 
name or description open to the public use. 
24.-(1) A trade mark may be limited in whole or in part to Effect of 
30 one or more specified colours, and in any such case the fact that it limitation as 
is so limited shall be taken into consideration by the Court or ~~ ~~~~::nd 
the Controller (as the case may be) when deciding on the distinc- thereof. 
tive character of the trade mark. 
(2) If and so far as a trade mark is registered without limitation 
35 of colour, it shall be deemed to be registered for all colours. 
25.-(1) Any person claiming to be the proprietor of a trade Application for 
mark used or proposed to be used by him who is desirous of registration. 
registering it must apply in writing to the Controllel' in the 
prescribed manner for registration either in Part A or in Part B 
40 of the register. 
(2) Subject to this Act, the Controller may refuse the applica­
tion, or may accept it absolutely or subject to such amendments, 
modifications, conditions or limitations, if any, as he may think 
right. 
45 (3) In the case of an application for registration of a trade 
mark (other than a. certification trade mark) in Part ~\. of the 
register, the Controller may, if the applicant is willing, instead 
of refusing the application, treat it as an application for 
registration in Part B and deal with the application accordingly. 
50 (4) In the case of 11 refusal or conditional acceptance, the 
Controller shall, if required by the applicant within the prescribed 
time, state in writing the grounds of his decision and the materials 
used by him in arriving thereat. 
(5) An applicant desiring to appeal under section 57 of this 
fin Act against a. del!ision of the Controller under this section shall 
apply to the Controller under subsection (4) of this section 
for the statement in writing therein referred to, and on the Opposition to 
['EIgistl'8tion. [1963.] T'rade J.l1arks Act, 1963. IP IN 11 IIRL/T 11 
Page 15 
[No. 9.] 
appeal the Court shall, if required, hear the applicant and the 
Controller, and shall make an order determining whether, and 
subject to what amendments, modifications, conditions or limita­
tions, if any, the application is to be accept€d. 
(6) Except by leave of the Court no appeal against a decision 5 
of the Controller under this section shall be made save within a 
period of two months from the date of dispatch to the applicant 
of the statement in writing referred to in subsection (4) of this 
section or within such further period not exceeding three months 
as the Controller may allow (upon request received before the 10 
expiration of the said period of two months). 
(7) Appeals under section 57 of this Act against decisions of 
the Controller under this section shall be heard on the materials 
stated as aforesaid by the Controller, and no further grounds of 
objection to the acceptance of the application shall be allowed to 15 
be taken by the Controller, other than those so stated as aforesaid 
by him, except by leave of the Court. 
(8) The Controller or the Court (as the case may be) may at 
any time, whether before or after acceptance, correct any error 
in or in connection with the application, or may permit the appli-20 
cant to amend his application upon such terms as the Controller 
or the Court (as the case may be) may think fit. 
26.-(1) When an application for registration of a trade mark 
has been accepted, whether absolutely or subject to conditions or 
limitations, the Controller shall, as soon as may be after accept- 25 
ance, cause the application as accepted to be advertised in the pre­
scribed manner, and the advertisement shall set forth all conditions 
and limitations subject to which the application has been accepted: 
Provided that the Controller may cause an application to be 
advertised before acceptance in any case where it appears to 30 
him that it is expedient by reason of any exceptional circumstances 
so to do, and where an application has been so advertised the 
Controller may, jf he thinks fit, advertise it again when it has been 
accepted but shall not be bonnd so to do. 
(2) Any person may, within the prescribed time from the date 35 
of the advertisement of an application, give notice to the 
Controller of opposition to the registration. 
(3) The notice shall be given in writing in the prescribed 
manner, and shall include a statement of the grounds of opposi-
tion. 40 
(4) The Controller shall send a copy of the notice to the 
applicant, and ,vithin the prescribed time after receipt thereof the 
applicant shall send to the Controller, in the prescribed manner, 
a counter-statement of the grounds on which he relies for his 
application, and, if he does not do so, he shall be deemed to have 45 
abandoned his application. 
(5) If the applicant sends such a counter-statement as aforesaid, 
the Controller shall furnish a copy thereof to the persons giving 
notice of opposition, and shall, after hearing the parties, if so 
required, and considering the evidence, decide whether, and 50 
subject to what conditions or limitations, if any, registration is to 
be permitted and shall notify the applicant and the opponent 
accordingly. 
(6) The applicant or the opponent may, within the prescribed 
time after the date of notification of the decision of the Controller, 55 
apply to the Controller for a written statement of the grounds 
of his decision. 
(7) A person desiring to appeal under .~ection 57 of this Act 
against a decision of the Controller under this section shall apply 
to the Controller under subsection (6) of this section for the 60 IP IN 11 IIRL/T 11 
Page 16 
r1963.] Trade JIarks Act, 1963. [No. 9.] 
written statement therein referred to, and on the appeal the 
Court shall, if required, hear the parties andothe Controller 
and shall make an order determining whether, and subject to what 
conditions or limitations, if any, registration is to be permitted. 
5 (8) Except by leave of the Court, no appeal against a decision 
of the Controller under this section shall be made save within a 
period of two months from the date of dispatch to the applicant 
of the statement in writing referred to in subsection (6) of this 
:>€ction or within such further period not exceeding three months 
10 as the Controller may allow (upon request received before the 
expiration° of the said period of two months). 
(9) On the hearing of an appeal under section 57 of this Act 
against a decision of the Controller under this section any party 
may, either in the manner prescribed or by special leave of the 
15 Court, bring forward further material for the consideration of 
the Court. 
(10) Ca) On an appeal under section 57 of this Act against a 
decision of the Controller under this section no further 
grounds of objection to the registration of a trade mark 
20 shall be allowed to be taken by the opponent or the 
Controller, other than those so stated as aforesaid by 
the opponent, except by leave of the Court. 
(b) Where any further grounds of objection are taken, the 
applicant 8hall be entitled to withdraw his application 
25 without payment of the costs of the opponent on giving 
notice as prescribed. 
(11) On an appeal under section 57 of this Act against a 
decision of the Controller under this section the Court may, after 
hearing the Controller, permit the trade mark proposed to be 
30 registered to be modified in any manner not substantially affecting 
the identity thereof, but in any such case the trade mark as so 
modified shall be advertised in the prescribed manner before being 
registered. 
(12) If a person giving notice of opposition or an applicant 
35 sending a counter-statement after receipt of a copy of such notice, 
or an appellant, neither resides nor carries on business in the 
State, the Court (in the case· of an appeal) or the Controller 
(in any other case) may require him to give security for costs of 
the proceedings and, in default of such security being duly given, 
'i1O may treat the opposition or application, or the appeal, as the case 
may be, as abandoned. 
27.-(1) When an application for registration of a trade mark 
in Part A or in Part B of the register has been accepted, and 
either-
45 (a) the application has not been opposed and the time for 
notice of opposition has expired, or 
(b) the application has been opposed and the opposition has 
been decided in fa \'our of the applicant, 
the Controller shall, unless the application has been accepted in 
50 error, register the trade mark in Part A or Part B, as the case may 
be, and the trade mark, when registered, shall be registered as of 
the date of the application for registration, and that date shall 
be deemed for the purposes of this .Act to be the date of 
registration: 
55 Provided that the foregoing provisions of this subsection, relating 
to the date as of which a trade mark shall be registered and to the 
date to be deemed to be the date of registration, shall, as respects 
a trade mark registered under this Act with the benefit of section 
70 of this Act, have effect subject to that section. 
60 (2) On the registration of a trade mark the Controller shall issue 
to the applicant a certificate in the prescribed form of the regis­
tration thereof sealed "'ith the official seal of the Controller. 
(3)W4ere registration of a trade mark is not completed within 
twelve months from the date of the application by reason of default Registration. Duration a.od 
renewal of 
registration. 
Registration of 
parts of trade 
marks and of 
trade marka a& 
a ~riee. [HW3.J 'l'rade .JJ arks Act, HH53. IP IN 11 IIRL/T 11 
Page 17 
[No. 9.] 
on tile part. uf the applicant, the Contrui.ler liUY, after giving notice 
of the non-completion to the applicant in writing in the prescribed 
manner, treat the application as abandoned unless it is completed 
within the time specified in that behalf in the notice. 
28.-(1) The registration of a trade mark shall be for a period 5 
of seven years, but may be renewed from time-to time in 
accordance with this section: 
Provided that, in relation to a registration as of a date before 
the commencement of this Act, this subsection shall have effect with 
the substitution of a period of fourteen years for the said period 10 
of seven years. 
(2) The Controller shall, on application made by the registered 
proprietor of a trade mark in the prescribed manner and within 
the prescribed period, renew the registration of the trade mark 
for a period of fourteen years from the date of expiration of the 15 
original registration or of the last renewal of registration, as the 
case may be, which date is in this section called "the expiration 
of the last registration ". 
(3) At the prescribed time before the expiration of the last regis­
tration of a trade mark, thc Controller shall send notice in the 20 
prescribed manner to the registered proprietor of the date of 
expiration and the conditions as to payment of fees and otherwise 
upon which a renewal of registration may be obtained, and, if at 
the expiration of the time prescribed in that behalf those conditions 
have not been duly complied with, the Controller may remove the 25 
trade mark from the register, subject to such conditions, if any, as 
to its restoration to the register as may be prescribed. 
(4) Where a trade mark has been removed from the register 
for non-payment of the fee for renewal, it shall, nevertheless, for 
the purpose of any application for the registration of a trade mark 30 
during one year next after the date of the removal, be deemed to 
he a trade mark that is already on the register: 
Provided that the foregoing provisions of this subsection shall 
not have effect where the Court or the Controller (as the case may 
be) is satisfied either- 35 
(a) that there has been no bona fide trade use of the trade 
mark that has been removed during the two years 
immediately preceding its removal; or 
(b) that no deception or confusion would be likely to arise 
from: the use of the trade mark that is the subject of 40 
the application for registra.tion by reason of any 
previous use of the trade mark that has been removed. 
29.-(1) (a) Where the proprietor of a trade mark claims to 
be entitled to the exclusive use of any part thereof 
separately, he may apply to register the whole 45 
and any such part as separate trade marks. 
(b) Each such separate trade mark must satisfy all 
the conditions of an independent trade mark and 
shall, subject to subsection (3) of section 31 and 
subsection (2) of section 38 of this Act, have all 50 
the incidents of an independent trade mark. 
(2) Where a person claiming to be the proprietor of several 
trade marks, in respect of the same go.ods 01' descri:ption of. goods, 
which, while resembling each other ill the materIal partlculars 
thereof, yct differ in respect of- 55 
(a) statements of the goods in relation to which they are 
respectively used or proposed to be used; or IP IN 11 IIRL/T 11 
Page 18 
5 [1963.] Trade J.viarks Act, 1963. [No. 9.] 
(b) statements of number, price, quality or names of places; 
or 
(c) other matter of a non-distinctive character which does 
not substantially affect the identity of the trade mark; 
or 
(d) colour; 
seeks to register those trade marks, they may be registered as a 
series in one registration. 
30.-(1) Notwithstanding any rule of law or equity to the Powers of and 
10 contrary, and subject to this section, a registered trade mark shall restrictions on 
be, and shall be deemed always to have been, assignable and trans- ~~~i:~~~:nd 
missible either in connection with the goodwill of a business or not. 
(2) Subject to this section, a registered trade mark shall bc, 
and shall be deemed always to have been, assignable and trans-
15 missible in respect either of all the goods in respect of which it 
is registered, or was registered, as the case may be, or of some 
(but not all) of those goods. 
(3) Subsections (1) and (2) of this section shall have effect in 
the case of an unregistered trade mark used in relation to any 
20 goods as they have effect in the case of a registered trade mark 
registered in respect of any goods, if at the time of the assignment 
or transmission of the unregistered trade mark it is or was used 
in the same business as a registered trade mark, and if it is or was 
assigned or transmitted at the same time and to the same person 
25 as that registered trade mark and in respect of goods all of which 
are goods in relation to which the unregistered trade mark is or 
was used in that business and in respect of which that registered 
trade mark is or was assigned or transmitted. 
(4) Notwithstanding anything in subsections (1), (2) and (3) of 
30 this section, a trade mark shall not bc, or be deemed to have been, 
assignable or transmissible in a case in which as a result of an 
assignment or transmission there would in the circumstances 
subsist, or have subsisted, whether under the common law or by 
registration, exclusive rights in more than one of the persons-
35 concerned to the use, in relation to the same goods or description 
of goods, of trade marks nearly resembling each other or of 
identical trade marks, if, having regard to the similarity of the 
goods and of the trade marks, the use of the trade marks ill 
exercise of those rights would be, or ha.ve been, likely to deceive 
40 or cause confusion: 
Provided that, where a trade mark is, or has been, assigned or 
transmitted in such a case as aforesaid, the assignment or trans­
mission shall not be deemed to be, or to have been, invalid under 
this subsection if the exclusive rights subsisting as a result thereof in 
45 the persons concerned respectively are, or were, having regard to 
limitations imposed thereon, such as not to be exercisable by two 
or more of those persons in relation to goods to be sold, or other­
wise traded in, within the State (otherwise than for export 
therefrom) or in relation to goods to be exported to the same 
50 market outside the Sta.te. 
(5) The proprietor of a registered trade mark who proposes to 
assign it in respect of any goods in respect of which it is registered 
may submit to the Controller in the prescribed manncr a state­
ment of case setting out the circumstances, and the Controller 
55 may issue to him a certificate stating whether, having regard to 
the similarity of the goods and of the trade mnrks referred to jn 
the case, the proposed assignment of the first-mentioned trade 
mark would or would not be invalid under subsection (4) of tbis 
section, and a certificate so issued shall, unless it is shown that the 
6U certificate :Vas obtained by fraud or misrepresentation, be con-(';~rtain trade 
InnrkR to \>0 
""'''tlcint.erl :;l) M 
tt) I>e Msiall!lbl(\ 
and tmn!lJ-ni~sible 
ALl a wholA only. [1963.J Trade .. Marks Act, 196:3. IP IN 11 IIRL/T 11 
Page 19 
[No. 9.J 
elusive as to the validity or invalidity under subsection (4) of 
this section of the assignment in so far as such validity or 
invalidity depends upon the facts set out in the case, but, as 
regards a certificate in favour of validity,only jf application for 
the registration under section 33 of this Act of the title of the 5 
person becoming entitled is made within sLx months from the date 
on which the certificate is issued. 
(6) Notwithstanding anything in subsections (1) to (3) of this 
section, a trade mark shall not, on or after the commencement of 
this Act, be assignable or transmi<;sible in a case in which as a 10 
result of an assignment or transmission thereof there would in the 
circumstances subsist, whether under the common law or by 
registration, an exclusive right in one of the persons concerned 
to the use of the trade mark limited to use in relation to goods 
to be sold, or otherwise traded in, in a place or places in the 15 
State, and an exclusive right in another of those persons to the 
use of a trade mark nearly resembling the first-mentioned trade 
mark or of an identical trade mark in relation to the same goods 
or description of goods limited to use in relation to goods to be 
sold, or otherwise traded in, in another place or other places in 20 
the Stato: 
Provided that, on application in the prescribed manner by the 
proprietor of a trade mark who proposes to assign it, or of a 
person who claims that a trade mark has been transmitted to him 
or to a predecessor in title of his on or after the commencement 25 
of this A.ct, in any such case, the Controller, if he is satisfied that 
in all the circumstances the use of the trade mark in exercise 
of the said rights would not be contrary to the public interest, 
may approve the assignment or transmi~ion, and an assignment 
or transmission so approved shall not be deemed to be, or to have 30 
been, invalid under this subsection or under subsection (4) of 
this section, so, however, that in the case of a registered trade 
mark tbis provision shall not have effect unless application for the 
registration under section 33 of this Act of the title of the person 35 
becoming entitled is made within six months from the date on which 
the approval is gi\'en or, in the case of a transmission, was made 
before that date. 
(7) Where an assignment in respect of any goods of a trade 
mark that is at the time of the assignment used in a business in 
those goods is made, on or after the commencement of this Act, 40 
otherwise than in connection with the goodwill of that business, 
the assignment shall not take effect until, in pursuance of an 
application made by the assignee in the prescribed manner to the 
Controller within a period of six months from the date on which 
the assignment is made (or 'within such extended period, if any, as 45 
the Controller may allow) a notice of the assignment is published 
in the Journal. 
31.-(1) 'l'rade marks that are registered as, or that are deemed 
bv virtue of this Act to be, associated trade marks shall be assign­
ablc and transmissible only as a whole and not separately, but 50 
they shall for all other purposes be deemed to have been registered 
as separate trade marks. 
(2) Where a trade mark that is registered, or is the subject 
of an application for rcgistration, in respect of any goods 
is identical with anothcr trade mark that is registered, or is the 55 
subject of an application for registration, in the name of the same 
proprietor in respect of the same goods or description of goods, or 
so nearly resembles it as to be likely to deceive or cause confusion 
jf. used by a person other than the proprietor, the Controller may 60 
at any time require that the trade marks shall be entered on 
the register as associated trade marks. JP IN 11 IJRL/T 11 
Page 20 
[1963. ] Trade .l.llark8 Act, 1963. [No. 9.] 
(3) \',There a trade mark and any part or purts thereof are, by 
virtue of subsection (1) of section 29 of this Act, registered as 
separate trade marks in the name of the same proprietor, they 
shall be deemed to be, and shall be registered as, associated trade 
5 marks. 
(4) All tradc marks that arc, by virtue of subsection (2) of 
section 29 of this Act, registered as a series in one registration 
shall be deemed to be, and shall be registered as, associated tl'ad0 
marks. 
10 (5) On application made in the prescribed manner bv the 
registered proprietor of t,.vo or more trade marks registel~ed as 
associated trade marks, the Controller may dissolve the association 
as respects any of them if he is s11.tisfied that there would be no 
likelihood of deception or confusion being caused if that trade mark 
15 were used by another person in relation to any of the goods in 
respect of which it is registered, and may amend the register 
accordingly. 
32.-Subject to this Act, the person for the time being entered 
in the register as proprietor of a trade mark shall, subject to any 
20 rights appearing from the register to he yested in· any other perso~. 
have power to assign the trade mark, and to give effectual receipts 
for any consideration for an assignment thereof. 
33.-(1) Where a person becomes entitled by assignment or 
transmission to a registered trade mark, he shall make application 
25 in the prescribed manner to the Controller to register his title, 
and the Controller shall, on receipt of the application and on 
proof of title to his satisfaction, register him as the proprietor of 
the trade mark in respect of the goods in respect of which the 
assignment or transmission has effect, and shall cause particulars 
30 of the assignment or transmission to be entered on the register. 
(2) Except for the purposes of an appeal under section 57 of 
this ACt against a decision of the Controller under this section or 
of an application under section 40 of this Act, a document or 
instrument in respect of which no entry has been made in the 
35 register in accordance with subsection (1) of this section shall not 
be admitted in evidence in any court of law in proof of the title 
to a trade mark unless that court otherwise directs. Power of 
registered 
proprietor to 
assign and 
give receipts. 
Registration of 
assignments and 
transmissions. 
34.-(1) Subject to section 35 of this Act, a registered trade Remov~ from 
k b k h .. f f h d the register and mar may e ta ·en off t e regIster m respect 0 any 0 t e goo s imposition of 
40 in respect of which it is registered on application by any person limitations on 
aggrieved to the Court or, at the option of the applicant and ~~~:e~f 
subject to section 59 of this Act, to the Controller, on the ground 
either-
(a) that the trade mark was registered ,vithout any bona fide 
45 intention on the part of the applicant for registratiC)~ 
that it should be used in relation to those goods by him. 
and that there has in fact been no bona fide use of 
the trade mark in relation to those goods by any 
proprietor thereof for t,he time being up' to the date 
50 one month before the date of the application; or 
(b) that up to the date one month before the date of the 
application a continuous period of five years or longer 
elapsed during which the trade mark was a registered 
trade mark and during which there was no bona fide 
55 use thereof in relation to those goods by any proprietor 
thereof for the time being: 
Provided that (except where the applicant has been permitted 
under subsection (.2) of section 20 of thi1) Act to register an Defensive 
trade marks. [1963.] Trade Marks Act, 1963. IP IN 11 IIRL/T 11 
Page 21 
[No. 9.] 
identical or nearly resembling trade mark in respect of the goods in 
question or where the Court or the Controller (as the case may be) 
is of opinion that he might properly be permitted so to register 
such a trade mark) the Court or the Controller (as the case may 
be) may refuse an application made under paragraph (a) or (b) 5 
of this subsection in relation to any goods, if it is shown that there 
has been, before the relevant date or during th~ relevant period, 
as the case may be, bona fide use of the trade mark by any 
proprietor thereof for the time being in relation to goods of the 
same description, being goods in respect of which the trade mark 10 
is registered. . 
(2) Where in relation to any goods in respect of which a trade 
mark is registered-
(a) the matters referred to in paragraph (b) of subsection (1) 
of this section are shown so far as regards non-use of 15 
the trade mark in relation to goods to be sold, or other­
wise traded in, in a particular place in the State 
(otherwise than for export from the State), or in 
relation to goods to be exported to a particular market 
outside the State; and 20 
(b) a person has been permitted under subsection (2) of 
section 20 of this Act to register an identical or nearly 
resembling trade mark in respect of those goods under 
a registration extending to use in relation to goods to be 
sold, or otherwise traded in, in that place (otherwise 25 
than for export from the State), or in relation to goods 
to be exported to that market, or the Court or the 
Controller is of opinion that he might properly be 
permitted so to register such a trade mark; 
on application by that person to the Court, or, at the option of the 30 
applicant and subject to section 59 of this Act, to the Controller, 
the Court or the Controller (as the case may be) may impose on 
the registration of the first-mentioned trade mark such limitations 
as the Court 01' the Controller (as the case may be) thinks proper 
for securing that that registration shall cease to extend to such 35 
use as last aforesaid. 
(3) An applicant shall not be entitled to rely for the purposes 
of paragraph (b) of subsection (1), or for the purposes of sllb­
·section (2), of this section on any non-use of a trade mark that is 
shown to have been due to special circumstances in the trade and 40 
not to allY intention not to use or to abandon the trade mark in 
relation to the goods to which the application relates. 
35.-(1) Where a trade mark consisting of an invented word 
or invented words has become so welllmown as respects any goods 
in respect of which it is registered and in relation to which it has 45 
been used that the use thereof in relation to other goods would 
be likely to be taken as indicating a connection in the course of 
trade between those goods and a person entitled to use the trade 
mark in relation to the first-mentioned goods, then, notwithstanding 
that the proprietor registered in respect of the first-mentioned 50 
goods does not use or propose to use the trade mark in relation to 
those other goods and notwithstanding anything in section 34 of 
this Act, the trade mark may, on the application in the prescribed 
manner of the proprietor registered in respect of the first­
mentioned goods, be registered in his name in respect of those 55 
other goods as a defensive trade mark and. while so registered. 
shall not be liable to be taken off the rcgister in respect of those 
goods under section 34 of this Act. 
(2) The rc::!istered pronrietor of a trade mark may apply tor 
the registration thereof in respect of any goods as a defensive trade 60 
mnrk not.wit.hst:mdil1Q' that it i~ alread-,-registered in his name in 
respc~t of those goods otherwise than 'as a" defensi .... e trade mnrkl IP/N/lIIRL/T 11 
Page 22 
[1963.] Trade .J.11 arks Act, 1963. [No. 9.] 
or may apply for the registration thereof in respect of any goods 
otherwise than as a defensive trade mark notwithstanding that it 
is already registered in his llame in respect of those goods as a 
defensive trade mark, in lieu in each case of the existing 
5 registration. 
(3) .A. trade mark registered as a defensive trade mark and that 
trade mark as otherwise registered in the name of the same 
proprietor shall, notWithstanding that the respective registrations 
are in respect of different goods, be deemed to be, and shall be 
10 registered as, associa.ted trade marks. 
(4) On application by any person aggrieved to the Court or, at 
the option of the applicant and subject to section 59 of this Act, 
to the Controller, the registration of a trade mark as a defensiyc 
trade mark may be cancelled on the ground that the requirements 
15 of subsection (1) of this section are no longer satisfied in respect 
of any goods in respect of which the trade mark is registered in 
the name of' the same proprietor otherwise than as a defensive 
trade mark, pr may be cancelled as respects any goods in respect 
of which it is registered as a defensive trade mark on the ground 
20 that there is no longer any likelihood that the use of the trade mark 
in relation to those goods would be taken as giving the indication 
mentioned in subsection (1) of this section. 
(5) The Controller may at any time cancel the registration as 
a defensive trade mark of a trade mark of which there is no longer 
25 any registration in the name of the same proprietor otherwise 
than as a defensive trade mark. 
(6) Except as otherwise expressly provided in this section, this 
Act shall apply in respect of the registration of trade marks as 
defensive trade marks and of trade marks so registered as they 
30 apply in other cases. 
36.-(1) Ca) Subject to this section, a person other than the Registered users. 
proprietor of a trade mark may be registered as a 
registered user thereof in respect of all or any 
of the goods in respect of which it is registered 
35 (otherwise than as a defensive trade mark) and 
either with or without conditions or restrictions, 
proyided that there subsists a prescribed relation­
ship between the proprietor and the proposed 
registered user. 
40 
45 Cb) The use of a trade mark by a registered user 
thereof in relation to goods with which he is 
connected in the course of trade and in respect 
of which for the time being the trade mark remains 
registered and he is registered as a registered user, 
being use such as to comply with any conditions 
or restrictions to which his registration is subject, 
is in this A.ct referred to as the permitted use 
thereof. 
(2) The permitted use of a trade mark shall be deemed to be 
50 use by the proprietor thereof, and shall be deemed not to be use 
by a person other than the proprietor for the purposes of section 
34 of this Act and for any other purposes for which such use is 
material under this _~ct or at common law. 
55 
60 (3) (a) Subject to any agreement subsisting between the parties, 
a registered aser of a trade mark shall be entitled to 
call upon the proprietor thereof to take proceedings to 
prevent infringement thereof, and, if the proprietor 
refuses or neglects to do so within two months after 
being so called upon, thc registered user may institute 
proccedings fur infringement in his own name as if he 
wcrc the proprietor, making the proprietor a defendant. [1963.] Trade JJtlarks Act, 1963. IP IN 11 IIRL/T 11 
Page 23 
[No. 9.] 
(b) A proprietor so added as defendant shall not be liable 
for any costs unless he enters an appearance and takes 
part in the proceedings. 
(4) Where it is proposed that a person should be registered as 
a registered user of a trade mark, the proprietor and the proposed 5 
registered user must apply in writing to the Controller in the 
prescribed manner and must furnish him with such documents, 
information or evidence as may be required under the rules or by 
the Controller. 
(5) When the requirements of subsection (4) of this section have 10 
been complied with, if the Controller, after considering the 
information furnished to him under that subsection, is satisfied 
that in all the circumstances the use of the trade mark in relation 
to the proposed goods or any of them by the proposed registered 
user subject to any conditions or restrictions which the Controller 15 
thinks proper would not be contrary to the public interest, the 
Controller may register the proposed registered user as a 
registered user in respect of the goods as to which he is so satisfied 
subject as aforesaid. 
(6) The Controller shall refuse an application under subsection 20 
(4) of this section if it appears to him that the grant thereof 
would tend to facilitate trafficking in a trade mark. 
(7) Without prejudice to section 40 of this Act, the registration 
of a person as a registered user--
(a) may bc varied by the Controller as regards the goods in 25 
respect of which, or any conditions or 'restrictions 
subject to which, it has effect, on the application in 
writing in the prescribed manner of the registered 
proprietor of the trade mark to which the registration 
relates; 30 
(b) may be cancelled by the Controller on the application in 
writing in the prescribed manner of the registered 
proprietor or of the registered user or of any other 
registered user of the trade mark; or 
(c) may be cancelled by the Controller on the application in 35 
writing in the prescribed manner of any person on any 
of the following grounds, that is to say-
(i) that the registered user has used the trade mark 
otherwise than by way of the permitted use, or in 
such a way as to cause, or to be likely to cause, 40 
deception or confusion; 
(ii) that the proprietor or the registered user mis­
represented, or failed to disclose, some fact 
material to the application for the registration, or 
that the circumstances have materially changed 45 
since the date of the registration; 
(iii) that the registration ought not to have been effected 
having regard to rights vested in the applicant by 
virtue of a contract in the performance of which 
he is interested. 50 
(8) Provision shall be made by the rules for the notification of 
the registration of a person as a registered user to any othcr 
registered user of the trade mark, and for the notifica­
tion of an application under subsection (7) of this section 
to the registered proprietor and each registered user (not 55 
being the applicant) of the trade mark, and for giving to the appli­
cant on such an application, and to all persons to whom such an 
application is notified and who intervene in the proceedings in 
accordance with the rules, an opportunity of being heard. 
(9) The Controller may at any time cancel the registration of a 60 
person as a registered user of a trade mark in respect of any goods 
in respect of which the trade mark is no longer registered. IP IN 11 IIRL/T 11 
Page 24 
[1963.] Tm,de .J.lfarks Act, 1963. [.No. 9.] 
(10) Nothing in this section shall confer on a registered user of 
a trade mark any assignable or transmissible right to the use 
thereof. 
(11) Any person who is registered under this Act as a registered 
5 user of a trade mark shall be deemed to have been so registered 
as of the date of the application for his registration as a registered 
user. 
37.-(1) No application for thc registration of a trade mark in Proposed use 
respect of any goods shall be refused, nor shall permission for such of trade mark 
O . by corporation 1 registration be withheld, on the ground only that It appears that to be constituted. 
the applicant does not use or propose to use the trade mark-
(a) if the Court or the Controller (as the case may be) is 
satisfied that a body corporate is about to be consti­
tuted, and that the applicant intends to assign the 
15 trade mark to the corporation with a view to the use 
thereof in relation to those goods by the corporation; 
or 
(b) if the application is accompanied by an application for 
the registration of a person as a registered user of the 
20 trade mark, and the Court or the Controller (as the 
case may be) is satisfied that the proprietor intends it 
to be used by that person in relation to those goods and 
the Court or the Controller (as the case may be) is also 
satisfied that that person will be registered as a 
25 registered user thereof immediately after the registra­
tion of the trade mark. 
(2) Section 34 of this Act shall have effect, in relation to a trade 
mark registered under the power conferred by subsection (1) of this 
section as if for the reference, in paragraph (a) of subsection (1) 
30 of section 34 of this Act, to intention on the part of an applicant 
for registration that a trade mark should be. used by him there 
were substituted a reference to intention on his part that it should 
be used by the corporation or registered user concerned. 
(3) The Controllel' or (in the case of an appeal) the Court 
35 may, as a condition of the exercise of the power conferred by 
subsection (1) of this section in favour of an applicant who relies 
on intention to assign to a corporation as aforesaid, require him 
to give security for the costs of any proceedings before the 
Controller or the Court (as the case may be), and in default of 
40 such security being duly given may treat the '!pplication as 
abandoned. 
(4) Where a. trade mark is registered in respect of any goods 
under the power conferred by subsectio'll. (1) of this section in the 
name of an applicant who relies on intention to assign to a cor-
45 poration as aforesaid, then, unless within such period as may be 
prescribed, or within such further period not exceeding six months 
as the Controller may on application being made to him in the 
prescribed manner allow, the corporation has been registered as 
the proprietor of the trade mark in respect of those goods, the 
50 registration shall cease to have effect in respect thereof at the 
expiration of that period, and the Controller shall amend the 
register accordingly. 
38.-(1) Where under this Act use of a registered trade mark 
is required to be proved for any purpose, the Court or the Con-
55 troller (as the case may be) may accept use of an associated 
registered trade mark. or of the trade mark with additions or 
alterations not substaniially affecting its identity, as an equivalent 
for the use required to be proved. 
(2) The use of the whole of a registered trade mark shall for 
60 the purposes of this .Act be deemed to be also a use of any 
registered trade mark, being a part thereof, registered in the name Use of one of 
associated or 
substantially 
identical trade 
marks equivalent 
to use of another. Use of trade 
mark for export 
trade. 
Genera.l power 
to rectify 
entries i;t 
register. 
Power to 
e:1:punge or vary 
registration for 
bresch of 
~ondition. 
Correction of 
register. [1963.] Trade ;.l1c,rks Act, 1963. IP/NIl/IRL/TI 1 
Page 25 
[No. 9.] 
of the same proprietor by virtue of subsection. (1) of section. 29 
of this Act. 
39.-The application in the State of a trade mark to goods to 
be exported from the Statc, and any othcr act done in the State 
in relation to goods to be so exported which, if done in relation to 5 
goods to be sold or otherwise traded in within the State, would 
constitute use of a trade mark therein, shall be deemed to con­
stitute use of the trade mark in relation to those goods for any 
purpose for which such use is material under this Act or at 
common law. 10 
40.-(1) Any person aggrieved by the non-insertion in or 
omission from the register of any entry, or by any entry made in 
the register without sufficient cause, or by any entry wrongly 
remaining on the register, or by any error or defect in any entry 
in the register, may apply in the prescribed manner to the Court 15 
or, at the option of the applicant and subject to section. 59 of this 
Act, to the Controller, and the Court or the Controller (as the 
case may be) may make such order for making, expunging or 
varying the entry as the Court or the Controller (as thc case may 
be) may think fit. 20 
(2) The Court or the Controller (as the case may be) may in 
any proceeding under this section decide any question that it may 
be necessary or expedient to decide in connection with the recti­
fication of the register. 
(3) In case of fraud in the registration, assignment or trans-25 
mission of a registered trade mark, or in any other case in which 
he considers it to be· necessary in the public interest, the Con­
troller may himself apply to the Court under this section. 
(4) Any order of the Court rectifying the register shall direct 
that notice of the rectification shall be served in the prescribed 30 
manner on the Controller, and the Controller shall on receipt of 
the notice rectify the register accordingly. 
(5) The power to rectify the register conferred by this section 
shall include power to remove a registration in Part A of the 
register to Part B. 35 
41.-0n application by any person aggrievcd to the Court or, 
at 'the option of the applicant and subject to section 59 of this 
Act, to the Controller or on application by the Controller to the 
Court, the Court or the Controller (as the case may be) may make 
such order as the Court or the Controller (as the case may be) 40 
may think fit for expunging or varying the registration of a 
trade mark on the ground of any contravention of, or failure to 
observe, a condition entered on the register in relation thereto. 
42.-(1) The Controller may, on request made in the prescribed 
manner by the registered proprietor- i5 
(a) correct any error in t:J.e name, address or description of 
the registered proprietor of a trade mark; 
(b) enter any change in the name, address or description of 
the person who is registered as proprietor of a trade 
~~; W 
(c) cancel ~e entry of a trade mark on the register; 
(d) amend the specification of the goods in respect of which 
a trade mark is registered, provided that the amend­
ment does not in any way extend the rights given by 
the existing registration of the trade mark; or 55 IP IN 11 IIRL/T 11 
Page 26 
[1963.] Trade ..llarks Act, 1963. [.No,. 9.] 
(e) enter a disclaimer 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. 
(2) The Controller may, on request made in the prescribed 
5 manner by a registered user of a trade mark, correct any error, 
or enter any change, in the name, address or description of the 
registered user. 
(3) The Controller may, of his own motion, after having given 
the prescribed notice, correct any error made by him in any p.ntry 
10 on the register. 
43.-(1) The registered proprietor of a trade mark may apply 
in the prescribed manner to the Controller for leave to add to or 
alter the trade mark in any manner not substantially affecting 
the identity thereof, and the Controller may refuse leave or may 
15 grant it on such terms and subject to such limitations as he may 
think fit. 
(2) The Controller may cause an application under this section 
to be advertised in the prescribed manner in any case where it 
appears to him. that it is expedient so to do and, where he does so, 
20 ~hin the prescribetl time from the date of the advertisement 
any person gives notice to the Controller in the prescribed manner 
of opposition to the application, the Controller shall, after hearing 
the parties if so required, decide the matte!. 
25 (3) Where leave as aforesaid is granted, the trade mark as 
altered shall be advertised in the prescribed manner, unless it has 
already been advertised, in the form to which it has been altered, 
in an advertisement under subsection (2) of this section. 
44.-(1) The Minister may from time t.o time make such rules, 
30 prescribe such forms and generally do such things as he thinks 
expedient, for empowering the Controller to amend the register, 
whether by making or expunging or varying entries therein, so far 
as may be requisite for the purpose of adapting the designation 
therein of the goods or classes of goods in respect of which trade 
35 marks are registered to any amended or substituted classification 
that may be prescribed. 
(2) The Controller shall not, in exercise of any power conferred 
on him for the purpose aforesaid, make any amendment of thc 
register that would have the effect of adding any goods or classes 
40 of goods to those in respect of which a trade mark is registered 
(whether in one or more classes) immediately before the amend· 
ment is to be made, or of antedating the registration of a trade 
mark in respect of any goods: 
Provided that this subsection shall not have effect in relation 
45 to goods as to which the Controller is satisfied that compliance 
with this subsection in relation thereto would involve undue com­
plexity and that the addition or antedating, as the case may be, 
would not affect any substantial quantity of goods and would not 
substantially prejudice the rights of any person. 
50 (3) A proposal for the amendment of the register for the 
purpose aforesaid shall be notified to the registered proprietor of 
the trade Ill-'lrk affected, shall be advertised with any modifications, 
and may be opposed before the Controller by any person aggrieved 
on the ground that the proposed amendment conlravenes 
55 $Ub3edicm (3) of this section. Alteration of 
registcrPd 
trade mark. 
Adaptation of 
entries in 
register to 
amended or 
substituted 
classification of 
goods. Certification 
trade marks. IP IN /1 IIRL/T 11 
Page 27 
[1963.] Trade Marks Act, 1963. [No. 9.] 
45.-(1) .A mark adapted in relation to any goods to distinguish 
in the course of trade goods certified by any person in respect of 
origin, material, mode of manufacture, quality, accuracy or other 
characteristic, from goods not so certified shall be registrable as 
a certification trade mark in Part A of thc register in respect of 5 
those goods in the name, as proprietor thereof, of that person: 
Provided that a mark shall not be so registrable in the name of 
a person who carries on a trade in goods of the kind certified. 
(2) In determining whether a mark is adapted to distinguish as 
aforesaid, the Court or the Controller (as the case may be) may 10 
have regard to the extent to which-
(a) the mark is inherently adapted to distinguish as aforesaid 
in relation to the goods in question ; and 
(b) by reason of the use of the mark or of any other circum­
stances, the mark is in fact adapted to distinguish as 15 
aforesaid in relation to the goods in question. 
(3) Subject to subsections (4) to (6) of this section, and of sections 
15 and 16 of this Act, the registration of a person as proprietor 
of a certification trade mark in respect of any goods shall, if valid, 
give to that person the exclusive right to the use of the trade mark 20 
in relation to those goods, and, without prejudice to the generality 
of the foregoing words, that right shall be deemed to be infringed 
by any person who, not being the proprietor of the trade mark or 
a person authorised by him under the regulations in that behalf 
using it in accordance therewith, uses a mark identical with it or 25 
so nearly resembling it as to be likely to deceive or cause confusion, 
in the course of trade, in relation to any goods in respect of which 
it is registered, and in such manner as to render the use of the 
mark likely to be taken either-
(a) as being use as a trade mark; or 30 
(b) in a case in which the use is use upon the goods or in 
physical relation thereto or in an advertising circular 
or other advertisement issued to the public, as import­
ing a reference to some person having the right either 
as proprietor or by his authorisation under the relevant 35 
regulations to use the trade mark or to goods certified 
by the proprietor. 
(4) The right to the use of a certification trade mark given by 
registration as aforesaid shall be subject to any conditions or 
limitations entered on the register, and shall not be deemed to be 40 
infringed by the use of any such mark as aforesaid in any mode, 
in relation to goods to be sold or otherwise traded in in any place, 
in relation to goods to be exported to any market, or in any other 
circumstances, to which, having regard to any such limitations, 
the registration does not extend. 45 
(5) The right to the use of a certification trade mark given by 
registration as aforesaid shall not be deemed to be infringed by 
the use of any such mark as aforesaid by any person-
(a) in relation to goods certified by the proprietor of the trade 
mark if, as to those goods or a bulk of which they form 50 
part, the proprietor or another in accordance with his 
authorisation under the relevant regulations has applied 
the trade mark and has not subsequently removed or 
obliterated it, or the proprietor has at any time 
expressly or impliedly consented to the use of the trade 55 
mark; or 
(b) in relation to goods adapted to form part of, or to be 
accessory to, other goods in relation to which the trade 
mark has been used without infringement of the right 
given as aforesaid or might for the time being be so 60 
used, if the use of the mark is reasonably necessary in 
order to indicate that the goods are so adapted and IP/NI 1 IIRL/TI 1 
Page 28 
[1963.] Trade J.l1arks Act, 1963. [No. 9.] 
neither the purpose nor the effect of the use of the 
mark is to indica.te otherwise than in accordance with 
the fact that the goods are certified by the proprietor: 
Provided that paragraph (a) of this subsection shall not have 
;:; effect in the case of use consisting of the application of any such 
mark as aforesaid to any goods, notwithstanding that they are 
such goods as are mentioned in that paragraph, if such applica­
tion is contrary to the relevant regulations. 
(6) Where a certification trade mark is one of two or more 
10 registered trade marks that are identical or nearly resemble each 
other, the use of any of those trade marks in exercise of the right 
to the use of that trade mark given by registration shall not be 
deemed to be an infringement of the right so given to the use of 
any other of those trade marks. 
15 (7) (a) There shall be deposited at the Office in respect of every 
trade mark registered under this section regulations 
approved by the :Minister for governing the use thereof, 
which shall include provisions as to the cases in which 
the proprietor is to certify goods and to authorise the 
20 use of the trade mark, and may contain any other 
provisions that the Minister may require or permit to 
be inserted therein (including provisiollil conferring a 
right of appeal to the Controller against any refusal 
of the proprietor to certify goods or to authorise the 
25 use of the trade mark in accordance with the 
regulations). 
(b) Regulations deposited under this subsection shall be open 
to inspection in like manner as the register. 
(8) A certification trade mark shall not be assignable or trans-
30 missible otherwise than with the consent of the Minister. 
(9) The provisions of the First Schedule to this Act shall have 
effect with respect to the registration of a mark under this section 
and to marks so registered. 
46.-(1) A Minister of State may, subject to this Act, procure 
35 the registration of a trade mark or of a certification trade mark 
and a Minister by whom such registration is procured shall be, 
and shall be registered as, the proprietor thereof for all purposes 
under this Act. 
(2) A Minister of State may procure the registration in any 
40 register maintained in any place outside the State of a trade 
mark (whether registered or not registered under subsection (1) 
of this section) if and so far as and subject to such conditions as 
such registration is permitted by the law regulating such register 
and in any such case may procure himself to be entered in such 
45 register as the proprietor of such trade mark. Registration ot 
marks by 
lfinisteJ'" 
47.-It shall be lawful for the Minister to take in any place 
outside the State sueh lawful steps, whether by way of action or 
prosecution at law or otherwise, as he shall think proper to 
prevent, restrain, or to secure punishment for the registration, Misuse of 
trade marks 
indicative of 
Irish origin. 
50 use, or application in relation to or in respect of goods not grown, 
produced, or manufactured in the State of any trade mark or 
other mark or description indicating or suggesting or likely to 
lead to the belief that the goods in respect of which or to which 
such trade mark, mark, or description is used or applied were 
55 grown, produced or manufactured in the State. Preliminary 
advice by 
Controller as to 
distinctiveness. 
Controller may 
oonsult Attorney 
~neral. 
Hearing before 
exercise of 
Controller's 
discretion. 
Power of 
Controller to 
aWMd costs. 
Registration 
to be prima jacie 
evidence of 
v"lidity. 
Cortificate of 
validity. 
c...,~ts of th" 
Controller in 
Court 
proceedin~. [1963.] Trade .l.llarks Act, 1963. 
PART Ill. IP IN 11 IIRL/T 11 
Page 29 
[No.9.J 
PROVISIONS RELA'fING TO POWERS AND DUTIES OF CONTROLLEI~ 
AND TO LEGAL PROCEEDINGS. 
48.-(1) The power to give to a person who proposes to apply 
for the registration of a trade mark in Part A or Part B of the 5 
register advice as to whether the trade mark appears to the Con­
troller prima facie to be inherently adapted to distinguish, or 
capable of distinguishing, as the case may be, shall be a function 
of the Controller under this Act. 
(2) Any such person who is desirous of obtaining such advice 10 
must make application to the Controller therefor in the prescribed 
manner. 
(3) If on an application for the registration of a trade mark as 
to which the Controller has given advice as aforesaid in the 
affirmative, mad~ within three months after the advice is given, 15 
the Controller, after further investigation or consideration, gives 
notice to the applicant of objection on the ground that the trade 
mark is not adapted to distinguish, or capable of distinguishing, as 
the case may be, the applicant shall be entitled, on giving notice 
of ,vithdrawal of the application within the prescribed period, to 20 
have repaid to him any fee paid on the filing of the application. 
49.-The Controller may, in any case of doubt or difficulty in 
the administration of this Act, apply to the Attorney General for 
directions in the matter. 
50.-Where any discretionary or other power is given to the 25 
Controller by this Act or the rules, he shall not exercise that power 
adversely to the applicant for registration or the registered pro­
prietor of the trade mark in question without (if duly required so 
'0 do within the prescribed time) giving to the applicant or 
registered proprietor an opportunity of being heard. 30 
51.-In all proceedings before the Controller under this Act, 
the Controller shall have power to award to any party such cost~ 
as he may consider reasonable, and to direct how and uy what 
parties they arc to be paid, and any such order may, by leave of 
the Court, h~ enforced in the same manner as a judgment or order 35 
of the Court to the same effect. 
52.-In all legal proceedings relating to a registered trade mark 
(including applications under section 40 of this Act) the fact that 
a person is registered as proprietor of the trade mark shall be 
prima fade evidence of the validity of the original registration 40 
of the trade mark and of all subsequent assignments and trans­
missions thereof. 
53.-In any legal proceeding in which the validity of the regis­
tration of a registered trade mark comes into question and is 
oeeidco in fm'our of the proprietor of the trade mark, the Court 45 
may certify to that effect, and if it so certifies then in any subse­
quent legal proceeding in which the validity of the registration 
comes into qnestion the proprietor of the trade mark on obtaining 
n. final order or judgment in his favour shall have his full costs, 
~hargcs and expenses as between solicitor and client, unless in the 50 
subsequent proceeding the Court certifies that he ought not to 
have them. 
54.-1n any proceedings before the Court under this Act the 
(;ont1'o11er shall be neither awarded costs nor ordered to pay the 
I!Osts of any other party. 55 JP IN 11 IJRL/T 11 
Page 30 
f1963.] Trade 3farks Act, 1963. [No. 9.] 
55.-In any action or proceeding relating to a trade mark or 
trade name, the Court or the Controller (as the ease may be) shall 
admit evidence of the usages of the trade concerned and of any 
relevant trade mark or trade name or get-up legitimately used by 
5 other persons. 
56.-(1) The Controller shall be given notice in writing (by the 
plaintiff, appellant or applicant, as j he case may be) of any legal 
proceeding in which the relief sought would affect the register 
(including all appeal from any order or decision of the Controller 
10 and an application under section 25 or 26 of thi" Act to extend 
the time for making an appeal against a decision of the Controller 
under either of those sections) and of the decision of the Court 
respecting any such legal proceeding, and shall have the right to 
appear and be heard, and shall appear if so directed by the Court, 
15 in any such legal proceeding. 
(2) Unless otherwise directed by the Court, the Controller in 
lieu of appearing and being heard may submit to the Court a 
statement in writing signed by him, giving particulars of the 
proceedings before him in relation to the matter in issue or of th.c 
20 grounds of any decision given by him affecting it or of the 
practice of the Office in like cases or of such other matters relevant 
to the issues, and within his lmowledge as Controller, as he thinks 
fit, and the statement shall be deemed to form part of the evidence 
in the proceeding. 
25 57.-(1) An appeal shall lie to the Court from any order or 
decision of the Controller under any provision of this Act (not 
being a decision of the Controller under section 11 or subsection (7) 
of section 69 of this Act) or from a correction of an error in the 
register by the Controller nnder subsection (3) of section 42 of this 
30 Act, and the Court may make such order confirming, annulling or 
varying the order or decision or correction of the Controller 
as it thinks fit. 
(2) In any appeal from a decision of the Controller to the Court 
under this Act, the Court shall have and exercise the same 
35 discretionary powers as under this Aet are conferred upon the 
Controller. 
(3) Except by leave of the Court, no appeal (other than an 
appeal under sectior~ 25 or 26 of this Act) from an order or decision 
of the Controller or from a correction of an error in the register by 
40 the Controller under subsection (3) of section 42 of this Act shall 
be entertained of which notice to the Court is not gi\'cn within one 
month from the date of the order, decision or correction appealed 
against or within such further pcriod not exceeding three months 
as the Controller may allow (upon request receiycd before the 
45 expiration of the said period of one month). 
(4) Subject to subsection (5) of this section. a decision of the 
Court under this section shall be final and not appealable. 
(5) By leave of the Court, an appeal from a decision of the 
Court under this section shall lie to the Supreme Court on a sp('~i-
50 fied question of law. 
58.-The Court, in dealing with any question of the rectification 
of the register (including all applications under section 40 of this 
Act), shall have power to rcyiew any decision of the Controller 
relating to the entry in question or the correctioll sOH!!,ht to he 
55 made. Trade usage and 
other matters 
to be considered. 
Controller's 
o.ppearance in 
proceedings. 
Appeal to 
the Court. 
Court's power 
to review 
Controller's 
decision. 
59.-Where under this Act an applicant has an option to make Procedure in cases of option an application either to the COllrt or t(l thc Contrnllcr- to apply to Court 
or Controller. 
fa) if an action concernin:r the trade mark in question is 
pending, the application must be made to the Court; Mode of giving 
evidence. 
Evidence of 
entries in 
register. 
Evidence of 
things done by 
Controller. IP IN 11 IIRL/T 11 
Page 31 
[1963.] Trade Marks Act, 1963. [No. 9.] 
(b) if in any other case the application is made to the 
Controller, he may, at any stage of the proceedings, 
refer the application to the Court, or he may, after 
hearing the parties, determine the question between 
them, subject to appeal to the Court. 5 
60.-(1) In any proceeding under this Act before the Controller, 
the evidence shall be given by statutory declaration in the absence 
of directions to the contrary, but, in any case in which the 
Controller thinks it right so to do, the Controller may take evidence 
orally in lieu of or in addition to evidence by declaration. 10 
(2) Any such statutory declaration may in the case of appeal 
be used before the Court in lieu of evidence by affidavit, bRt if 
so used shall have all the incidents and consequences of evidence 
by affidavit. 
(3) In case any part of the evidence is taken orally the 15 
Controller may do all or any of the following things !-
(a) summon witnesses to attend before him, 
(b) examine on oath (which he is hereby authorised to 
administer), or permit the examination on oath of, the 
witnesses attending before him, 20 
(c) require any such witness to produce to the Controller any 
document in such witness's power or control. 
(4) A witness before the Controller shall be entitled to the same 
immunities and privileges as if he were a witness before the Court. 
(5) A summons shall be signed by the Controller. 
(6) If any person-
(a) on being duly summoned as a witness before the 
Controller makes default in attending, or 25 
(b) being in attendance as a witness refuses to take an oath 
legally required by the Controller to be taken, or to 30 
produce any document in his power or control legally 
required by the Controller to be produced by him, or 
to answer any question to which the Controller may 
legally require an answer, 01' 
(c) does any other thing which would, if the Controller were 35 
a court of law, having power to commit for contempt 
of court, be contempt of such court, 
the Controller may· certify the offence of that person under his 
official seal to the Court and the Court may, after such inquiry as 
it thinks proper to make, punish or take steps for the punishment 40 
of that person in like manner as if he had been guilty of contempt 
of the Court. 
61.-(1) A copy of any entry in the register, purporting to be 
certified by, and sealed with the official seal of, the Controller, 
shall be admitted in evidence in any court of law, and in all 45 
proceedings, without further proof or production of the original. 
(2) Any person requiring such a certified copy as aforesaid 
shall be entitled to obtain it on payment of the prescribed fee. 
62.-A certificate purporting to be under the official seal of the 
Controller as to any entry, matter or thing that he is authorised 50 
bv this Act or the rules to make or do shull be prima facie 
e~idl'n('~ of the ('nt!')' l:U';ing been made. :mo of the ~ontents 
thereof, and of the matter or thing having been done or not done. IP IN 11 IIRL/T 11 
Page 32 
(1963.] Trade u-iarks Act, 1963. [No. 9.] 
PART IV. 
~IISCELLANEOUS. 
63.-11. person who makes or causes to be made a false entry 
in the register, or a writing falsely purporting to be a copy of an 
5 entry in the register, or who produces or tenders or causes to be 
produced or tendered in evidence any such writing, knowing the 
entry or writing to be false, shall be guilty of an offence under 
this section and shall be liable on summary conviction thereof to 
a fine not exceeding one hundred pounds or, at the discretion of Falsification of 
entries in 
register. 
10 the court, to imprisonment for any term not exceeding three 
months or to both such fine and such imprisonment. 
64.-(1) Any person who makes a representation- Fine ior falsely 
representing a. 
(a) with respect to a mark not being a registered trade mark, trade ma.rk a.s 
to the effect that it is a registered trade mark; or registered. 
15 (b) with respect to a part of a registered trade mark not 
being a part separately registered as a trade mark, to 
the effect that it is so registered; or 
(0) to the effect that a registered trade mark is registered in 
respect of any goods in respect of which it is not 
20 registered; or 
(d) to the effect that the registration of a trade mark gives 
an exclusive right to the use thereof in any circum­
stances in which, having regard to limitations entered 
on the register, the regiStration does not give that 
25 right; 
30 
35 
40 
45 
50 shall be guilty of an offence under this section and shall be liable 
on summary conviction thereof to a fine not exceeding twenty 
pounds and, in the case of a continuing offence, a further fine not 
exceeding five pounds for every day on which the offence continues. 
(2) For the purposes of this section, the use in the State in 
relation to a trade mark of the word " registered ", or of any 
other word referring whether expressly or impliedly to registration, 
or of a prescribed symbol shall be deemed to import a reference to 
registration in the register, except-
(a) where that word or that symbol is used in physical 
association with words delineated in characters at least 
as large as those in which that word or that symbol is 
delineated and indicating that the reference is to regis­
tration as a trade mark under the law of a place outside 
the State, being a place under the law of which the 
registration referred to is in fact in force; 
(b) where that word (being a word other than the word 
" registered ") or that symbol is of itself such as to 
indicate that the reference is to such registration as last 
aforesaid; or 
(0) where that word or that symbol is used in relation to a 
mark registered as a trade mark under the law of a 
place outside the State and in relation to goods to be 
exported to that place. 
65.-Any person who without lawful authority uses in connec­
tion with any business, trade, calling or profession any badge, 
device, emblem, or flag reserved by law for the use of, or 
commonly used by, the State, the Defence Forces, any officer of 
the State or any Department of State (or any badge, device, Una.uthorised 
user of Sta.te 
badges. Change of form 
of trade 
oonnection not 
to be deemed to 
cause deception. 
Jointly owned 
trade marks. 
Trusts and 
equities. 
Recognition and 
regist1'8tion of 
trade mark 
agents. IP IN 11 IIRL/T 11 
Page 33 
[1963.] Trade J1 arks Act, 1963. [No. 9.] 
emblem, or flag so closely resembling the same as to be likely to 
deceive) in such manner as to be likely to lead to the belief that 
he is duly authorised to us~ such badge, device, emblem, or flag, 
shall be guilty of un offenec under this section and shall be liable 
on summary conviction thereof to a fine not exceeding twenty 5 
pounds (and, in the case of a continuing offence, to a further fine 
not exceeding five pounds for every day on which the offence 
continues) or, at the discretion of the court, to imprisonment for 
any term not exceeding three months. 
66.-The use of a registered trade mark in relation to goods 10 
between which and the person using it any form of connection in 
the course of trade subsists shall not be deemed to be likely to 
cause deception or confusion on the ground only that the trade 
mark has been, or is, used in relation to goods between which and 
that person or a predecessor in title of his a different form of 15 
connection in the course of trade subsisted or subsists. 
67.-(1) Where the relations between two or more persons 
interested in a trade mark are such that no one of them is entitled 
as between himself and the other or others of them to use it 
cxcept-
(a) on behalf of both or all of them, or 
(b) in relation to an article with which both or all of them 
are connected in the course of trade, 20 
those persons may be registered as joint proprietors of the trade 
mark, and this Act shall have effect in relation to any rights to 25 
the use of the trade mark vested in those persons as if those 
rights had been vested in a single person: 
Provided that the rights of any person who is so registered 
shall be deemed to be infringed by any other of the said persons 
who uses the trade mark in physical or other relation to goods in 30 
respect of which the trade mark is registered under this section, 
but with which both or all of the said persons are not and have 
not been connected in the course of trade. 
(2) Subject to subsection (1) of this section, nothing in this 
Act shall authorise the registration of two or more persons who 35 
use a trade mark independently, or propose so to use it, as joint 
proprietors thereof. 
68.-(1) There shall not be entered in the register any notice 
of any trust express, implied or constructive, nor shall any such 
notice be receivable by the Controller. 40 
" (2) Subject to this Act, equities in respect of a trade mark 
may be enforced in like manner as in respect of any other 
personal property. 
69.-(1) Whenever under this Act any act has to be done by or 
to any person in connection with a trade mark or any procedure 45 
relating to a trade mark or the registration thereof, the act (if 
not excepted by the rules) may, under and in accordance with 
rules made under this section or, in particular cases, with the 
consent of the ::Hinister, be done by or to an agent of that person 
duly authorised in the prescribed manner and, if acting for gain, 50 
registered in the register kept under subsection (.2) of this section. 
(2) There shall be kept at the Office a register which shall be 
called the register of trade mark agents, and no person shall, 
either alone or in partnership with any other person, practise, 
describe himself, hold himself out, or permit himself to be 55 
described or held out, as a trade mark agent, unless he is regis. 
tered in the register of trade mark agents, and a partnership IP/N/l/IRL/T 11 
Page 34 
[1963.] Trade .:.1{arks Act, 1963. [No. 9.] 
shall not so practise, describe itself, hold itself out, or permit itself 
so to be described or held out, unless all the partners are so 
registered. 
(3) Any person who-
5 (a) resides in the State, 
(b) has a place of business in the S tu te, 
(c) is not an alien (within the meaning of section 2 of the 
Irish Nationality and Citi2enship Act, 1956), 1 (J5G, ::-:ro. 2 
(d) possesses the prescribed educational and professional 
10 qualifications, and 
(e) complies with the pr~scribed conditions, 
shall be eligible to be registered in the register of trade mark 
agents, and a partnership shall be so eligible if every partner 
thereof is registered in accordance with this section, and a person 
15 or partnership so eligible shall on application in the prescribed 
form and manner and on payment of the prescribed fee, be so 
registered. 
(4) Notwithstanding subsection (3) of this section any person 
who has been in continuous practice as a trade mark agent in the 
20 State for a period of five years before the commencement of this 
Act and makes application (in the prescribed form and manner 
and upon payment of the prescribed fee) for registration within 
twelve months from the commencement of this Act shall be eligible 
to be registered in the register of trade mark agents. 
25 (5) Any person who at any time after the expiration of three 
months from the commencement of this Act contravenes this 
section shall be guilty of an offence under this section and shall 
b(> liable on summary conviction thereof to a :fine not exceeding, 
in the case of a first offence, twenty pounds and, in the case of 
30 a second or subsequent offence, one hundred pounds. 
(6) Any person registered in the register of trade mark agents 
who-
(a) ceases to be eligible to be so registered, or 
(b) applies to be removed . from the register, 
S5 may be removed by the Controller from the register of trade 
mark agents, but no person shall be so removed (except on his 
own application) without being given an opportunity of being 
heard. 
(7) (a) Where a person registered in the register of trade mark 
40 agents is found by the Controller, after due inquiry by 
the Controller (includin~ the hearing by the Controller 
of representations, if any, by the person), to have been 
guilty of conduct disgraceful to that person in a pro­
fessional respect, the Controller may, if he sees fit, 
45 decide that the name of that person should be erased 
from the register of trade mark agents. 
50 (b) On making a decision under this subsection, the Controller 
shall forthwith send by post to the person to whom 
the decision relates, at his address as stated in the 
register of trade mark agents, a notice in writing 
stating the decision, the date thereof and the reason 
therefor. 
(c) A person to whom a decision of the Controller under 
this subsection relates may, within the period of four-
55 teen days beginning on the date of the decision, on 
giving notice to the Controller in the prescribed manner 
apply to the Court for C&D.cellation of the decision, and 
if he so applies--
ti) the Court, on the hearing of the application, ma~ 
either-1954, No 36 [1963.] Trade jj arks Act, 1963. 
(1) cancel the decision, or IP IN 11 IIRL/T 11 
Page 35 
[No. 9.] 
(11) confirm the decision and direct the Controller 
to erase the name of such person from the 
register of trade mark agents, 
(ii) if at any time the Controller satisfies the Court that 5 
such person has delayed unduly in proceeding 
with the application, the Court shall, unless it 
sees good reason to the contrary, confirm the 
decision and direct the Controller to erase the 
name of such person from the register, 10 
(iii) the Court may, subject to section 54 of this Act, 
direct how the costs of the application are to be 
borne. 
(d) Where a person to whom a decision of the Controller 
under this subsection relates does not, within the period 15 
of fourteen days beginning on the date of the decision, 
apply to the Court for cancellation of the decision, the 
Controller may apply ex parte to the Court for con­
firmation of the decision and, if the Controller so 
applies, the Court, on the hearing of the application, 20 
shall, unless it sees good reason to the contrary, confirm 
the decision and direct the Controller to erase the 
name of such person from the register of trade mark 
agents. 
(e) The decision of the Court on an application under this 25 
subsection shall be final, save that, by leave of the 
Court, an appeal, by the Controller or the person 
concerned, from the decision shall lie to the Supreme 
Court on a specified question of law. 
(f) On erasing the name of a person from the register of 30 
trade mark agents under this subsection, the Controller 
shall forthwith send by post to such person, at his 
address as stated in the register of trade mark agents, 
notice in writing of the erasure. 
(g) A person whose name has been erased from the register of 35 
trade mark agents under this subsection may at any 
time be restored to the register by special direction of 
the Controller but not otherwise, and when a person is 
so restored to the register, the Controller may attach 
to the restoration such conditions (including the pay-40 
ment of a fee not exceeding the fee which would be 
payable by such person if he was then being registered 
for the first time) as the Controller thinks fit. 
(8) A person (in this subsection referred to as an agent) duly 
authorised by any person under subsection (1) of this section to 45 
act as his agent may (subject to any provision to the contrary in 
any agreement between the agent and that person), on giving notice 
to the Controller and that person, cease to act as agent for that 
person. 
(9) The Minister may by order make rules under this section 50 
for the management of the register of trade mark agents, and 
may by such rules prescribe any matter or thing referred to in 
this section as prescribed, and in particular may so prescribe the 
educational and professional qualifications and the conditions for 
eligibility for registration in the register of trade mark agents, 55 
and the maximum fees which may be charged by any person regis­
tered in the register of trade mark agents for such services in 
connection with the registration of tradc marks as may be speci­
fied in such rules. 
(10) (a) A person who is registered in the register of trade mark 60 
agents shall not be guilty of an offence under section 
58 of the Solicitors Act, 1954, by reason only of the 
preparation by him for use in proceedings under this 
Act before the Controller or the Court of any docu-
ment other than a deed. 65 IP/N/I/IRL/T/l 
Page 36 
[1963.] Trade Marks Act, 1963. [No. 9.] 
(b) Notwithstanding subsection (5) of this section, it shall 
not be an offence under this section for the legal per­
sonal representative of a deceased trade mark agent to 
carry on business or practise in the name of that 
5 deceased trade mark agent for a period not exceeding 
three years from the death of that trade mark agent, 
or for such further period (if any) as the Court 
allows, if the legal personal representative is himself a 
trade mark agent or employs a trade mark agent to 
10 manage the business or practice on his behalf. 
(11) Notwithstanding subsection (3) of this section, the Minister 
may, with a view to the fulfilment by the Government on behalf 
of the State of any international agreement to which the State is 
a party, by order declare that a citizen of a particular state (being 
15 a state which is also a party to that international agreement) 
shall, if he otherwise complies with that subsection, be eligible to 
be registered in the register of trade mark agents. 
(12) Notwithstanding subsection (4) of section 10 of the Petty 
Sessions (Ireland) Act, 1851, summary proceedings for an offence 1851. c. 93. 
~O under this section may be instituted within twelve months from 
the date of the offence. 
70.-(1) Where any person has applied, in a foreign state which International 
is a party to any international agreement for the mutual protection agreements. 
of trade marks to which the State is a party, for protection of a 
25 trade mark of which that person is the proprietor, that person or 
his legal representative or assignee shall be entitled to registration 
under this Act of that trade mark in priority to other applicants ; 
and the registration shall have the same date as the date of the 
application in that foreign state: 
30 Provided that-
(a) the application in the State is made within the prescribed 
period, and 
(b) nothing in this section shall entitle the proprietor of a 
trade mark to recover damages for any infringement 
35 occurring prior to the date which. but for subsection (1) 
of section 27 of this Act, would have been the date of 
registration of that trade mark. 
(2) The registration under this Act of a trade mark to which 
this section applies shall not be invalidated by reason only of the 
40 use of that trade mark in the State during the period prescribed 
ur.der paragraph (a) of subsection (1) of this section as that within 
which the application for such registration may be made. 
(3) An application for the registration under this Act of a trade 
mark to which this section applies shall be made in the manner 
45 specified in section 25 of or, in the case of a certification trade mark 
in the manner specified in the First Schedule to this Act. 
EO (4) Any person who by an application which-
(a) in accordance with the law of any foreign state is equiva­
lent to an application duly made in that foreign state, 
or 
(b) in accordance with the terms of any international agree­
ment subsisting between any two or more foreign states 
is equivalent to an application duly made in one of 
those foreign states, 
55 has applied for protection of a trade mark of which he is the 
proprietor shall for the purpose of this section be deemed to have 
so applied in that foreign state. 
(5) This secti()n shall apply only in the case of those foreign 
states with respect to which the Government, by order, declares 
60 it to be applicable and so long only in the case of each foreign state 
as the order continues in force with respect to that foreign state. Offences by 
bodies corporate 
or unincorporated 
bodies. 
Tra.nsitiona.l 
provisioIltl. IP/NIl/IRL/TI 1 
Page 37 
[1963.] Trade Marks Act, 1963. [No. 9.] 
(6) In this section" foreign state" includes any territory for 
the foreign relations of which any state (being a state which is a 
party to any international agreement for the mutual protection of 
trade marks to which the State is a party) considers itself 
responsible. 5 
71.-Where an offence under section 63, 64, 65, or 69 of this 
Act-
(a) is committed by a body corporate or a partnership or by 
a person purporting to act on behalf of a body cor-
porate or a partnership, and 10 
(b) is proved to have been so committed with the consent or 
approval of, or to have been facilitated by any default 
on the part of, any person being, in the case of: a body 
corporate, a director thereof, or, in the case of a 
partnership, a partner thereof, 15 
that person shall also be guilty of the offence. 
72.-The transitional provisions set out in the Second Schedule 
to this Act shall have effect with respect to the mattcrs therein 
mentioned respectively. 
FmST SCHEDULE. 
CERTIFICATION TRADE MARKS. 
1. (1) An application for the registration of a mark under 
section 45 of this Act must be made to the Controller in writing 
in the prescribed manner by the person proposed to be registered 20 
as the proprietor thereof. 25 
(2) The provisions of subsection (2) and of subsections (4) to 
(8) of section 25 of this Act shall have effect in relation to an 
application under the said section 45 as they have effect in relation 
to an application under subsection (1) of the said section 25, 
except that for references therein to acceptance of an application 30 
there shall be substituted references to authorisation to proceed 
with the application. 
(3) In dealing under the said prOVISIons with an application 
undcr the said section 45, the Court or the Controller (as the 
ease may be) shall have regard to the like considerations !;o far as 35 
relc\rant, as if the application were an application under the 
said section 25 of this Act and to any' other considerations (not 
being matters within the compctence of the Ministcr undcr sub­
paragraph (5) of this paragraph) relevant to applications under 
the said section 45, including the desirability of securing that a 40 
certification trade mark shall comprise some indication that it is 
such a trade mark. 
(4) An applicant for the registration of a mark under the 
said section 45 shall transmit to the Controller draft regulations 
for governing the use thercof at such time before the decision of 45 
the Controller on the application as he may require in order to 
enablc him to consider the draft, and the Controller shall report 
thcreon to the Minister. 
(5) When authorisation to proceed with an application has been 
givcn, the ~Iinister shall consider the application with regard to 50 
the following matters, that i~ to say:-
(a) whether the applicant is competent to certify the goods 
in rcspect of which the mark is to be registcrpd; IP/NIl/IRL/TI 1 
Page 38 
[1963.] Trade jl,;Iarks Act, 1963. [No. 9.] 
(b) whether the draft regulations are satisfactory; and 
(c) whether in all the circumstances the registration applied 
for would be to the public advantage; 
and may either-
5 (i) direct that the application shall not be accepted; or 
10 (ii) direct the Controller to accept the application, and 
approve the regulations, either without modification 
and unconditionally or subject to any conditions or 
limitations, or to any amendments or modifications 
of the application or of the regulations, which he 
thinks requisite having regard to any of the matters 
aforesaid; 
but, except in the case of a direction for acceptance and approval 
without modification and unconditionally, the Minister shall not 
15 decide the matter without giving to the applicant an opportunity 
of being heard: 
Provided that the Minister may, at the request of thc applicant 
made with the concurrence of the Controller, consider the appli­
cation with regard to any of the matters aforesaid before 
20 authorisation to proceed with the application has been given, so 
however that the :Minister shall be at liberty to reconsider any 
matter on which he has given a decision under this proviso if any 
amendment or modification is thereafter made in the application 
or in the draft regulations. 
25 2. (1) When an application has been accepted, the Controller 
shall, as soon as may be after such acceptance, cause the application 
as accepted to be advertised in the prescribed manner, and the 
provisions of subsections (2) to (12) of section 26 of this .Act shall 
have effect in relation to the registration of the mark as if the 
30 application had been an application under section 25 of this Act: 
Provided that, in deciding under the said provisions, the Court 
or the Controller (as the case may be) shall have regard only 
to the considerations referred to in sub paragraph (3) of paragraph 
1 of this Schedule, and a decision under the said provisions in 
35 favour of the applicant shall be conditional on the determination in 
his favour by the :Minister under sub paragraph (2) of this 
paragraph of any opposition relating to any of the matters referred 
to in st£bpa.1'agraph (5) of the said para{jl'aph 1. 
(2) When notice of opposition is given relating to any of the 
40 matters referred to in subparagraph (5) of paragraph 1 of this 
Schedule, the Minister shall, after hearing the parties, if so 
required, and considering any evidence, decide whether, and 
subject to what conditions or limitations, or amendments or 
modifications of the application or of the regulations, if any, 
45 registration is, having regard to those matters, to be permitted. 
3. (1) The regulations deposited in respect of a certification 
trade mark may, on the application of the registered proprietor, 
be altered by the Controller with the consent of the :JIinister. 
(2) The :lUinister may causc Ull application for his consent to be 
50 advertised in any case where it appears to him that it is expedient 
so to do, and, where the ~Iinister causes an application to be 
advertised, if within tile prescribed time from the date of the 
advertisement any person gives notice to him of opposition to the 
application, he shall not decide the matter without giving the 
55 parties an opportunity of being heard. 
4. (1) The .Minister may, on the application in the prescribed 
manner of any person aggrieved or on the application of the 
Controller, make such order as he thinks fit for expunging or 8wion 72. [1963.] Trade ~1 arks Act, 1963. IP IN 11 IIRL/T 11 
Page 39 
[No. 9.] 
varying any entry in the register relating to a certification trade 
mark, or for varying the deposited regulations, on the ground-
(a) that the proprietor is no longer competent, in the case 
of any of the goods in respect of which the trade mark 
is registered, to certify those goods; 5 
(b) that the proprietor has failed to observe a provision of 
the deposited regulations to be observed on his part; 
(c) that it is no longer to the pub lie advantage that the trade 
mark should be registered; or 
(d) that it is requisite for the publie advantage that, if the 10 
trade mark remains registered, the regulations should 
be varied; 
and neither the Court nor the Controller shall have any jurisdic­
tion to make an order under section 40 of this Act on any of those 
~unk ~ 
(2) The Controller shall rectify the register and the deposited 
regulations in such manner as may be requisite for giving effect 
to an order made under sub paragraph (1) of this paragraph. 
5. Notwithstanding anything in section 51 of this Act, the 
Controller shall not have any jurisdiction to award costs to or 20 
against any party on an appeal to him against a refusal of the 
proprietor of a certification trade mark to certify goods or to 
authorise the use of the trade mark. 
6. The follov/ing provisions of this Aet shall not have effect in 
relation to a certification trade mark, that is to say, section 12, 25 
section 14, section 17, sections 25 and 26 (except as expressly 
applied by this Schedule), subsections (4) to (7) of section 30, 
sections 34 to 37, section 66, and any provisions the operation of 
which is limited by the terms thereof to registration in Part B of 
the register. 30 
SECOND SCHEDULE. 
TRANSITIONAL PROVISIONS. 
Preservation for three years of rights under section 82 (2) 
of Act of 1927. 
1. Notwithstanding subsection (1) of section 17 of this .Act and 35 
the repeal of subsection (2) of section 82 of the Act of 1927, any 
special or distinctive word or words,' letter, numeral, or com­
bination of letters or numerals used as a trade mark by the 
applicant or his predecessors in business before the 13th day of 
August, 1875, which has continued to be used (either in its 40 
original form or with additions or alterations not substantially 
affecting the identity of the same) down to the date of the 
application shall, in the period ending on the day which is three 
years after the commencement of this Act, be registrable as a 
trade mark in Part .A. of the register under this Act. 45 
Assigllments and transmissions beto're the commencement 
of this Act aiving exclusive rights in di.tJm'ent places in 
the State. 
2. The validity of an assignment or transmission of a trade mark 
effected or claimed to ha,-e been effected before the commencement 50 
of this Act, in :my such case as is mentioned in subsection (6) of 
section 30 of this Act, shall be determined as if the provisions IP IN 11 IIRL/T 11 
Page 40 
.[1963.] Trade Marks Act, 1963. [No. 9.] 
contained in subsections (1) to (5) of that section had not been 
enacted: 
Provided that, on application made in the prescribed manner 
within three years from the commencement of this Act, by a person 
5 who claims that an assignment or transmission of a registered 
trade mark to him or to a predecessor in title of his has been 
so effected, the Controller shall have the like jurisdiction as under 
the proviso to subsection (6) of the said section 30, and an assign­
ment or transmission approved by him shall not be deemed to 
10 have been invalid on the ground of the subsistence of such rights 
as are mentioned in the said subsection (6) or on the ground that 
the assignment or transmission was effected otherwise than in 
connection with the goodwill of a business or was effected in 
respect of some (but not all) of the goods in respect of which the 
15 trade mark was registered, if application for the registration under 
section 33 of this Act of the title of the person becoming entitled 
is made within six months from the date on which the approval 
is given, or was made before that date. 
Saving as to retrospective provisions relating to assignments 
20 and transmissions. 
3. The retrospective provisions contained in section 30 of this 
Act, and in paragraph 2 of this Schedule shall have effect .with6ut 
prejudice to any determination of the Controller or the Court that 
was made before the commencement of this Act, or to the deter-
25 mination of any appeal from a determination so made, or to any 
title acquired for valuable consideration before the commencement 
of this Act. 
Association of trade marks assignable or transmissible 
as a whole. 
30 4. Where immediately before the commencement of this Act a 
trade mark was registered in Part B of the register subject to a 
condition rendering it assignable or transmissible only as a whole 
with another trade mark registered in the name of the same 
proprietor or with two or more other trade marks so registered, 
35 and not separately, the trade marks shall be deemed to he 
associated trade marks, and the entries in the register relating 
thereto may be amended accordingly. 
Previous use of a trade mark by person becoming registered 
user on application made within three years of appointed day. 
40 5. Where a person is registered as a registered user of a trade 
mark on an application made within three years from the commence­
ment of this Act, subsection (2) of section 36 of this Act shall 
have effect in relation to any previous use (whether before or after 
the commencement of this Act) of the trade mark by that person, 
45 being use in relation to the goods in respect of which he is 
registered and, where he is registered subject to conditions or 
restrictions, being use such as to comply substantially therewith, 
as if such previous use had been permitted use. 
Use of trade mark for export trade before appointed day. 
50 6. Section. 39 of this Act shall be deemed to have had effect in 
relation to an act done before the commencement of this Act as it 
has effect in relation to an act done after the commencement of 
this Act, without prejudice, however, to any determination of the 
Controller or the Court which was made before the commencement 
55 of this Act or to the determination of any appeal from a determi· 
nation so made. [1963.J Tirade ~ylark8 Act, 1963. IP IN 11 IIRL/T 11 
Page 41 
[No. 9.] 
Trade marks registered under secti01t 123 of the Industrial 
and Commercial Properly (Protection) Act, 1927 to be deemed 
to have been registered unders6ction 45 of this A.ct. 
7. Section 45 of this Act shall have effect, in relation to a trade 
mark that immediately before the appointed day was on the 5 
register by virtue of section 123 of the Act of 1927, as if the said 
section 45 had been in force at the date of the registration of the 
trade mark and it had been registered under that section, subject 
however to the following modifications, that is to say :-
(a) the proviso to subsection (1) of the said section 45 shall 10 
not apply; 
(b) in a case in which regulations for governing the use of 
the trade mark are deposited at the Office at the 
commencement of thi~ Act, those regulations shall be 
deemed to have been deposited under the said 15 
section 45; 
(c) in a case in which no such regulations are deposited at the 
commencement of this Act, the proprietor shall be at 
liberty, or may be required by the Minister as a 
condition of the continuance of the registration, to 20 
deposit at any time thereafter such regulations as the 
Minister may permit or require; and 
(d) in a case in which no such regulations are for the time 
being deposited, the said section 45 shall have effect 
as if references therein, and in the First Schedule to 25 
this Act, to the r~gulations had been omitted. 
Wt. G.31429/F./4. 385 850. -. 4/63 C.&Oo. (4040) G.16. IP/N/I/JRL/T/l 
Page 42 
STATUTORY INS:rRffi'l!ENTS. 
S.!. No. 34 of 1964. 
Trade Marks Act, 1963 (Commencement) Order, 1964. 
Published by Stationery Office, Dublin. 
Price 4d. 
(Pr ~ 7568). JP IN 11 IJRL/T 11 
Page 43 
I, JOm~ LYNCH, Minister for Industry and 
Commerce, in exercise of the powers conferred on 
me by section 1 of the Trade Marks Act, 1963 
(No. 9 of 1963), hereby order as follows: 
1. This Order may be cited as the Trade 
Marks Act, 1963 (Commencement) Order, 1964. 
2. The Trade Marks Act, 1963 (No. 9 of 1963), 
shall come into operation on the 1st day of April, 
1964. 
GIVEN under my Official Seal, this 
/~"--
I '" tJ 25th day of February, 1964. 
JOHN LYUCH 
Minister for Industry and Commerce. 
EXPLANATORY NOTE 
(This note is not part of the instrument and does not 
purport to be a legal interpretation). 
This Order appoints 1st April,-1964, as the date on 
which the Trade Marks Act, 1963 (Uo. 9 of 1963), comes into operation. By virtue of Rule 3 of the Trade Marks 
Rules,·1963, the date of commencement of those Rules is 
also 1st April, 1964. IP 1Nl 1 IIRL/T 11 
Page 44 
Number 6 of 1996 
TRADE l\'IARKS ACT, 1996 
ARRANGEMENT OF SECfIONS 
PART I 
PRELIMINARY AND GENERAL 
Section 
1. Short title and commencement. 
2. Interpretation. 
3. Orders, regulations and rules. 
4. Expenses. 
5. Repeal. 
PART II 
REGISTERED TRADE MARKS 
Introductory 
6. Trade marks. 
7. Registered trade marks. 
Grounds for Refusal of Registration 
8. Absolute grounds for refusal of registration. 
9. Specially protected emblems. 
10. Relative grounds for refusal of registration. 
11. Mea~ing of "earlier trade mark". 
12. Raising of relative grounds in case of honest concurrent use. 
Effects of Registered Trade Mark 
13. Rights conferred by registered trade mark. 
14. Infringement of registered trade mark. 
15. Limits on effect of registered trade mark. [No. 6.] Trade Marks Act, 1996. 
Section IP IN 11 IIRL/T 11 
Page 45 
[1996.] 
16. Exhaustion of rights conferred by registered trade mark. 
17. Registration subject to disclaimer or limitation. 
Infringement Proceedings 
18. Action for infringement. 
19. Order for erasure &c. of offending sign. 
20. Order for 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. 
24. Remedy for groundless threats of infringement proceedings. 
25. Infringing goods, material or articles: powers of seizure and 
search. 
Registered Trade Mark as Object of Property 
26. Nature of registered trade mark. 
27. Jointly owned trade marks. 
28. Assignment &c. of registered trade mark. 
29. Registration of transactions affecting registered trade mark. 
30. Trusts and equities. 
31. Application for registration of trade mark as an object of 
property. 
Licensing 
32. Licensing of registered trade mark. 
33. Exclusive licences. 
34. General provisions as to rights of licensees in case of 
infringe men t. 
35. Exclusive licensee having rights and remedies of assignee. 
36. Exercise of concurrent rights. 
Application for Registered Trade Mark 
37. Application for registration. 
38. Date of filing. 
39. Classification of goods and services. 
Priority 
40. Claim to priority of Convention application. 
41. Claim to priority from other relevant overseas application. JP IN 11 IJRL/T 11 
Page 46 
[1996.] 
Section Trade Marks Act, 1996. 
Registration Procedure 
42. Examination of application. [No. 6.] 
43. Publication, opposition proceedings and observations. 
44. Withdrawal, restriction or amendment of application. 
45. Registration. 
46. Registration: supplementary provisions. 
Duration, Renewal and Alteration of Registered Trade Mark 
47. Duration of registration. 
48. Renewal of registration. 
49. Alteration of registered trade mark. 
Surrender, Revocation and Invalidity 
50. Surrender of registered trade mark. 
51. Revocation of registration. 
52. Grounds for invalidity of registration. 
53. Effect of acquiescence. 
Collective l\1arks 
54. Collective marks. 
Certification Marks 
55. Certification marks. 
PART III 
COMMUNIlY TRADE MARKS AND INTERNATIONAL MATIERS 
Community Trade Marks 
56. Meaning of "Community trade mark" and "Community 
Trade Mark Regulation". 
57. Power to make provision in connection ,with Community 
Trade Mark Regulation. 
The Madrid Protocol: International Registration 
58. The Madrid Protocol. 
59. Power to make provision giving effect to ~fadrid Protocol. IP IN 11 IIRL/T 11 
Page 47 
[No. 6.] Trade M arks Act, 1996. [1996.] 
The Paris Convention: :Supplementary Provisions 
Section 
60. The Paris Convention. 
61. Protection of well-known trade marks: Article 6bis. 
62. National emblems &c. of Convention countries: Article 6ter. 
63. Emblems &c. of certain international organisations: Article 
6ter. 
64. Notification under Article 6ter of the Convention. 
65. Acts of agent or representative: Article 6septies. 
PART IV 
ADMINISTRATIVE PROVISIONS 
The Register 
66; The register. 
67. Rectification or correction of the register. 
68. Adaptation of entries to new classification. 
Powers and Duties of the Controller 
69. Power to require use of forms. 
70. Information about applications and registered trade marks. 
71. Exercise of discretionary powers by Controller. 
72. Costs and security for costs. 
73. Evidence before the Controller. 
74. Exclusion of liability in respect of official acts. 
75. Content of Controller's annual report. 
Legal Proceedings and Appeals 
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. 
80. No award of costs to or against the Controller. 
Rules and Fees 
81. Power of Minister to make rules. 
82. Fees. IP IN I l/IRL/T 11 
Page 48 
[1996.] 
Section Trade Marks Act, 1996. 
PART V 
TRADE MARK AGENTS 
83. Authorised agent may act. 
84. Register of Trade Mark Agents. [No. 6.] 
85. Business to be carried on only by registered trade mark 
agents &c. 
86. Entitlement to be registered as trade mark agent. 
87. Removal from Register. 
88. Suspension and erasure of registration of trade mark agent. 
89. Notice of erasure or suspension: subsequent restoration. 
90. Rules relating to trade mark agents. 
91. Privileged communications. 
PART VI 
OFFENCES 
92. Fraudulent application or use of trade mark in relation 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 
96. Jurisdiction 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. [No. 6.] Trade Marks Act, 1996. 
FIRST SCHEDULE 
COLLECfIVE MARKS 
SECOND SCHEDULE 
CERTIFICATION MARKS 
THIRD SCHEDULE 
TRANSITIONAL PROVISIONS 
Copyright Act. 1 ), ,3 
Consumer Inforn.!tion Act, 1978 
Continental She:: Act, 1968 
Interpretation A C!. 1937 
Maritime Jurisd ction Act, 1959 
Partnership Act iS90 
Patents Act, 19'Z ACTS REFERRED TO 
Petty Sessions ;:r!land) Act, 1851 
Public Offices re;:s Act, 1879 
Solicitors Act. ~ S· 54 
Statute of Lill'; ~a (ions, 1957 
Trade Marks .-\ c:. 1963 IP IN 11 IIRL/T 11 
Page 49 
[1996.] 
1963, No. 10 
1978, No. 1 
1968, No. 14 
1937, No. 38 
1959, No. 22 
53 & 54 Viet., c. 39 
1992, No. 1 
14 & 15 Viet., c. 93 
42 & 43 Vict., c. 58 
1954, No. 36 
1957, No. 6 
1963, No. 9 IP/N/I/IRL/T/l 
Page 50 
Number 6 of 1996 
TRADE MARKS ACT, 1996 
AN ACf TO MAKE NEW PROVISION FOR REGISTERED 
TRADE MARKS, IMPLEMENTING COUNCIL DIREC­
TIVE NO. 89/l04/EEC OF 21st DECEMBER, 1988, TO 
APPROXIMATE THE LAWS OF THE MEMBER STATES 
RELATING TO TRADE MARKS(1); TO MAKE PRO­
VISION IN CONNECfION WITH COUNCIL REGU­
LATION (EC) NO. 40/94 OF 20 DECEMBER, 1993, ON THE 
COMMUNITY TRADE MARKV>; TO GIVE EFFECf TO 
THE MADRID PROTOCOL RELATING TO THE INTER­
NATIONAL REGISTRATION OF MARKS OF 27th JUNE, 
1989, AND TO CERTAIN PROVISIONS OF THE PARIS 
CONVENTION FOR THE PROTECTION OF INDUS­
TRIAL PROPERTY OF 20th MARCH, 1883, AS REVISED 
AND AMENDED; TO PERMIT THE REGISTRATION OF 
TRADE MARKS IN RELATION TO SERVICES AND FOR 
CONNECfED PURPOSES. [16th March, 1996] 
BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS: 
PART I 
PRELIMINARY AND GENERAL 
1.-(1) This Act 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. Short title and 
commencement. 
2.-(1) In this Act, except where the context otherwise requires- Interpretation. 
"the Act of 1963" means the Trade Marks Act, 1963; 
"assignment" means assignment by act of the parties concerned; 
"business" includes a trade or profession; 
(1)01 No. L40 of 11th February, 1989 
(2)01 No. Lll of 14th February, 1994 PT.! S.2 [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 51 
[1996.] 
"Community trade mark", and "~ommunity Trade Mark Regu­
la}.ion" have the meanings assigned by section 56; 
"the Controller" means the Controller of Patents, Designs and Trade 
Marks; 
"Convention country" has the meaning assigned by section 60; 
"the Court" means the High Court; 
"director", in relation to a body corporate whose affairs are managed 
by its members, means any member of the body; 
"earlier trade mark" has the meaning assigned by section 11; 
"exclusive licence" and "exclusive licensee" have the meanings 
assigned by section 33; 
"infringement proceedings", in relation to a registered trade mark, 
include proceedings under section 20; 
"the Journal" means the Patents Office 10urnal; 
"the Minister" means the Minister for Enterprise and Employment; 
"the Office" means the Patents Office; 
"the Paris Convention" has the meaning assigned by section 60; 
"partnership" has the meaning assigned by section 1 of the Partner­
ship Act, 1890; 
"prescribed" means, in relation to proceedings before the Court, 
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 
publicatiori-
(a) in relation to an application for registration, are to publi­
cation 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 Marks 
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 business or profession; 
"trade mark" has the meaning assigned 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 use (or that description of 
use) otherwise than by means of a graphic representation. IP IN I l/IRL/T 11 
Page 52 
[1996.] Trade Marks Act, .1996. [No. 6.] 
(3) Any reference in this ACl to a Community instrument includes Pr.! S.2 
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 section of this 
Act, unless it is indicated. that reference to some other 
enactment is intended; and 
(b) a reference to a subs.ection or paragraph is to the subsection 
or paragraph of the provision in which 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, includ­
ing this Act. 
3.-(1) Where a power to make orders, regulations or rules is con­
ferred by this Act, such orders, regulations or rules may be made 
either in respect of all, or in respect of anyone or more, of the 
matters to which the power relates, and different provisions may be 
made by any such orders, 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 is 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 annulled accordingly, but without prejudice to the validity of any­
thing 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 passed by each House. 
(4) As soon as may be after any 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 order made in the exercise of that power 
except in the case of an order under section 1 (2). Orders, regulations 
and rules. 
4.-The expenses incurred by the Minister in the administration Expenses. 
of this Act shall, to such extent as may be sanctioned by the Minister 
for Finance, be paid out of moneys provided by the Oireachtas. 
S.-Subject to the provisions of section 100, the Act of 1963 is Repeal. 
hereby repealed. Trade marks. 
Registered trade 
marks. 
Absolute grounds 
for refusal of 
registration. [No. 6.] Trade Marks Act, 1996. 
PART II 
REGISTERED TRADE MARKS 
Introductory IP IN 11 IIRL/T 11 
Page 53 
[1996.] 
6.--:-(1) In this Act a "trade mark» means any sign capable of 
being represented graphically ~hich 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 par­
ticular, consist of words (including personal names), designs, letters, 
numerals or the shape of g?ods or of thei~ packaging. 
(3) References in this Act to a trade mark include, unless the con­
text otherwise requires, references to a collective mark within the 
meaning of section 54 or a certification mark within the meaning of 
section 55. 
7.-(1) A registered 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 prc-. 
vided 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 
8.-(1) The following shall not be registered as trade: marks: 
(a) signs which do not satisfy the requirements of sectibii 6· (i); 
(b) trade marks which are devoid of any distirictive charatter;' 
(c) trade marks which consist exclusively of signs or indications 
which may serve, in trade, to designate the kind, quality, 
quantity, intended purpose, value, geographi~ .origip, 
the time of production cif goods or of rende~g" o~ -~j 
. vices. or other characteristics of gOods Or'services; 
(d) trade marks which consist exclusively of signs :OI irldicaHons' 
which have become customary in the currf!ntl~~.age.or 
in the bona fide an~ ~stablished practices"oftlie trade:" 
Provided-that, a trade mark shall not be' refused regiStnition' by" 
virtue of paragraph (b), (c) or (d) if, before t~e date ,o~. ~ppli~.tion: 
for registration, it has in fact ,acquired a ~stinctive~ 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 which results from· the")ultur~-~9(~~r:-g~; 
themselves; or . 
(b) the shape of goo~; w~.~h. is ~~: .to obtait!Jtte~­
nical result; or .. IP/N/I/IRL/T/l 
Page 54 
[1996.] Trade Marks Act, 1996. [No. 6.] 
(~J the shape which gives substantial value to th! goods. 
(3) A trade mark shall not be registered if-
(a) it is contrary to public policy or to acceptec' ',xinciples of 
morality; or 
(b) it is of such a nature as to deceive the public:. for instance 
as to the nature, quality or geographical '1rigin of the 
goods or service. 
(4) A trade mark shall not be registered if or to th: ~xtent that-
(a) its use is prohibited in the State by any en. ctment or rule 
of law or by any provision of Community Lw; or 
(b) the application for registration is made in ! ,.ld faith by the 
applicant. 
9.-(1) A trade mark which consists of or con:Llns any State 
emblem of Ireland or any insignia or device so ne.1 :-ly resembling 
such emblem that it may be mistaken for such enfJlem shall not 
be registered unless the Controller is satisfied that o:onsent for its 
registration has been given by the Minister. 
(2) A trade mark which consists of or contains a r'! presentation of 
the national flag of the State, as defined by Article -,' of the Consti­
tution, shall not be registered if it appears to the Controller that the 
use of the trade mark would be misleading or gross i.y offensive. 
(3) The Controller may refuse to register a trade mark which con­
sists of or contains any badge, device or emblem of" public authority 
unless such consent as is required by rules is obtair. ed. Pr.I! S.8 
Specially protected 
emblems. 
10.~(1) A trade mark shall not be registered if t is identical with Relative grounds 
an earlier trade mark and the goods or services fc': which the trade for refusal of registration. mark is applied for are identical with the goods or it . rvices for which 
the earlier trade mark is protected. 
(2) A trade mark shall not be registered if bec[< l"se-
(a) it is identical with an earlier trade m-r'k 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 an earlier trade mark a.d would be regis­
tered for goods or services identical \ ,ith or similar to 
those for which the earlier trade mark .5 protected, 
there exists a likelihood of confusion on the part I r:-the public, which 
includes the likelihood of association of the lakr trade mark with 
the earlier trade mark. 
(3) A trade mark which-
(a) is identical with or similar to an earli~r trade mark, and 
(b) is to be registered for goods or ser"ices which are not 
similar to those for which the ea: 1 ier trade mark is 
protected, Pr.!! S.10 
Meaning of "earlier 
trade mark". [No. 6.] IP/N/I/IRL/T/] 
Page 55 
Trade Marks Act, 1996. [1996.] 
shall not be registered if, or to the extent that, the earlier trade mark 
;:a-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 advantage of, or be detrimental to, the 
distinctive character or reputation of the earlier trade mark. 
(4) A trade mark 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 pass­
ing off) protecting an unregistered trade mark or other 
sign used in the course of trade; 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. 
(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 of a trade mark, that person is in this Act referred to as the 
proprietor of an "earlier right" in relation to the trade mark. 
(6) Nothing in this section shall prevent the registration of a trade 
mark where the proprietor of the earlier trade mark or other earlier 
right consents to the registration. 
11.-(1) In this Act an "earlier trade mark" me~' 
(a) a registered trade mark,' an international trade-mark "or it. 
Community' trade mark which' has a date' of ' application 
for registration earlier than that of the trade marlf 'm 
question, taking account (where- appropriate)" of the 
priorities claimed in respect of the trade marks; 
(b) a Community trade mark which haS 'a valid daim tosenior~ 
ity from an earlier registered trade mark' or 'international 
trade mark, even when the latter trade mark has been 
surrendered or allowed to l~pse; or: 
(c) a trade mark which, at the date o( application fox: regis­
tration-' of the trade mark in--' question or c, (where 
appropriate) of the priority claimed -in 'respect of the 
application, was entitled to -protection under the Paris 
Convention as a well-known trade mark. 
(2) References in this Act to' an earlier trade mark include' refer­
ences to a trade mark in respect of which an 'application for regis­
tration has been made and which, subject to its being registered~ 
would be an earlier trade mark by vir:tue ofsubsec#onJIJ. (~J:o( (b).~ 
(3) Where the registration of a trade mark specified in subsection 
(1) (a) or (b) expires, the trade mark shall continue to be taken into 
account in determining the registrability 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 expiry. IP/N/I/IRLlTll 
Page 56 
[1996.] Trade Marks Act, 1996. [No. 6.] 
~.-(1) This section ~pplies where on an application for the regis-Pr.I1 
tratlon of a trade mark It appears to the Controller- Raising of relative 
grounds in case of 
(a) that there is an earlier trade mark in relation to which any honest concurrent 
of the conditions set out in subsections (l) to (3) of use. 
section 10 obtains, or 
(b) that there is an earlier right ,in relation to which the con­
dition 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 sought. 
(2) In a case to' which this section applies, th~ 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 earlier trade mark or other 
earlier right. 
(3) For the purposes 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. 
(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 Registered Trade Mark 
1:3.-(1) The proprietor of a registered trade mark shall have 
exclusive rights 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 rights. 
(2) References in this Act to the infringement of a registered trade 
mark are references to any infringement of the rights of the pro-· 
~~:tor of the registered trade mark. 
i. .. ~ .. "' ". 
_ '(3) The rights of the proprietor of a registered trade mark shall 
have effect from the date of registration of the trade mark (as deter·, 
mined under section 45 (3)). 
(4) Notwithstanding 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. Rights conferred by 
registered trade 
mark. 
14.-(1) A person shall infringe a registered trade mark if that Infringement of 
person uses in the course of trade a sign which is identical with the regis~ered trade 
trade mark in relation to goods or services which are identical with: mar . 
those for which it is registered. ?r.Il S.14 IP/N/I/IRL/T/l 
Page 57 
[No. 6.] Trade Marks Act, 1996. [1996.] 
(2) A person shall infringe a registered trade mark if that person 
tlSes in the course of trade a sign where because-
(a) the sign is identical with the trade 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 mark 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 registered trade mark if that person 
uses in the course of trade 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 trade mark has a reputation in the State and the: Usc",of, 
the sign, being without due cause, takes unfair advantage of,' or is'! 
detrimental to, the distinctive character or the reputation of the trade mark. .: "",' 
(4) For the purposes of this section, use of a sigil'shall include, in 
particular- ' 
(a) affixing it to goods or the pack~ging th~ieofi 
(b) offering or exposing goods for sale, putting' them 'on the­
market or stocking them for those purposes under the 
sign, or offering or supplying services under the sign;, 
( c) importing or ~xporting goods under the si~; or 
(d) using the sign on business papers or in advertising., 
(5) A person who applies a registered trade' 'mark' to material 
intended to be used for labelling or packaging goods, as a' busiIi~ss 
paper. or for advertising goods or services shall be treated as a party~ 
to any use of the material which infringes the regist_~red trade.mar~i 
if, when that person applied the mark, that person knew or had, 
reason to believe that the application of the mark.was not dulya~th­
orised 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 1:)y( any 
person for the purpose of identifying goods 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 treated as infringing the registered 
trade mark if the use without due cause takes-unfair advantage of, 
or is detrimental to, the distinctive, character~ or rq>utation of. the , 
trade mark. ' 
Limits on effect of ' 15.~ 1) A. registered trade mark shall' not,-be inCrlhged; by.the; use~ 
registered trade ' ' of another registered trade mark in, relation to goods or senicel~for! 
mark. which the latter is registered, but subject to:.fection 52~(6J. IP/N/I/IRL/T/l 
Page 58 
[1996.] Trade Marks Act, 1996. 
(2) A registered trade mark shall not b.:! infringed by-
(a) the use by a person of his own name or address; [No. 6.] 
(b) the use of indications concerning the kind, quality, quantity, 
intended purpose, value, geographical origin, the time of 
production of goods or of rendering of the service or 
other characteristics of goods or services; or 
(c) the use of the trade mark where it is necessary to indicate 
the intended purpose of a product or service, in particu­
lar, as accessories or spare parts: 
Provided that such use is in accordance with. honest practices in 
industrial and commercial matters. 
(3) A registered trade mark shall not be infringed by the use in 
the course of trade in a particular locality of an earlier right 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 prior to whichever is the earlier of-
(a) the use of the frrst-mentioned trade mark in relation to 
those goods or services by the proprietor or a predecessor 
in title of the proprietor; and 
(b) the registration 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 regatded as applying in a locality if, or 
to the extent that, its use in that locality is protected by any rule of 
law, in particular the law of passing off. 
16.-(1) A registered trade mark shall not be infringed by the use 
of the trade mark in relation to goods which have been put on the 
market in the European Economic Area under that trade mark by 
the proprietor of the trade mark or with the consent of the 
proprietor. ~;t 
(2) The provisions of subsection (1) shall not apply where there 
exist legitimate reasons for the proprietor of the trade mark to 
oppose further dealings in the goods, in particular, where the con­
dition of the goods has been changed or impaired after they have 
been put on the market. Pr.II S.15 
Exhaustion oC rights 
conCerred by 
registered trade 
mark. 
17.-(1) A person who applies for the registration of a trade mark Registration subject 
or the proprietor of a reo1stered trade mark may- to disclaimer or ~ limitation. 
(a) disclaim any right to the exclusive use of any specified 
element of the trade 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 .. ?r.I1 S.l? 
Action for 
infringement. 
Order for erasure 
&c. of offending 
sign. 
Order for delivery 
up of infringing. 
goods, material or 
articles. [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 59 
[1996.] 
J..2) If on an application for the' registration of a trade mark, it 
appears to the Controller that any particular element of the trade 
mark is not distinctive and the inclusion of the tlement 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 appli­
cant agrees to make a disclaimer 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 
18.-(1) .Where a registered trade mark is infringed, the infringe­
ment shall 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. 
19.-{l) Where a person is found to have infringed a registered 
trade mark, the Court may make an order requiring him-
(a) to cause the offending sign to be erased, removed or obliter­
ated from any infringing goods, material or articles in his 
possession, custody or control, or 
(b) if it is not reasonably practicable for the offending sign to 
be erased, removed or obliterated, to secure the destruc­
tion of the infringing goods, materials or articles in 
question. 
(2) If an order under subsection (1) is not complied with; or it 
appears to the Court likely that such an order would not be complied 
with, the Court may order that the infringing goods, material or 
articles be delivered to such person as the Court may direct for eras­
ure, removal or obliteration of the sign, or for destruction, as· the 
case may be. 
20.-(1) The proprietor of a registered trade mark may apply to 
the Court for an order for the delivery up to the proprietor, or such 
other person as the Court may direct, of any infringing goods, 
material or articles of which a person has possession, custody or con': 
trol in the course of a business or otherwise for the purpose of deal­
ing in any way (including offering or exposing for. sale or hlre)~·' 
(2) An application for the delivery up of any infringing goods, 
material or articles shall not be made after the end of the period 
specified in section 22; and no order shall be made unless the Court 
also makes, or it appears to the Court that there are grounds for 
making, an order under section 23. 
(3) A person to whom any infringing goods, material or articles 
are delivered up in pursuance of an order under this section shall, if 
an order under section 23 is not made, retain them pending the mak­
ing of an order or the decision not to make an order· under that 
section. 
(4) Nothing in this section shall affect any other! power-of. the­
CoUrt. IP/NIl/IRL/TI 1 
Page 60 
[1996.] Trade Marks Act, 1996. [No. 6.] 
21.-(1) In this Act the expressions' "infringing goods", "infringing Pr.Il 
material" and "infringing articles" shall be construed as defined Meanin$ of 
herein. "infringmg goods, 
material or 
articles". (2) Goods shall be "infringing goods", in relation to a registered 
trade mark, if they or their packaging bear a sign identical or similar 
to that mark and either-
(a) the application of the sign to the goods or their packaging 
was an infringement of the registered trade mark, or 
(b) they have been or are proposed to be imported into the 
State and the application of the mark in the State to the 
goods or their packaging woul.d constitute an infringe­
ment of the registered trade mark, or 
(c) the sign has otherwise been used in relation 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 may lawfully be imported into the State by virtue of 
any right created or arising under or by virtue of the treaties govern­
ing the European Union. 
(4) Material shall be "infringing material", in relation to a regis­
tered trade mark, if it bears a sign identical or similar to that mark 
and either-
(a) it is used for labelling or packaging goods, as a business 
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 would infringe the 
registered trade "mark. 
(5) "Infringing articles", in relation to a registered trade mark, 
means articles-
(a) which are specifically designed or adapted for making copies 
of a sign identical or similar to that mark, and 
(b) which are in the possession, custody or control, of a person 
who knows or has reason to believe that they have been 
or are to l?e used to produce infringing goods or material. 
22.-(1) Subject to the provisions of this section, an application Period after which 
for an order under section 20 may not be made after the end of the remedy of delivery up not available. period of six years from-
(a) in the case of infringing goods, the date on which the trade 
mark was applied to the goods or their packaging; 
(b) in the case of infringing material, the date on which the 
trade mark was applied to the material; or 
(c) in the case of infringing articles, the date on which they were 
made. 
(2) If during the whole or part of the period referred to in subsec­
tion (1) the proprietor of the registered trade mark-
(a} is under a disability, or Pr.!I S.22 
Order as to disposal 
of infringing goods, 
material or articles. 
Remedy for 
groundless threats 
of infringement 
. proceedings. [No. 6.] Trade M arks Act, 1996. JP IN 11 IJRL/T 11 
Page 61 
[1996.] 
(b) is prevented by fraud or concealment from 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 the date on which the proprietor ceased to be under 
a disability or, as the case may be, could with reasonable diligence 
have discovered those facts. ' 
. (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, 1957. 
23.-(1) Where infringing goods, material or articles have been 
delivered up in pursuance of an order under section 20, an appli­
cation may be made to the Court-
(a) for an order that they be destroyed or forfeited to such per­
son as the Court thinks fit, or 
(b) for a decision that no such order should be made. 
(2) In considering what order (if any) should be made, the Court 
shall consider whether other remedies available in an action for 
infringement of the 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 
articles, and any such person shall be entitled-
.1": •• \ 
(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 made,. whether or not he 
appeared; 
and, unless the Court otherwise directs, an order shall not take effect 
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 duly 
given, until the fmal ~etermination or. abandonmen,t of the pro-. 
ceedings on the appeaL , 
(4) Where there is more than one person interested in the goods, 
material or articles, the Court shall make such order as it thinks just. 
, ' -, .. '. " " ~ ',' , " 
, (5) If the Court deCid~s that no order sh'oUid be~'made under"thiS· 
section, the person in whose possession, custody or control the goodS, 
material or articles were before being delivered up shal). ,be e~titled " 
to their return. 
, ~ . 
(6) References in this section to a person having aIi"interest'ill 
goods, material or articles include references to any person in Whose '~~ 
favour an order could be made under section 27 of the Copyright 
Act, 1963. . ~ '. , , 
24.-{1) Where a person threatens another With proceedings for 
infringement of a registered trade mark other than in relation to-
(a) the application of the mark to goods, ' 
(b) the importation of goods tq which! the: marlc; has been 
applied,. or " " .. .: . I '. '. 
( c) the supply of services under the mark;, IP IN 11 IIRL/T 11 
Page 62 
[1996.] Trade Marks Act, 1996. [No. 6.] 
any person aggrieved may apply to the Court for relief under this Pr.Il S.24 
section. ~ . 
(2) The relief which may be applied for as mentioned in subsection 
(1) is any of the following: 
(a) a declaration that the threats are unjustifiable; 
(b) an injunction against the continuance of the threats; 
(c) damages in respect of any loss sustained by the threats. 
(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 constitute (or if done would 
constitute) an infringement of the registered trade mark concerned. 
(4) Notwithstanding the provisions 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 revoked in a relevant respect. 
(5) Notification that a trade mark is registered or that an appli­
cation for registration has been made shall not of itself constitute a 
threat of proceedings for the purposes of this section. 
25.-(1) If the District Court is satisfied by evidence that there is 
reasonable ground for believing that infringing goods, material or 
articles are in the possession, custody or control of any person in the 
course of business or otherwise for the purpose of dealing in any way 
(including offering or exposing for sale), the District Court may by 
order authorise a member of the Garda Sfochana to seize the goods, 
material or articles without warrant and to bring them before the 
court. 
(2) If cl Judge of the District Court is satisfied by infonnation on 
oath that there is reasonable ground for suspecting that infringing 
goods, material or articles are on any premises in the course of busi­
ness or otherwise for the purpose of dealing in any way, the Judge 
may grant a search warrant authorising a named member of the 
Garda Siochana not below the rank of inspector, accompanied by 
such other members of the Garda Sfochana as may be necessary, to 
enter on the premises, if need be by force, and to seize any such 
goods, material or articles and bring them before the court. 
(3) On proof to the District Court that any goods, material or 
articles brought before the court under subsection (1) or (2) are 
infringing goods,. material or articles, the court may-
(a) order them to be delivered up to the proprietor of the regis­
tered trade mark concerned; 
(b) order them to be destroyed or forfeited to such person as 
the court thinks fit; or 
(c) order them to be dealt with in such other way as the court 
thinks 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 concerned are situated. --Infrin~ing goods. 
material or articles: 
powers of seizure 
and search. ?r.Il 
Nature of registered 
trade mark. 
Jointly owned trade 
marks. 
Assignment &c. of 
registered trade 
mark. [No. 6.] Trade Marks Act, 1996. 
Registered Trade Mark as Object of Property 
26.-A registered trade mark is personal property. IP IN 11 IIRL/T 11 
Page 63 
[1996.] 
27.-(1) Where the relations between two or more persons 
interested in a trade 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 
connected in the course of trade, 
those persons may be registered as joint 'proprietors of the trade 
mark. 
(2) Except as provided by subsection (1), nothing in this' Act shall 
permit the registration as joint proprietors of a trade mark of two or 
more persons who use, or propose to use, the trade mark inde­
pendently. 
(3) Subject to subsection (4), where, in accordance with subsection 
(1), two or more persons are registered as joint proprietors of a trade 
mark, this Act shall have effect in relation to any rights to the use of 
the trade mark vested in those persons as if those rights were vested 
in a single person. 
(4) The rights of anyone of the persons who are registered as joint 
proprietors of a trade mark (in this subsection referred to as "the 
joint owners") shall be deemed to be infringed by any other of the 
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 trade. 
28.-(1) A registered trade mark is transmissible by assignment, 
testamentary disposition or operation of law in the saine way as other 
personal property, and shall be so transmissible either in connection 
with the goodwill of ~ business or independently~ 
-(2) An assignment or other transmission of a registered trade 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 
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) An assignment of a registered trade mark~ or a vesting assent 
relating to a registered trade mark, shall not be effective unless it is 
in writing signed by or on behalf of the assignor or~ as the case may 
be, a personal representative; and this requirement may be satisfied 
in a case where the assignor or personal representative is a body 
corporate by the afflxing of its seal.· . - . 
(4) Subsections (1) to (3) shall apply to assignment byway of secur-' 
ity as in relation to any other assignment. . IP IN 11 IIRL/T 11 
Page 64 
[1996.] Trade M arks Act, 1996. [No. 6.] 
(5) A registered trade mark may be th~ subject of a charge in the Pr.Il S.28 
same W'ily as other personal property. 
(6) Nothing in this Act shall be construed as affecting the assign­
ment or other transmission of an unregistered trade mark as part of 
the goodwill of a business. 
29.-(1) On application being made to the Controller in the pre-Registration of 
scribed manner by- transactions 
(a) a person claiming to be entitled to an interest in or under a 
registered trade mark by virtue of a registrable trans­
action, or 
(b) any other person claiming to be affected by such a 
transaction, 
particulars of the transaction shall be entered in the register in the 
prescribed manner. 
(2) The following are registrable transactions for the purposes of 
this Act-
(a) an assignment of a registered trade mark or any right in it; 
(b) the grant or assignment of a licence under a registered trade 
mark; 
(c) the granting of any security interest (whether fixed or 
floating) over a registered trade mark or any right in or 
under it; 
(d) the making by a personal representative of a vesting assent 
in relation to a registered trade mark or any right in or 
. under it; and 
(e) an order of a court or other competent authority transferring 
a registered trade mark or any right in or under it~ 
(3) Until an application has been made for registration of the pre­
scribed particulars of a registrable transaction-
(a) the transaction shall be ineffective as against a person 
acquiring a conflicting interest in or under the registered 
trade mark in ignorance of it; and 
(b) a person claiming to be a licensee by virtue of the trans­
action shall not have the protettion of section 34 or 35. 
(4) Where a person becomes the proprietor or a licensee of a 
registered trade mark by virtue of a registrable transaction, then 
unless-
(a) an application for registration of the prescribed particulars 
of the transaction is made before the end of the period 
of six months beginning with the date of the transaction, 
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, affecting registered 
trade mark. Pr.n S.29 [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 65 
[1996.] 
th?-t person shall not be entitled to damages or an account of profits 
in respect of any infringement of the registered trade mark occurring 
after the date of the transaction and before the application for regis­
tration of the prescribed particulars is made. 
(5) Provision may be made by rules with respect to the amend­
ment or deletion of particulars of registrable transactions entered in 
the register by virtue of this section. 
Trusts and equities. 30.-(1) No notice of any trust (express, 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 respect of a 
registered trade mark may be enforced in like manner as in respect 
of other personal property. 
Application for 3L-(1) The provisions of sections 26 to 30 shall apply, with the 
regtstration of trade necessary modifications, in relation to an application for the regis­marlc.as an object 
of property. tration of a trade mark as they apply in relation to a registered trade 
Licensing of 
registered trade 
marlc. mark. 
(2) In section 29 as it applies in relation to a transaction affecting 
an application for the registration of a trade mark, the references to 
the entry of particulars in the register, and to the making of an appli­
cation to register 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 men-' 
tioned in subsection (2) shall be such as may be prescribed by rules. 
Licensing 
32.-{1) A licence to use a registered trade mark may be general 
or limited. 
(2) A limited licence may, in particular, apply-
(a) in relation to some but not 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 not be effective unless it is in writing signed by 
or on.behalf of the grantor and this requirement may be satisfied in 
a case where the grantor is a body corporate by. the affixing of its 
seal. 
(4) Unless the licence provides otherwise, it shall be binding on a' 
successor in title to the grantor's interest; and references in this-Act' 
to doing anything with, or without, the consent of the proprietor of 
a registered trade mark shall be construed acc~rdingly.: 
(5) Where the licence so provides, a sub-licence may be granted 
by the licensee; and references in this Act to a licence' or licensee 
include a sub-licence or sub-licensee. 
Exclusive licences. 33.-(1) In this -Act an "exclusive licence": ineaJisi a licence 
. (whether general or limited) authorising the licensee, to the JP IN 11 IJRL/T 11 
Page 66 
[1996.] Trade Marks Act, 1996. [No. 6.] 
exclusion of all other persons, including the person granting the Pr.n S.33 
licence, to use a registered trade mark in the manner authorised by 
the licence; and the expression "exclusive licensee" shall be con-
strued accordingly. 
(2) An exclusive licensee has the same rights against a successor 
in title who is bound by the licence as the exclusive licensee has 
against the person granting the licence. 
34.-(1) This section has effect with respect to the rights of a General provisions 
licensee in relation to infringement of a registered trade mark, except as to rights of licensees in case of where or to the extent that, by virtue of section 35 (2), the licensee infringement. 
has a right to bring proceedings in the licensee's own name. 
(2) A licensee is entitled, unless the licence, or any licence through 
which the licensee's interest is derived, provides otherwise, to call 
on the proprietor of the registered trade mark to take infringement 
proceedings in respect of any matter which affects the licensee's 
interests. 
(3) If the proprietor-
(a) refuses to take proceedings when called upon under subsec­
tion (2), or 
(b) fails to do so within two months after being so called upon, 
the licensee may bring the proceedings in his own name as if he were 
the proprietor. 
(4) Where infringement proceedings are brought by a licensee by 
virtue of this section, the licensee may not, without the leave of the 
Court, proceed with the action unless the proprietor is either joined 
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. 
(5) A proprietor who is added as a defendant as mentioned in 
subsection (4) shall not be liable for any costs in the a~on unless he 
takes part in the proceedings. 
(6) In infringement proceedings brought by the proprietor of a 
registered trade mark the Court shall take into account any loss suf­
fered or likely to be suffered by licensees; and the Court may give 
such directions as it thinks fit as to the extent to which the plaintiff is 
to hold the proceeds of any pecuniary remedy on behalf of licensees. 
(7) The provisions of this section shall apply in relation to an 
exclusive licensee if or to the extent that the licensee has, by virtue 
of section 35 (1), the rights and remedies of an assignee as if the 
licensee were the proprietor of the registered trade mark. 
35.-(1) An exclusive licence may provide that the licensee shall Exclusive licensee 
have, to such extent as may be provided by the licence, the same baving rights and remedies of rights and remedies in respect of matters occurring after the grant of assignee. 
the licence as if the licence had been an assignment. . 
'. (2) Where or to the extent that provision is made as mentioned 
in subsection (1), the licensee shall be entitled, subject to the pro­
visions of the licence and to the following provisions of this section, Pr.n S.35 [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 67 
[1996.] 
to bring infringement proceedings, against any person other than the 
proprietor, in the licensee's own name. 
(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 trade mark in the 
provisions of this Act 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 the 
proprietor of the registered trade mark. 
Exercise of 36.-(1) Where proceedings for infringement of a registered trade 
concurrent rights. mark brought by the proprietor or an exclusive 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, proceed 
with the action unless the other is either joined as a plaintiff or added 
as a defendant; but this subsection does not affect the granting of 
interlocutory relief on an application by a proprietor or exclusive 
licensee alone. 
(2) A person who is added as a defendant as mentioned in subsec­
tion (1) shall not be liable for any costs in the action unless he takes 
part in the proceedings. 
.-j", 
(3) Where an action for infringement of a registered trade mark is 
brought which relates (wholly or partly) to an infringement in respect 
of which the proprietor and an exclusive licensee have or had concur-
rent rights of action- . " 
(a) the Court shall in assessing damages take ,into 'account-, " 
(i) the tenns of the licence, and 
(ii) any pecuniary remedy already awarded or available 
to either of them in respect of the irifringement;. .". 
• , I. .~.. 
(b) no account of profits shall be directed if an award 6f'dam-' 
ages has been made, or an account of profits has been 
directed, in favour of the other of them in respect of ~~ . 
~fringement; and' .' -' ' .. , 
(c) the Court shall, if an account of profi~ ~;directed, apportio~': 
the profits between them as the Court considers just, sub-. 
je.ct to any a~eement betwee~ ~hem~ 
(4) The' provisions of subsection (3) apply whether or ~ot th~.·pro< 
prietor and the exclusive licensee are both parties to the action; and .' 
if they are not both parties the Court may give such directions as it ' 
thinks fit as to the extent to which the party to the proceedings is to 
hold the proceeds of any pecuniary reI?edy. on behalf of the other~ 
(5) The proprietor of a registered trade mark shall n'otify any: 
exclusive licensee who has a concurrent right of action before 'apply;. 
ing for an order under section 20; and the Court may on the appli­
cation of the licensee make such order under that section as it thinks 
,fit having regard to the te~s of the licenc~. '. ' 
(6) The provisions of this: section shall have effect subject to'"aliy: IP IN 11 IIRL/T 11 
Page 68 
[1996.] Trade Marks Act, 1996. [No. 6.] 
agreement to the contrary between the exclusive licensee and the Pr.n S.36 
propriet<?r. . 
Application for Registered Trade Mark 
37.-(1) An application for registration of a trade mark shall be Applicat.ion (or 
made to the Controller in such manner and containing such infor- regIstration. 
mat ion as may be prescribed. 
(2) The application shall state that the trade mark is being used, 
by or with the consent of the applicant, in relation to the goods or 
services specified in the application, or that the applicant has a bona 
fide intention that it should be so used. 
(3) The application shall be subject to the payment of the appro­
priate fee or fees. 
38.-(1) The date of filing of an application for registration of a Date of filing. 
trade mark is the date on which qle prescribed documents are fur-
nished to the Controller by the applicant; and if those documents are 
furnished on different days, the date of filing 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 application. 
39.-( 1) Goods and services shall be classified for the purposes of Classification of 
the registration of trade marks according to a prescribed system of goods and services. 
classification; and every trade mark shall be registered in respect 
of particular goods or services or in respect of classes of goods or 
services. 
(2) Any question arising as to the class within which any goods or 
services fall shall be determined by the Controller, whose decision 
shall be final. 
Priority 
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 application"), or the successor in title to such a per­
son, has a right to priority, for the purpose of registering the same 
trade mark under this Act for some or all of the same goods or 
services, for a period of six months from the date of filing of the first 
Convention 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 establishing which 
rights take precedence shall be the date of filing of the 
first Convention application, and 
(b) the registrability of the trade 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 application under this Act. 
(3) Any filing which in a Convention country is equivalent to a 
regular national filing, under its domestic legislation or an inter­
national agreement, shall be treated as giving rise to the right of 
priority; and for this purpose a "regular national flling" means a Oaim to priority of 
Convention 
application. ?r.Il S.4G 
Oaim to priority 
from other relevant 
overseas 
application. 
Examination of 
application. [No. 6.] Trade Marks Act, 1996. IP/NIl/IRL/TI 1 
Page 69 
[1996.] 
fIling which is adequate to establist: the date on which the application 
was filed in that country, irrespective of the outcome of the 
application. 
(4) A subsequent application concerning the same subject as the 
first Convention application, filed in the same Convention country, 
shall be considered the first Convention application (of which the 
ftling date is the starting date of the period of priority) if, at the time 
of the subsequent application-
(a) the previous application has been withdrawn, abandoned or 
refused, without having been laid open to public inspec­
tion 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 application may not thereafter serve 
as a basis for claiming a right of priority. 
(5) Provision may be made by rules as to the manner of claiming 
a right to priority on the basis of a Convention application. 
(6) A right to priority arising as a result of a Convention appli­
cation may be assigned or otherwise transmitted, either with the 
application or independently; and the reference in subsection (1) to 
the applicant's successor in title shall be construed accordingly. 
41.-(1) This section applies to any country or territory 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 who has duly filed an application for protection of a 
trade mark in a country or territory to which this section applies a 
right to priority, for the purpose of registering the 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 that application. 
(3) In relation to a country, or territory t,o which this section 
applies, an order under this section may make provision correspond­
ing to that made by section 40 in relation to Convention countries 
or such other provision as appears to the Government to be 
appropriate. 
Registration Procedure 
42.-(1) The Controller shall examine whether an application for 
registration of a trade mark satisfies the requirements of this Act 
(including any requirements imposed by rules); and in this section 
those requirements are referred to as "the requirements for 
registration" . 
(2) If it appears to the Controller that the requirements for regis­
tration are not met, the Controller shall inform the applicant and 
give the applicant an opportunity, within such period as the Control­
ler may specify, to make representations or to amend the application. 
(3) If the applicant fails to satisfy the Controller that the require­
ments for registration have been met, or to amend the application so JP 1Nl 1 IIRL/T 11 
Page 70 
[1996.] Trade Marks Act, 1996. [No. 6.] 
as to meet them, or fails to respond before th.e end of the specified Pr.Il S.42 
period, the Controller shall refuse to accept the application. 
(4) If it appears to the Controller that the requirements fer regis­
tration are met, the Controller shall accept the application. 
43.-(1) When an application for registration has been accepted, Publication, 
the Controller shall cause the application to be published in the opposition 
Journal. proceedings and 
(2) Any person may, within the prescribed time from the date of 
the publication of the application in the Journal, give notice to the 
Controller of opposition to the registration; and any .such notice shall 
be given in writing in the prescribed manner, and shall include a 
statement of the grounds of opposition. 
(3) Where an application has been published in the Journal, any 
person may, at any time before the registration of the trade mark, 
make observations in writing to the Controller as to whether the 
trade mark should be registered; and the Controller shall inform the 
applicant of any such observations. 
(4) A person who makes observations as mentioned in subsection 
(3) shall not thereby become a party to the proceedings on the 
application. 
44.-(1) An applicant may at any time by notice in writing with­
draw his application or restrict the goods or services covered by the 
application; and, if the application has been published in the Journal, 
any withdrawal or restriction of the application shall also be pub­
lished in the J oumal. 
(2) Any such withdrawal as is mentioned in subsection (1) shall 
be irrevocable' 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 long as the amend­
ment does not substantially affect the identity of the trade mark or 
extend the goods or services covered by the application and, in par­
ticular, an amendment may be made (subject to that qualification) 
to correct-
(a) the name or address of the applicant; 
(b) errors of wording or of copying; or 
(c) obvious mistakes. 
(4) Provision shall be made by rules for the 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 claiming to be affected by it. 
45.-(1) Where an application has been accepted and-
(a) no notice of opposition has been given within the period 
referred to in section 43 (2), or observations. 
Withdrawal, 
restriction or 
amendment of 
application. 
Registration. Pr.I! S.45 
Registration: 
supplementary 
provisions. 
Duration of 
registration. 
Renewal of 
registration. IP IN 11 IIRL/T 11 
Page 71 
[No. 6.] Trade Marks Act, 1996. [1996.] 
. (b) all opposition 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 notice since accepting the 
application, that it was accepted in error. 
(2) A trade mark shall not be registered unless any fee prescribed 
for the registration has been paid within the prescribed period and, 
if the fee has not been so paid, the application shall be deemed to 
be withdrawn. 
(3) A trade mark when registered shall be registered as of the 
date of filing of the application for registration; and that date shall 
be deemed for the purposes of this Act to be the date of registration. 
(4) On the registration of a trade mark the Controller shall pub­
lish the registration in the Journal and issue to the applicant a certifi­
cate of registration. 
(5) The registration procedure shall be regarded as completed on 
the date of publication under subsection (4); and that date shall be 
entered in the register. 
46.-(1) Provision may be made by rules as to--
(a) the division of an application for the registration of a trade 
mark into several applications, each having the same 
filing date as the original application; 
(b) the merging of separate applications or registrations; and 
(c) the registration of a series of trade marks in one registration. 
(2) A "series of trade marks" means a number of trade marks 
which resemble each other as to their ma terial particulars and differ 
only in respect of matter of a non-distinctive character which does 
not substantially affect the identity of the trade mark. 
Duration, Renewal and Alteration of Registered Trade Mark 
47.-(1) A trade mark shall be registered for a period of ten years 
from the date of registration. 
(2) Registration may be renewed in accordance with section 48 for 
further periods of ten years. 
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. 
(2) Provision shall be made by rules for the Controller to inform 
the proprietor of a registered trade mark, before the expiry of the 
registration, of the date of expiry and the manner in which the regis­
tration may be renewed. 
(3) Subject to subsection (4), a request for renewal must be made, 
and the prescribed renewai fee paid, before the expiry of the 
registration. IP 1Nl 1 IIRL/T 11 
Page 72 
[1996.] Trade Marks Act, 1996. [No. 6.] 
(4) If subsection (3) is not complied with, a request for renewal Pr.I1 SA8 
may be made and the fee paid w:~hin such further period (of not less 
than six months) as may be prescribed; in which case the prescribed 
additional renewal fee must also be paid within that period. 
(5) A term of renewal shall take effect from the expiry of the 
previous registration. 
(6) 'If the registration is not renewed in accordance with the pre­
ceding provisions, the Controller shall remove the trade mark from 
the register; but provision may be made by rules for the restoration 
of the registration of a trade mark which has been removed from the 
register, subject to such conditions (if any) as may be prescribed. 
(7) The renewal, removal. or restoration of the registration of a 
trade mark shall be published in the Journal. 
49.-(1) The proprietor of a registered trade mark may apply in 
the prescribed manner to the Controller for leave to add to or alter 
the trade mark in any manner which does not substantially affect its 
identity; and the Controller may refuse leave or grant it on such 
terms and subject to such limitations as the Controller thinks fit. 
(2) In any case where 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 from the date of t~e advertise­
ment of an application under subsection (2), any person gives notice 
to the Controller in the prescribed manner of opposition to the appli­
cation, the Controller shall, after hearing the parties if so required, 
decide the matter. 
(4) Where leave is granted as mentioned in subsection (1) and 
the trade 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 advertised in the 
Journal. 
Surrender, Revocation and Invalidity Alteration of 
registered trade 
mark. 
SU.-(l) A registered trade mark may be surrendered by the pro-Surrender of 
Prietor in respect of some or all of the goods or services for which it registered trade mark. is registered. 
(2) Provision may be made by rules-
(a) as to the manner and effect of a surrender; and 
(b) for protecting the interests of other persons having a right 
in the registered trade mark. 
51.-(1) The registration of a trade mark may be revoked on any Revocation of 
of the following grounds- registration. 
(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 State, by or with the con­
sent of the proprietor, in relation to the goods or services Pr.I! S.Sl [No. 6.] Trade Marks Act, 1996. IP IN 11/IRL/T 11 
Page 73 
[1996.] 
for which it is registered .. and there are no proper reasons 
for non-use; 
(b) that such use has been suspended for an ~ninterrupted per­
iod of five years, and there are no proper reasons for non­
use; 
(c) that, in consequence of acts or inactivity of the proprietor, 
it has become the common name in the trade for a prod­
l:lct 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 to the nature, quality or geo­
graphical origin of those goods or services. 
(2) For the purposes of subsection (1), use of a trade mark 
includes use in a form differing in elements which do not alter the 
distinctive character of the mark in the form in which it was regis­
tered, and use in the State includes affixing the trade mark to goods 
or to the packaging of goods in the State solely for export purposes. 
(3) The registration of a trade mark shall not be revoked on the 
ground mentioned in paragraph (a) or (b) of subsection (1) if such 
use as is referred to in that paragraph is commenced or resumed 
after the expiry of the five year period and before the application for 
revocation is made; but, for this purpose, any such commencement 
or resumption of use occurring after the expiry of the five year period 
and within the period of three months before the making of the 
application shall be disregarded unless preparations for the com­
mencement or resumption began before the proprietor became 
aware that the application might be made. 
(4) An application for revocation may be made by any person, 
and may be made either to the Controller or to the Court, except 
that--.:.. . 
(a) if proceedings concerning the trade mark in question are 
p~nding in the Court, the application must be made to 
the Court; and 
(b) if in any other case the application is made to the Control­
ler, he may at any stage of the proceedings refer the 
application to the Court. 
(5) Where grounds for revocation exist in respect of only some of 
the goods or services for which the trade mark is registered, revo­
cation 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 extent as from-
(a) the date of the application for revocation; or 
(b) if the Controller or the Court is satisfied that the grounds 
for revocation existed at an earlier date, that date. 
(7) Revocation of a trade mark shall be entered in the register 
and the Controller shall publish the revocation of a trade mark in 
the Journal. IP IN I lIIRL/T 11 
Page 74 
[1996.] Trade M arks Act, 1996. [No. 6.] 
52.-(1) The registration of a trade mar}c may be declared invalid ?r.n 
on the gr~und that the trade mark was registered in breach of section Grounds for 
8 or any of the provisions referred to in that section; but where a invalidity of 
trade mark was registered in breach of subsection (1) (b), Cc) or Cd) registration. 
of that section, it shall not be declared invalid if, in consequence of 
the use which has been made of it, it has after registration acquired 
a distinctive character in relation to the goods or services for which 
it is registered. 
(2) The registration of a trade mark may be declared invalid on 
the-grounds-
(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 con­
dition set out in paragraph (a) or (b) of subsection (4) of 
that section is satisfied, 
unless the proprietor of that earlier trade mark or earlier right has 
consented to the registration. 
(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, except that-
Ca) if proceedings concerning the trade mark in question are 
pending in the Court, the application must be made to 
the Court; and 
(b) if in any other case the application is made to the Control­
ler, the Controller may at any stage of the proceedings 
refer the application to the Court. 
(4) In the case of bad faith in the registration of a trade mark, the 
Controller may apply to the Court for a declaration of the invalidity 
of the registration. 
(5) Where t.!t~rounds of invalidity exist in respect of oniy some 
of the goods or services for which the trade mark is registered, the 
trade mark shall be declared invalid as regards those goods or ser­
vices only. 
(6) Where the registration of a trade mark is declared invalid to 
any extent, the registration shall to that extent be deemed never to 
have been made, provided that this shall not affect transactions past 
and closed. 
53.-(1) Where the proprietor of an earlier trade mark or other Effect of 
earlier right has acquiesced for a continuous period of five years in acquiescence. 
the use of a registered trade mark in the State, 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 registration of the later 
trade mark is invalid, or 
(b) to oppose the use of the later trade mark in relation to the 
goods or services in connection with which it has been so 
used, Pr.II S.53 
Collective marks. [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 75 
[1996.] 
unless the registration of the later t;-ade mark was applied for in bad 
faj.th. 
(2) Where 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 longer 
be invoked against the proprieto(s later trade mark. 
Collective Marks 
54.-(1) A collective mark 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. . 
(2) The provisions of this Act apply to collective mark~ subject to 
the provisions of the First Schedule. 
Certification M arks 
Certification marks. 55.-(1) A certification mark is a mark indicating that the goods 
Meaning of 
"Community trade 
mark" and 
"Community Trade 
Merk Regulation tt. 
Power to make 
provision in 
connection with 
Community Trade 
Mark Regulation. or services in connection with which it is used are certified by the 
proprietor of the mark in respect of origin, material, mode of manu­
facture of goods or perfonnance of services, quality, accuracy or 
other characteristics. 
(2) The provisions of this Act apply to certification marks subject 
to the provisions of the Second Schedule. 
PART HI 
COMMUNIlY TRADE MARKS AND INTERNATIONAL MATIERS 
Community Trade Marks 
56.-In this Act-
(a) "Community trade mark" has the meaning given by Article 
1 (1) of the Community Trade Mark Regulation; and 
(b) "the Community Trade Mark Regulation" means Council 
Regulation (EC) No. 40/94 of 20 December, 1993 on the 
Community trade mark. 
57.-(1) The Minister may by regulations make such provision as 
he considers appropriate in connection with the operation of the 
Community Trade Mark Regulation. 
(2) Provision may, in particular, be made with respect to-
(a) the filing of applications for Community trade marks through 
the Patents Office; 
Cb) the procedures for determining a posteriori the invalidity, or 
liability to revocation, of the registration of a trade mark 
from which a Community trade mark claims seniority; 
(c) the conversion of a Community trade mark or an application " IP IN I l/IRL/T 11 
:page 76 
[1996.] Trade Marks Act, 1996. [No. 6.] 
for a Community trade mark into an application for regis-PT.IlI S.57 
::" tration under this Act; and 
(d) the designation of Courts in the State having jurisdiction 
over proceedings arising out of the Community Trade 
Mark Regulation. 
(3) Without prejudice to the generality of subsection (1), provision 
may be made by regulations under this section making in relation to 
the list of professional representatives maintained in pursuance of 
Article 89 of the Community Trade Mark Regulation, and persons 
on that list, provision corresponding 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 age!lts. 
(4) Section 24 (remedy for groundless threats of infringement 
proceedings) and Part VI (offences) shall apply in relation to a Com­
munity trade mark as they apply in relation to a registered trade 
mark. 
The Madrid Protocol: International Registration 
58.-In this Act-
"the Madrid Protocol" means the Protocol relating to the Madrid 
Agreement c;:oncerning 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 to 
protection in the State under that Protocol. The Madrid 
Protocol. 
59.-(1) The Minister may by regulations make such provision as Power to make 
he considers appropriate for giving effect in the State to the pro-provision giving 
visions of the Madrid Protocol. ~~~~~.Madrid 
(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; 
(b) the procedures to be followed w.here the basic application 
or registration in the State fails or ceases to be in force; 
(c) the procedures to be followed where the Patents Office 
receives from the International Bureau a request for 
extension of protection to the State; 
(d) the effects of a successful request for extension of protection 
to the State; 
(e) the transformation of an international registration or an 
application for an international registration into a 
national application for registration; 
(f) the communication of information to the International 
Bureau; Pr.IlI S.59 
The Paris 
Convention. 
Protection of well­
known trade marks: 
Article 6bis. 
National 
emblems &c. of 
Convention 
countries: Article 
6ter. [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 77 
[1996.] 
(g) the payment of fees a!ld amo,unts prescribed in respect of 
::" applications for international registrations, extensions of 
protection and renewals. 
(3) Section 24 (remedy for groundless threats of infringement 
proceedings); and Part VI (offences) shall apply in relation to an 
international trade mark as they apply in relation to a registered 
trade mark. 
The P~ris Convention: Supplementary Provisions 
60.-(1) In this Act-
(a) "the Paris Convention" means the Paris Convention for the 
Protection of Industrial Property of March 20th, 1883, as 
amended or supplemented by any protocol to that Con­
vention which is for the time being in force in the State; 
and 
(b) a "Convention country" means a country, other than the 
State, which is a party to that Convention. 
(2) The Minister may by order make such amendments of this Act 
and rules made under this Act as appear to the Minister appropriate 
in consequence of any revision or amendment of the Paris Conven­
tion after the passing of this Act. 
61.-(1) References in this Act to a trade mark which is entitled 
to protection under the Paris Convention 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 C~nvention 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 not that person carries on business, or has any goodwill, 
in the State; and references to the proprietor of such a mark shall be 
construed accordingly. 
(2) Subject to section 53, the proprietor of a trade mark which is 
entitled to protection under the Paris Convention 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 part of which, is ident­
ical or similar to the proprietor'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 section. 
62.-(1) A trade mark which consists of or contains the flag of a 
Convention country shall not be registered without the authorisation 
of the competent authorities of that country, unless it appears to the 
Controller that use of the flag in the manner pro~ is pennitted 
without such authorisaOtion. '~ IP 1Nl l/IRL/T 11 
Page 78 
[1996.] Trade Marks Act, 1996 ... [No. 6.] 
(2) A trade mark which consists of or contains the armorial bear-Pr.III S.62 
ings o'r any other state emblem of a Convention country which is 
protected under the Paris Convention shall not be registered without 
the authorisation of the competent authorities of that country. 
(3) A trade mark which consists of or contains an official sign or 
hallmark adopted by a Convention country and indicating control 
and warranty shall not, where the sign or hallmark is protected under 
the Paris Convention, be registered in relation to goods or services 
of the same or a similar kind as those in relation to which it indicates 
'control and warranty, without the authorisation of the competent 
authorities of the country concerned. 
(4) The provisions of this section as to national flags and other 
state emblems and official signs or hallmarks apply equally to any­
thing which, from a heraldic point of view, imitates any such flag or 
other emblem, sign or hallmark. 
(5) Nothing in this section prevents the registration of a trade 
mark on the application of a national of a country who is authorised 
to make use of a state emblem or official sign or hallmark of that 
country, notwithstanding that it is similar to that of another country. 
(6) Where, by virtue of this section, the authorisation of the com­
petent authorities of a Convention country is or would be required 
for the registration of a trade mark, those authorities shall be entitled 
to restrain by injunction any use of the mark in the State without 
their authorisation. . 
63.-:-<1) This section applies to--
(a) the armorial bearings, 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 mark which consists of or contains any such emblem, 
abbreviation or name which is protected under the Paris Convention 
shall not be registered without the authorisation of the international 
organisation concerned. unless it appears to the Controller that the 
use of the emblem, abbreviation or name in the manner proposed-
(a) is not such as to suggest to the public that a connection 
exists between the organisation and the trade mark; or 
(b) is not likely to mislead the public as to the existence of a 
connection between the user and the organisation. 
(3) The provisions of this section as to emblems of an inter­
national organisation apply equally to anything which, from a heral­
dic point of view, imitates any such emblem. 
(4) Where, by virtue of this section, the authorisation of an inter­
national organisation is or would be required for the registration of 
a. trade mark, that organisation shall be entitled to restrain by injunc­
tIon any use of the mark in the State without its authorisation. 
(5) Nothing in this seGtion affects the right of a person whose bona 
fide use of the trade mark in question began before 9th June, 1967 Emblems &c. of 
certain international 
organisations: 
Article 6ter. Pr.III S.63 
Notification under 
Article 6ter of the 
Convention. 
Acts of agent or 
representative: 
Article 6septies. [No. 6.] Trade Marks Act, 1996. IP 1Nl 1 IIRL/T 11 
Page 79 
[1996.] 
(when the relevant provisions of the Paris Convention entered into 
force in relation to the State). 
64.-(1) For the purposes of section 62 state emblems of a Con­
vention country (other than the national flag) and official signs or 
hallmarks shall be regarded as protected under the Paris Convention 
only if, or to the extent that-
(a) the country in question has notified the State in accordance 
with Article 6ter (3) of the Convention that it desires to 
protect the emblem, sign OT 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 organisation in question has notified the State in accord­
ance with Article 6ter (3) of the Convention that it 
desires to protect that emblem, abbreviation or name; 
(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. 
(3) Notification under Article 6ter (3) of the Paris Convention 
shall have effect only in relation to applications for registration made 
more than two months after the receipt of the notification. 
(4) The Controller shall keep and make available for public inspec­
tion by any person, at all reasonable hours and free of charge, a list 
of-
(a) the state emblems and official signs or hallmarks, and 
(b) the emblems, abbreviations and names of international 
organisations, 
which are for the time being protected under the Paris Convention 
by virtue of notification under Article 6ter (3). 
65.-(1) The following provisions apply where an application for 
registration of a trade mark is made by a person who is an agent or 
representative of a person who is the proprietor of the mark in a 
Convention country and the application is made without the pro­
prietor's authorisation. 
(2) Where the proprietor opposes the application, registration 
shall be refused. 
(3) Where the application (not being so opposed) is granted, the 
proprietor may-
(a) apply for a declaration of the invalidity of the registration; 
or IP IN 11 IIRL/T 11 
:Page 80 
[1996.] Trade Marks Act, 1996. [No. 6.] 
(b) apply for the rectification of the register so as to substitute Pr.IlI S.65 
the proprietor's name as the proprietor of the registered 
trade mark. 
(4) The proprietor may (notwithstanding the rights conferred by 
this Act in relation to a registered trade mark) apply to the Court to 
restrain by injunction any use of the trade mark in the State which 
is not authorised by the proprietor. 
(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 made 
within three years of the proprietor becoming aware of the regis­
tration; and no injunction shall be granted under 'subsection (4) in 
respect of a use in which the proprietor has acquiesced for a continu­
ous period of three years or more. 
PART IV . 
ADMINISTRATIVE PROVISIONS 
The Register 
66.-(1) The Controller shall keep a Register of Trade Marks; and The register. 
references in this Act to registration (in particular, in the expression 
"registered trade mark") are, unless the context otherwise requires, 
to registration in the register. 
(2) There shall be entered in the register in accordance with this 
Act-
(a) registered trade marks; 
(b) particulars of registrable transactions affecting a registered 
trade ma.T;k; and 
(c) such other matters as may be prescribed. 
(3) The register shall be kept in such form as may be prescribed, 
and provision shall in particular be made for-
(a) public inspection of the register; and 
(b) the supply of certified or uncertified copies of, or extracts 
from, entries in the register. 
67.-( 1) Any person having a sufficient interest may apply for the Rectification or 
rectification of an error or omission in the register: correction of the register. 
Provided that an application 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, except that-
(a) if proceedings concerning the trade mark in question are 
pending in the Court, the application must be made to 
the Court; and Pr.IV S.67 
Adaptation of 
entries to new 
classification. IP IN 11/IRL/T 11 
Page 81 
[No. 6.] Trade Marks Act, 1996. [1996.] 
(b) if in any other case the application is made to the Control­
ler, he may at any stage of the proceedings refer the 
application to the Court. 
(3) Unless the Controller or the Court otherwise directs, the effect 
of rectification of the register is that the error or omission in question 
shall be deemed never to have been made. 
(4) The Controller may (o'f his own motion) correct any error 
made by him in any entry in the Register but, before doing so, he 
shall give notice of the proposed correction to any person who 
appears to him to be concerned. 
(5) The Controller may, on request made in the prescribed man­
ner by the proprietor of a registered tnide mark-
(a) enter any change in the proprietor's name or address as 
recorded in the register; 
(b) amend the specification of the goods in respect of which a 
trade mark is registered, provided that the amendment 
does not in any way extend the rights given by the exist­
ing registration of the trade mark; or 
(c) enter a disclaimer 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 prescribed man­
ner by the licensee of a registered trade mark, enter any change in 
the licensee's name or address as recorded in the register. 
(7) The Controller may remove from the register matter appear­
ing to him to have ceased to have effect. 
68.-(1) Provision may be made by rules authorising the Control­
ler to do such things as the Controller considers necessary to 
implement any amended or substituted classification of goods or ser­
vices 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 classi­
fication. 
(3) Any such power of amendment shall not be exercised so as to 
extend the rights conferred by the registration, except where it 
appears to the Controller that compliance with this requirement 
would involve undue complexity and that any extension would not be 
substantial and would not adversely affect the rights of any person. 
(4) The rules 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 the event of the proprietor failing to do so. 
(5) A proposal under subsection (4) (a) shall be advertised, and 
may be opposed, in such manner as may be prescribed. IP IN 11 IIRL/T 11 
Page 82 
[1996.] 
..... Trade M arks Act, 1996. [No. 6.] 
Powers and Duties of the Central/er 
69.-(1) The Controller may require the use of such forms as he Pr.IV 
may direct for any purpose relating to the registration of a trade Power to require 
mark or any other proceedings before the Controller under this Act. use of forms. 
(2) The forms, and any directions of the Controller with respect 
to their. use, shall be published in the Journal. 
70.~(1) After publication of an application 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 prescribed 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 accompanied by the appropriate fee 
(if any). 
(3) Before publication of an application for registration of a trade 
mark, documents or information constituting or relating to the appli­
cation 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 extent as may be pre­
scribed; or 
(b) with the consent of the applicant; 
but subject to the following provisions of this section. 
(4) Where a person has been notified-
(a) that an application for registration of a trade mark has been 
made, and 
(b) that the applicant will if the application is granted bring pro­
ceedings against that person in respect of acts done after 
publication of the application, 
that person may make a request under subsection (1) notwithstand­
ing that the application has not been published and that subsection 
shall apply accordingly. 
7I.-Where any discretionary power is, by or under this Act, given 
to the Controller, that power shall not be exercised adversely to any 
applicant for or proprietor of a trade mark or to any party in any 
proceedings before the Controller, without that applicant, proprietor 
or party being given an opportunity of being heard as regards the 
exercise of that power. 
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, be enforced in the same manner as a judgment or order of 
the Court to the same effect. 
(2) Where, under this Act, a party who neither resides nor carries Information about 
applications and 
registered trade 
marks. 
Exercise of 
discretionary 
powers by 
Controller. 
Costs and security 
for costs. PT.lV S.72 
Evidence before the 
Controller. 
Exclusion of 
liability in respect 
of official acts. 
Content of 
Controller's annual 
report. 
Registration to be 
prima facie 
evidence of validity. [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 83 
[1996.] 
on business in the State or in any other state which may be pre­
scribed is a party to any proceedings before the Controller, the Con­
troller or, in the case of any appeal, the Court, may require that party 
to give security for the costs of the proceedings. 
(3) If a requirement under subsection (2) is not complied with, 
the Controller or the Court, as may be appropriate, may treat the 
proceedings as abandoned. 
73.-1n subsection (1) of section 92 of the Patents Act, 1992 (which 
relates to evidence in proceedings before the Controller under that 
Act or any other enactment) after the words "before the Controller" 
there shall be inserted "(including proceedings under the Trade 
Marks Act, 1996)". 
74.-:-(1) The Controller shall not be taken to warrant the validity 
of the registrati'on of a trade mark under this Act or under any treaty, 
convention, arrangement or engagement to which the State is a 
party. 
(2) The Controller shall not have any liability by reason of, or in 
connection with, any examination required or authorised by this Act, 
or any such treaty, convention, arrangement or engagement, or any 
report or other proceedings consequent on such examination. 
(3) No proceedings shall lie against an officer of the Controller in 
respect of any matter for which, by virtue of this section, the Control­
ler is not liable. 
75.-1n the report on the execution 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 included a 
report on the discharge of the Controller's functions in relation to 
the Madrid Protocol. 
Legal Proceedings and Appeals 
76.-1n all legal proceedings relating to a registered trade mark 
(including proceedings for rectification of the register) the regis­
tration of a person as proprietor of a trade mark shall be prima facie 
evidence of the validity of the original registration and of any sub­
sequent assignment or other transmission of it. 
Certificate of 77.-(1) If, in proceedings before the Court, the validity of the 
validity of contested registration of a trade mark is contested and it is found by the Court 
registration. that the trade mark is validly registered, the Court may give a certifi-
cate to that effect. 
(2) If the Court gives such a certificate and in subsequent 
proceedings-
(a) the validity of the registration is again questioned, and 
(b) the proprietor obtains a final order or judgment in the pro­
prietor's favour, 
the proprietor shall be entitled to his costs as between solicitor and 
client unless the Court otherwise directs. IP IN 11 IIRL/T 11 
Page 84 
[1996.] Trade Marks Act, 1996. [No. 6.] 
(3) Subsection (2) does not extend to the costs of an appeal in any Pr.IV S.77 
proceedings. 
78.-(1) In any proceedings before the Court (including an Controller's 
appeal) which involve or relate to-- appearance in court proceedings. 
(a) the revocation of the registration of a trade mark, or 
(b) a declaration of the invalidity of the registration of a trade 
mark, or 
(c) the rectification 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 directed by the Court. 
(2) Unless otherwise directed by the Court, in any proceedings 
before the Court the Controller may instead of appearing submit to 
the Court a statement in writing signed by the Controller, giving 
particulars of-
(a) any proceedings before the Controller in relation to"the mat­
ter in issue; 
(b) the grounds of any decision given by the Controller affecting 
it; 
(c) the practice of the Patents Office in like cases; or 
(d) such matters relevant to the issues and within the Control­
ler's knowledge as the Controller thinks fit; 
and the statement shall be deemed to form part of the evidence in 
the proceedings. 
79.-(1) Unless otherwise provided by rules of court, within the Appeals from the 
period of three months from the date of a decision of the Controller Controller. 
under this Act, an appeal shall lie from the decision to the Court. 
(2) On an appeal under this section-
(a) the Controller shall be entitled to appear and be heard, and 
shall appear if so directed by the Court: and 
(b) the Court may exercise any power which could have been 
exercised by the Controller in the proceedings from 
which the appeal is brought. 
(3) By leave of the Court, an appeal from a decision of the Court 
under this section shall lie to the Supreme Court on a specified point 
of law. 
8O.-ln any proceedings before the Courts under this Act, the No award of costs 
Controller shall not be awarded or be ordered to pay costs. to or against the Controller. PT.IV 
Power of Minister 
to make rules. 
Fees. 
Authorised agent 
may act. [No. 6.] Trade Marks Act, 1996. 
Rules and Fees 
81.-(1) The Minister may make rules-IP IN I l/IRL/T 11 
Page 85 
[1996.] 
(a) for the purposes of any provision of this Act authorising the 
making of rules with respect to any matter; and 
(b) for prescribing anything authorised or required by any pro­
vision of this Act to be prescribed, 
and generally for regulating practice and procedure under this Act. 
(2) Without prejudice to the generality of subsection (1), provision 
may, in particular, be made by rules under this section-
(a) as to the manner of filing of applications and other 
documents; 
(b) requiring and regulating the translation of documents and 
the filing and authentication of any translation; 
(c) as to the service of documents; 
(d) authorising the rectification of irregularities of procedure; 
and 
(e) prescribing time limits for anything required to be done in 
connection with any proceeding under this Act, and pro­
viding for the extension of any such limit (whether or not 
it has already expired). 
82.-(1) There shall be charged by the Controller and paid in 
respect of applications and registration and other matters under this 
Act, such fees as may from time to time be prescribed by the Minister 
with the sanction of the Minister for Finance. 
(2) Provision may be made by rules to enable the payment of a 
single fee in respect of two or more matters. 
(3) All fees charged by the Controller under this section shall be 
collected and accounted for in such manner as shall be determined 
by the Minister with the consent of the Minister for Finance. 
(4) The Public Offices Fees Act, 1879, shall not apply in respect 
of any fees payable under this section. 
PART V 
TRADE MARK AGENTS 
83.-(1) Subject to rules made under section 90, whenever, under 
this Act, any act has to be done by or to any person in connection 
with the registration of a trade mark or any procedure relating to a 
registered 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 registered trade mark agent. 
(2) A person duly authorised by another person under subsection 
(1) to act as his registered trade mark agent may (subject to any IP IN I l/IRL/T 11 
Page 86 
[1996.] Trade Marks Act, 1996. [No. 6.] 
provision to the contrary in any agreement between the agent and PT.V S.B3 
that person). on giving notice to the Controller and the other person, 
cease to act as registered trade mark agent for the other person. 
84.-The Register which. immediately before the commencement Register of Trade 
of this section, was known as the ~egister of Trade Mark Agents 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" means a person whose name 
is entered in the Register; and 
(c) "registration", in relation to a person who is or has been a 
registered trade mark agent, means the entry of that per­
son's name in the Register. 
85.-(1) Subject to the provisions of this section, an individual Business to be 
who is not a registered trade mark agent shall not- carried on only by registered trade 
mark agents &c. 
(a) carry on a business (otherwise than in partnership) under 
any name or other description which contains the words 
"registered trade mark agent", or 
(b) in the course of a business otherwise describe or hold him­
self out, or permit himself to be described or held out, as 
a registered trade mark agent. 
(2) A partnership shall not-
(a) carry on a business under any name or other description 
which contains the words "registered trade mark agent", 
or 
(b) in the course of a business otherwise describe or hold itself 
out or permit itself to be described or ~eld out, as a firm 
of registered trade mark agents, 
unless all the partners are registered trade mark agents or the part­
nership satisfies such conditions as may be prescribed for the pur­
poses of 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 mark agent", or 
(b) in the course of a business otherwise describe or hold itself 
out, or permit itself to be described or held out, as a regis­
tered trade mark agent, 
unless all the directors of the body corporate and any manager who 
is not also a director are registered trade mark agents or the body 
satisfies such conditions as may be prescribed for the purposes of 
this section . 
. (4) With a view to the fulfilment by 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 trade PT.V S.85 
Entitlement to be 
registered as trade 
mark agent. [No. 6.] Trade Marks Act, 1996. IP/NIl/IRL/TI 1 
Page 87 
[1996.] 
mark agent but who is a citizen of a state which is also a party to 
that international agreement, upon application made by that person, 
to acf on behalf of others in relation to trade marks subject to any 
conditions that the Minister considers appropriate. 
(5) The legal personal representative of a deceased registered 
trade mark agent may carry on the business or practice of the 
deceased agent for a period not exceeding three years from the 
agent's death, or for such further period (if any) as the Court allows 
if the personal representative-
(a) is authorised by the Court to manage the business or prac­
tice; or 
(b) employs another person who is so a1,lthorised to manage the 
business or practice· on behalf of the personal rep­
resen ta tive. 
(6) Any person who contravenes any provision of this section shall 
be liable on summary conviction to a fine not exceeding £500 in the 
case of a first offence and, in the case of a second or subsequent 
offence, £1,000; and, notwithstanding section 10 (4) of the Petty Ses­
sions (Ireland) Act, 1851, proceedings for an offence under this 
section may be commenced at any time within twelve months from 
the date of the offence. 
(7) Nothing in this Act shall be construed as prohibiting solicitors 
or barristers. from taking such part in proceedings under this Act as 
has heretofore been taken by solicitors or barristers in connection 
with a trade mark or any procedure relating to a trade mark or the 
registration thereof. 
(8) A registered trade mark agent shall not be guilty of an offence 
under section 58 of the Solicitors Act, 1954 (which prohibits the 
preparation for reward of certain instruments by persons not legally 
qualified), by reason only of the preparation by the agent of-
(a) a deed assigning the property in a trade mark application or 
trade mark; or 
(b) any document (not being a deed) for use in proceedings 
under this Act before the Controller or the Court. 
(9) No offence is committed under any enactment restricting the 
use of certain expressions in reference to any person not qualified to 
act as a solicitor by use of the tenn "Community Trade Mark 
Attorney" in reference to a Registered Trade Mark Agent. 
86.-(1) Any person who-
(a) resides in the State or in such other state as may be 
prescribed, 
(b) has a place of business in the State, 
(c) possesses the prescribed educational and professional quali­
fications, and 
(d) complies with the prescribed conditions, 
shall be eligible to be a registered trade mark agent and a partnership 
shall be so eligible if every partner is registered in accordance with IP 1Nl 1 IIRL/T 11 
Page 88 
[1996.] Trade M arks Act, 1996. [No. 6.} 
the provisions of this section; and, on application in the prescribed Pr.V S.86 
form and manner and on payment of the prescribed fee, a person or 
partnership so eligible shall be registered. 
(2) Persons and partnerships whose names were entered in the 
Register under the Act of 1963 immediately before the commence­
ment of this Act shall continue to be registered trade mark agents. 
87.-:-The Controller may, upon the application of any person who Removal from 
is a registered trade mark agent, remove that person's name from Register. 
the Register. 
88.-(1) Where, in the opinion of the Controller, a person who is 
a registered trade mark agent ceases to be eligible to be registered 
or has been guilty of conduct disgraceful to that person in the 
capacity of a registered trade mark agent, the Controller may, after 
giving that person an opportunity to be heard, decide that the name 
of that person should be erased from the Register or that, during a 
period of specified duration, that person's registration should not 
have effect. 
(2) On making a decision under subsection (1), the Controller shall 
forthwith send by post to the person to whom the decision relates 
(in this section referred to as "the person 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 manner, 
the person in default may, within the period of 21 days beginning on 
the date of the decision in question, apply to the Court for cancel­
lation of the decision; and, if that person so applies, the Court, on 
hearing the application, may either-
(a) cancel the decision, or 
(b) declare that it was proper for the Controller to make a 
decision under subsection (1) in relation to the person in 
default and either (as the Court may consider proper)-
(i) direct the Controller to erase the name of the person 
in default from the Register; or 
(ii) direct that, during a specified period (beginning not 
earlier than 7 days after the decision of the Court), 
the registration of the person in default shall not 
have effect. 
(4) If at any time the Controller satisfies the Court that the person 
in default has delayed unduly in proceeding with an application 
under subsection (3), the Court shall, unless it sees good reason to 
the contrary, declare that it was proper for the Controller to make a 
decision under subsection (1) in relation to the person in default and 
either (as the Court may consider proper)- . 
(a) direct the Controller to erase the name of the person in 
default from the Register; or 
(b) direct that, during a specified period (beginning not earlier 
than 7 days after the decision of the Court), the regis­
tration of the person in default shall not have effect. Suspension and 
erasure of 
registration of trade 
mark agent. Pr.V S.88 
Notice of erasure or 
suspension: 
subsequent 
restoration. [No. 6.] Trade Marks Act} 1996. IP IN 11 IIRL/T 11 
Page 89 
[1996.] 
(5) Where the person in default does not, within the period of 21 
days beginning on the date of the decision in question, apply to the 
Court for cancellation of the decision, the Controller may apply ex 
parte to the Court for confirmation of the decision; and, if the Con­
troller so applies, the Court on the hearing of the application shall, 
unless it sees good reason to the contrary, declare accordingly and 
either (as the Court may consider proper)-
(a) direct the Controller to erase the name of the person in 
def~ult from the Register; or 
(b) direct that, during a specified period (beginning not earlier 
than 7 days after the decision of the Court), the regis­
tration of the person in default shall not have effect. 
(6) The decision of the Court On an application under subsection 
(3) or subsection (5) shall be final, save that, by leave of the Court 
or the Supreme Court, an appeal by the Controller or the person in 
default from the decision shall lie to the Supreme Court on a speci­
fied question of law. 
89.-(1) Upon the erasure of the name of a person from the Regis­
ter the Controller shall forthwith send by pre-paid post to that per­
son, at that person's address as stated in the Register, notice in writ­
ing of the erasure. 
(2) Where a decision is made under section 88 that, during a speci­
fied period, a person's registration shall not have effect, the Control­
ler shall, before the commencement of that period, send by pre-paid 
post to that person, at that person's address as stated in the Register, 
notice in writing of the decision. 
(3) The name of any person which has been erased from the Regis­
ter may at any time be restored to the Register by direction of the 
Controller but not otherwise; and, when a person's name is so 
restored to the Register, the Controller may attach to the restoration 
such conditions (including the payment of a fee not exceeding the 
fee which would be payable by the person for registration if that 
person was being registered for the first time) as the Controller 
thinks fit. 
(4) Where a person's registration has ceased to have effect under 
section 88 for a specified period, the Controller may, if he so thinks 
fit, on application made to him by that person, terminate the 
suspension. 
Rules rdating to 90.-(1) The Minister may make rules for the management of the 
trade mark agents. Register and may, by those rules, prescribe any matter or thing 
referred to in this section or section 85 and, in particular, may so 
prescribe the educational and professional qualifications and the con­
ditions (including conditions relating to nationality or citizenship) for 
eligibility for registration and the maximum fees which may be 
charged by any person who is registered for such services in connec­
tion with trade marks as may be specified in the rules. 
(2) Rules under subsection (1) may authorise the Controller to 
refuse to recognise as agent in respect of any business under this Act 
any person who does not satisfy the requirements of section 85. 
(3) Rules under this section may authorise the Controller to refuse 
to recognise as agent in respect of any business under this Act a IP IN 11 IIRL/T 11 
Page 90 
[1996.] Trade Marks Act, 1996. [No. 6.] 
company or firm of which any director, manager or partner (as the Pr.V S.90 
case may,be) is an individual whom the Controller could refuse to 
recognise as an agent. 
91.-(1) This section applies to communications in respect of any Privileged 
matter relating to the protection of a trade mark or in respect of any communications. 
matter involving passing off. 
(2) Any communication to which this section applies-
(a) between a person and his registered agent, or 
(b) for the purposes of obtaining or in response to a request for 
information which a person is seeking for the purpose of 
instructing his registered agent, 
is privileged from disclosure in legal proceedings in the State in the 
same way as a communication between a person and his solicitor or, 
as the case may be, a communication for the purpose of obtaining or 
in response to a request for information which a person seeks for the 
purpose of instructing his solicitor. 
(3) In subsection (2) "registered agent" means-
(a) a registered trade mark agent; 
(b) a partnership entitled to describe itself as a firm of registered 
trade mark agents; or 
(c) a body corporate entitled to describe itself as a registered 
trade mark agent. 
PART VI 
OFFENCES 
92.-(1) Subject to the provisions of subsection (3), it shall be an Fraudulent 
offence for any person- application or use 
of trade mark in 
relation to goods. 
(a) to apply a mark identical to or nearly resembling a regis-
tered trade mark to goods or to material usedor intended 
to be used for labelling, packaging or advertising goods, 
(b) to sell. let for hire, offer or expose for sale or hire or 
distribute-
(i) goods bearing such a mark, or 
(ii) material bearing such a mark which is used or 
intended to be used for labelling, packaging or 
advertising goods, 
(c) to use material bearing such a mark in the course of a busi­
ness for labelling. packaging or advertising goods, or 
(d) to possess in the course of a business goods or material bear­
ing such a mark with a view to doing any of the things 
mentioned in paragraph (a) to (c), 
when that person is not entitled to use the mark in relation to the 
goods in question or authorised by a person who is so entitled. PT.VI S.92 
Falsification of 
register, &c. 
Falsely representing 
trade mark as 
registered. [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 91 
[1996.] 
(2) Subject to the provisions of . subsection (3), it shall be an 
off~ce for any person to possess in the course of a business goods 
or material bearing a mark identical to or nearly resembling a regis­
tered trade mark with a view to enabling or assisting another person 
to do any of the things mentioned in subsection (1) (a), (b) or (c), 
knowing or having reason t'o believe that the other person is not 
entitled to use the mark in relation t.o the goods in question or auth­
orised by a person who is so entit)ed. 
(3) Any person who contravenes the provisions of subsection (1) 
or (2) shall be guilty of an offence if, but only if that person acts with 
a view to gain, for himself or another, or with intent to cause a loss 
to another and it shall be a defence for a person charged with an 
offence under subsection (1) to show that he believed, on reasonable 
grounds, that· he was entitled to use the trade mark in relation to the 
goods in question. 
(4) A person who commits an offence under this sectio'n shall be 
liable-
(a) on summary conVIctIOn to imprisonment for a term not 
exceeding six months or to a fine not exceeding £1,000, 
or to both; 
(b) on conviction on indictment to imprisonment for a term not 
exceeding five years or to a fine not exceeding £100,000, 
or to both. 
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 person-
(a) to make or cause to be made anything falsely purporting to 
be a copy of an entry in the register, or 
Cb) to produce or tender or cause to be produced or tendered 
in evidence any such thing, 
knowing or having reason to believe that it is false. 
. (3) A person who commits an offence under this section shall be 
liable-
(a) on summary conviction, to imprisonment for a term not 
exceeding six months or to a fine not exceeding £1,000, 
or to both, 
(b) on conviction on indictment, to imprisonment for a term not 
exceeding two years or to a fine not exceeding £200,000, 
or to both. 
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 which a trade mark is registered, Ip IN 11 IIRL/T 11 
Page 92 
[1996.] Trade Marks Act, 1996. [No. 6.] 
knowing or having reason to believe that t~e representation is false. Pr.VI S.94 
.... 
(2) For the purposes of this section, the use in the State in relation 
to a trade mark-
(a) of the word "registered", or 
(b) of any other 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 reference is to registration elsewhere 
than in the State and that the trade mark is in fact so registered for 
the goods or services in question. 
(3) A person guilty of an offence under this section shall be liable 
on summary conviction to a fine not exceeding £1,QC() and, in the 
case of a continuing offence, to a further fine not exceeding £100, 
for every day on which the offence continues. 
95.-(1) Without prejudice to any liability of a partner under sub-Offences committed 
section (3), proceedings for an offence under this Act alleged to have ~artnerships and 
been committed by a partnership shall be brought against the part- les corporate. 
nership in the name of the firm and not in that of the partners. 
(2) A fine imposed on a partnership on its conviction in pro­
ceedings brought in accordance with subsection (1) shall be paid out 
of the assets of the partnership. 
(3) Where a partnership is guilty of an offence under this Act, 
every partner, other than a partner who is proved to have been ignor­
ant of or to have attempted to prevent the commission of the offence, 
shall also be guilty of the offence and liable to be proceeded against 
and punished accordingly. 
(4) Where an offence under this Act which is committed by a body 
corporate is proved to have been committed with the consent or 
connivance of, or to be attributable to any neglect on the part of, 
any person who, when the offence 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 corporate) shall be guilty of an offence and 
liable to be proceeded against and punished as if guilty of the offence 
committed by the body corporate. 
PART VII 
MISCELLANEOUS AND GENERAL 
96.-Without prejudice to the powers conferred by this Act upon 
the Court, proceedings for an order under section 20 or section 23 
may be brought in the Circuit Court in the county in which the infrin­
ging goods, material or articles are situated or in the county in which 
resides any person having those goods, material or articles in his 
possession, custody or control. Jurisdiction of the 
Circuit Court. 
97.-(1) A person shall not, without the authority of the Minister, Unauthorised use of 
use in connection with any business the State emblems of Ireland State emblems of Ireland. notified under Article 6ter of the Paris Convention or emblems so 
closely resembling the State emblems as to be calculated to deceive Pr.VII S.97 
Misuse of trade 
marks indicative of 
Irish origin. 
Burden of proving 
use of trade mark. 
Transitional 
provisions. 
Territorial waters 
and continental 
shelf. 
Amendment and 
adaptation of 
existing statutes. [No. 6.] Trade Marks Act, 1996. IP IN 11 IIRL/T 11 
Page 93 
[1996.] 
in such a manner as to be calculated. to lead to the belief that that 
pers?-n is duly authorised to use the State emblems. 
(2) A person who contravenes the provisions of subsection (1) 
shall be guilty of an offence and shall be liable on summary convic­
tion to a fine not exceeding £1,000 and, in the case of a continuing 
offence, to a further fine not exceeding £100 for every day the 
offence continues. 
(3) The Minister may apply to the Court for an injunction to 
. restrain any person from contravening the provisions of subsection 
(1). 
(4) Nothing in this section shall affect any right of the proprietor 
of a registered trade mark containing any such emblem to use that 
trade mark. 
(5) In any proceedings to restrain any action prohibited under 
subsection (1) or any prosecution under subsection (2) a certificate 
purporting to be signed by the Controller that the emblem is a State 
emblem shall be sufficient evidence of its contents unless the con­
trary is proved. 
98.-The Minister may take, in any place outside the State, such 
lawful steps, whether by way of action or prosecution at law or other­
wise, as he shall think proper to prevent, restrain, or to secure pun­
ishment for, the registration, use or application, in relation to or in 
respect of goods not grown, produced or manufactured in the State, 
of any trade mark or other mark or description indicating or suggest­
ing, 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, produced or manufactured in the State. 
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, the 
onus of proving such use shall lie with the proprietor. 
100.-The provisions of the Third Schedule shall have effect with 
respect to transitional matters, including the treatment of trade 
marks registered under the Act of 1963, and applications for regis­
tration and other proceedings pending under that Act, on the com­
mencemen t of this Act. 
101.-For the avoidance of doubt, it is hereby declared that this 
Act applies to the following waters, namely, the waters in the portion 
of the sea which comprises the territorial seas of the State,. the waters 
in all areas 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 the waters in any area which is for the time being a desig­
nated area within the meaning of section 1 of the Continental Shelf 
Act, 1968. 
102.-(1) In any enactment passed before, and in any provision 
made under any enactment before, the commencement of this Act, 
any reference to trade marks or registered trade marks, within the 
meaning of the Act of 1963, shall; unless the context otherwise IP IN/I IIRL/T I I 
Page 94 
[1996.] Trade Marks Act, 1996. [No. 6.] 
requires, be construed after the commencement of this Act as a refer-Pr.VII S.102 
ence to h-ade marks or registered trade marks, within the 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 
substituted "the Trade Nfarks Act, 1996"; and 
(b) in paragraph (c) for the words "a person registered under 
section 36 of the Trade Marks Act, 1963 as a registered 
user of a trade mark" there shall be substituted "in the 
case of a registered trade mark, a person licensed to use 
it". . 
FIRST SCHEDULE 
COLLECTIVE MARKS 
General 
1. The provisions of this Act shall apply 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 undertaking from those of 
other undertakings shall be construed as a reference to distinguishing 
goods or services of members of the association which is the pro­
prietor of the mark from those of other undertakings. 
Indication of geographical origin 
3. (1) Notwithstanding the provisions of section 8 (1) (c), a collec­
tive 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 subparagraph 
(1) shall not be entitled to prohibit the use of the signs or indications 
in accordance with honest practices in industrial or commercial mat­
ters (in particular, in the case of a person who is entitled to use a 
geographical name). 
Nfark not to be misleading 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 the 
mark, in particular, if it is likely to be taken to be something other 
than a collective mark. 
(2) The Controller may, accordingly, require. that a mark. in 
respect of which an application is made fo~ r~glstratIOn.as a collectIve 
mark. shall comprise some indication t~at l.t IS a collectIve mark, and, 
notwithstanding section 44 (3). an applIcatIOn may be amended so as 
to comply with any such requirement. Section 54. SCH.l [No. 6.] Trade Marks Act, 1996. 
Regulations governing use of collective mark IP IN 11 IIRL/T 11 
Page 95 
[1996.] 
5. (1) An applicant for registration of a collective mark shall file 
with the Controller regulations governing the use of the mark. 
(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 sanctions 
against misuse of the mark. 
-(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 collective mark shall not be registered unless the regu­
lations 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 the prescribed period after the date of the 
application for registration of a collective mark, the applicant must 
file the regulations with the Controller and pay the prescribed fee; 
and if the applicant does not do so, the application shall be deemed 
to be withdrawn. 
7. (1) If it appears to the Controller that the requirements (other. 
than those specified in paragraph 6) for registration have bec!n 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 amendment of the 
regulations or otherwise); or 
(c) refuse to accept it. 
(2) Where the Controller accepts an application subject to speci< 
fled conditions, and those conditions are complied with within the 
prescribed period, the Controller shall proceed with the publication' 
in the J oumal in accordance with section 43. 
(3) Where the Controller accepts an application subject to speci­
fied conditions and those conditions are not complied with within the 
prescribed period, the application shall be deemed to be. withdrawn. 
8. (1) The regulations governing the use of the mark shall be open 
to public inspection and notice of opposition may be given, and 
observations may be made, relating to the matters specified in para­
graph 6 (1). 
(2) The provisions of this paragraph are in addition to any other 
grounds on which an application. may be opposed or observations 
made. IP IN 11 IIRL/T 11 
I'age 96 
[1996.] Trade M arks Act, ~ 996. [No. 6.] 
Regulations to Le open to inspection 
9. The regulations governing the use of a registered collective SCHJ 
mark shall, in like manner as the register, be open to public 
inspection. 
Amendment of regulations 
10. Where the regulations governing the use of a registered collec­
tive mark are amended, the regulations, as amended, shall not be 
effective unless and until the amended regulations are filed with and 
accepted by the Controller. 
Infringement proceedings: rights of authorised users 
11. (1) Subject to any agreement to the contrary between an auth­
orised user and the proprietor, 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 matter which 
affects the authorised user's interests. 
(3) Where the proprietor refuses or fails to take infringement pro­
ceedings in accordance with subparagraph (2) within two months 
after being called upon to do so, the authorised user may bring the 
proceedings in the authorised user's name as if the authorised user 
were the proprietor. 
(4) Where the infringement proceedings are brought by virtue of 
subparagraph (3)-
(a) the authorised user may not, without the leave of the Court, 
proceed with the action unless the proprietor is either 
joined as a plaintiff or added as a defendant; and 
(b) a proprietor who is so added as a defendant shall not be 
liable for any costs in the action unless he takes part in 
the proceedings. 
(5) Nothing in subparagraph (4) shall affect the granting of inter­
locutory relief on an application by an authorised user alone. 
(6) In the course of infringement proceedings brought by the pro­
prietor of a registered collective mark, any loss suffered or likely to 
be suffered by authorised users shall be taken into account by the 
Court; and the Court may give such directions as it thinks fit regard­
ing the extent to which the plaintiff shall hold the proceeds of any 
pecuniary remedy on behalf of such users. 
Grounds for revocation of registration 
12. Apart from the grounds of revocation provided for in section 
51, the registration of a collective mark may be revoked on the 
ground that-
(a) the manner in which the mark has been used by the pro­
prietor has made it misleading to the public in the man­
ner referred to in paragraph 4 (1); or SCH.l 
Section 55. [No. 6.] Trade Marks Act, 1996. IP IN I l/IRL/T 11 
Page 97 
[1996.] 
(b) the proprietor has failed to observe, or to secure the observ­
ance of the regulations g'overning the use of the mark; or 
(c) an amendment of the regulations has beer:. made so that the 
regulations-
(i) no longer comply with paragraph 5 (2) and any 
further conditions imposed by rules; or 
(ii) are contrary to public policy or to accepted principles 
of morality. 
Grounds for in'Yalidity of registration 
13. Apart from the grounds of invalidity provided for in section 
52, the registration of a collective mark may be declared invalid on 
the ground that the mark was registered contrary to the provisions 
of paragraph 4 (1) or 6 (1). 
SECOND SCHEDULE 
CERTIFICATION MARKS 
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 certification mark may consist 
2. In relation to a certification mark, the reference in section 6 (1) 
to distinguishing goods or services of one undertaking from those of 
other undertakings shall be construed as a reference to distinguishing 
goods or services which are certified from those .which are not 
certified. 
Indication of geographical origin 
. 3. Notwithstanding the provisions of section 8 (1) (c), a certifi­
cation mark may be registered which consists of signs or indications 
which may serve, in trade, to designate the geographical origin of the 
goods or services: 
Provided that the proprietor of such a mark shall not be entitled 
to restrain the use of the signs or indications in accordance with 
honest practices in industrial or commercial matters, in particular, by 
a person who is entitled to use a geographical name. 
Nature of proprietor's business 
4. A certification mark shall not be registered if the proprietor 
.carries on a business involving the supply of goods or services of the 
kind certified. IP IN 11 IIRL/T 11 
Page 98 
[1996.] Trade Marks Act, 1996. [No. 6.] 
Ma.rk not to be misleading as· to character or significance 
5. (1) A certification mark shall not be registered if the public is SCH.2 
liable to be misled as regards the character or significance of the 
mark, in particular, if it is likely to be taken to be something other 
than a certification mark. 
(2) The Controller may, accordingly, require that a mark in respect 
of which an application is made for registration as a certification 
mark shall comprise some indication that it is a certification mark; 
and notwithstanding section 44 (3), an application may be amended 
so as to comply with any such requirement. 
Regulations governing use of certification mark 
6. (1) An applicant for registration of a certification mark shall ftle 
with the Controller regulations governing the use of the mark. 
(2) The regulations shall indicate who is authorised to use the 
mark, the characteristics to be certified by the mark, how the certify­
ing 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 operation of 
the mark and the procedures for resolving disputes. 
(3) Provision may be made by rules for further matters in respect 
of which regulations are required. 
Approval of regulations, &c. by Mi{lister 
7. (1) A certification mark shall not be registered unless the Mini­
ster is satisfied that-
(a) the regulations governing the use of the mark-
(i) comply with paragraph 6 (2) and any further require­
ments imposed by rules; and 
(ii) are not contrary to public policy or to accepted prin­
ciples of morality; and 
(b) the applicant is competent to certify the goods or services 
for which the mark is to be registered. 
(2) If it appears to the Controller that the requirements for regis­
tration other than those in subparagraph (1) are met, the Controller 
shall authorise the applicant to proceed with the application. 
(3) Within the prescribed period. of authorisation to proceed, the 
applicant must file the regulations (if this has not already been done) 
and pay the prescribed fee, failing which, the application shall be 
deemed to be withdrawn. 
8. (1) The Minister shall consider the matters mentioned in para­
graph 7 (1) and may direct that the application for registration be 
accepted, be accepted subject to conditions (as to amendment of the 
regulations or otherwise), or be 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 accordance with section 43. SCH.2 [No. 6.] Trade M arks Act, 1996. IP IN 11 IIRL/T 11 
Page 99 
[1996.] 
(3) Where the Minister directs that :m application be accepted sub­
jecL to specified conditions and those conditions are not complied 
with within the prescribed period, the application shall be deemed 
to be withdrawn. 
9. The regulations shall be published and notice of opposition may 
be given, and observations may be made, relating to the matters 
mentioned in paragraph 7 (1), in addition to any other grounds on 
which an application may be opposed or observations made. 
Regulations to be open to inspection 
10. The regulations governing the use of ~ registered certification 
mark shall, in like manner as the register, be open to public 
inspection. 
Amendment of regulations 
11. (1) An amendment of the regulations governing the use of a 
registered certification mark shall not be effective unless and until 
the Minister consents to the amendment and the amended regu­
lations are filed with the Controller. 
(2) The Minister may cause an application for consent under sub­
paragraph (1) to be published in any case where it appears expedient 
to do so. 
(3) Any person may, within the prescribed time from the date 
of the publication of the application, give notice to the Minister of 
opposition to the application and any such notice shall be given in 
writing in the prescribed manner and shall include a statement of the 
grounds of opposition. 
(4) After the Minister has consented to such an amendment as is 
mentioned in subparagraph (1), the Controller shall publish notice 
in the Journal when the amended regulations are filed with him. 
Consent to assignment of registered certification mark 
12. The assignment or other transmission of a registered certifi­
cation mark shall not be effective without the consent of the 
Minister. 
Infringement proceedings: rights of authorised users 
13. (1) Subject to any agreement to the contrary between an auth­
orised user and the proprietor, 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 which 
affects the authorised user's interests. . 
(3) Where the proprietor refuses or fails to take infringement pro­
ceedings in accordance with subparagraph (2) within two months 
after being called upon to do so, the authorised user may bring the 
proceedings in the authorised user's own name as if the authorised' 
user were the proprietor.· . IP IN 11 IIRL/T 11 
}Sage 100 
[1996.] Trade Marks Act, 1996. [No. 6.] 
(4) Where infringement proceedings are brought by virtue of sub-SCH.2 
paragraph (3)-
(a) the authorised user may not, without the leave of the Court, 
proceed with the action unless the proprietor is either 
joined as a plaintiff or added as a defendant; and 
(b) a proprietor who is so added as a defendant shall not be 
liable for any costs in the action unless the proprietor 
takes part in the proceedings. 
(5) Nothing in subparagraph (4) shall affect the granting of inter­
locutory relief on an application by an authorised user alone. 
(6) In the course of infringement proceedings brought by the pro­
prietor of a registered certification mark, any loss suffered or likely 
to be suffered by authorised users shall be taken into account by the 
Court; and the Court may give such directions as it thinks fit regard­
ing the extent to which the plaintiff shall hold the proceeds of any 
pecuniary remedy on behalf of such user~. . 
Grounds 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 revoked 
on the ground that-
Ca) the proprietor has begun to carry on such a business as is 
mentioned in paragraph 4; or 
(b) the manner in which the mark has been used by the pro­
prietor has made it misleading to the public in the manner 
referred to in paragraph 5 (1); or 
Cc) the proprietor has failed to observe, or to secure the observ­
ance of, the regulations governing th~ use of the mark; 
or 
(d) an amendment of the regulations has been made so that the 
regulations-
(i) no longer comply with paragraph 6 (2) and any 
further conditions imposed by rules; or 
(ii) are contrary to public 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 revocation on the ground mentioned in 
subparagraph (1) (c), (d) or (e) shall be made to the Minister. 
(3) For the purposes of this paragraph the reference in section 51 
(6) to the Controller or the Court shall be construed as a reference 
to the Minister. . 
Grounds for invalidity of registration 
15. (1) Apart from the grounds of invalidity provided for in 
section 52, the registration of a certification mark may be declared 
invalid on the ground that the mark was registered contrary to the 
provisions of paragraph 4, 5 (1) or 7 i 1). SCH.2 
Secrion lOO, [No. 6.] Trade Marks Act, 1996. IP IN 11/IRL/T 11 
Page 101 
[1996.] 
(2) An application for a declaratio,n of invalidity on the ground 
that the registration was made contrary to the provisions of para­
graph 7 (l) shall be made to the Minister. 
General provisions as to functions of Minister 
16, (1) The provisions of sections 69 to 74 shall apply in relation 
to the Minister and the Minister's functions under this Schedule as 
they apply in relation to the Controller and the Controller's 
functions. 
(2) Section 79 shall apply in relation to a decision of the Minister 
under this Schedule as they apply in relation to a decision of the 
Controller. 
(3) The Minister may, for the purpose of discharging any of his 
functions under this Schedule, refer any matter to a body or person 
appearing to the Minister to have experience of matters of that 
description, and may take their report or advice into account in 
reaching his decision. 
THIRD SCHEDULE 
TRANSITIONAL PROVISIONS 
Introductory 
1. (1) In this Schedule-
"commencement" means the commencement of this Act; 
"existing registered mark" means a trade mark or certification trade 
mark, within the meaning of the Act of 1963, registered under that 
Act immediately before commencement; 
"the fonner register" means the register of trade marks kept under 
the Act of 1963; 
"the old law" means the Act of 1963 and any other enactment or 
rule of law applying to existing registered marks immediately before 
commencement; 
"the new register" means the Register of Trade Marks kept under 
this Act. 
(2) For the purposes of this Schedule an application shall be 
treated as pending at commencement if it was made but not fmally 
detennined before commencement. 
Existing registered marks 
2. (1) Existing registered marks (whether registered in Part A or 
Part B of the fonner register) shall, on commencement, be deemed 
to be transferred to the new register and shall have effect, subject to 
the provisions of this Schedule, as if registered under this Act. 
(2) Subparagraph (1) shall apply to all entries relating to existing 
registered marks as it applies to the marks themselves. 
'(3) Entries indicating that existing registered marks are associated 
with other marks shall cease to have effect on commencement. . JP IN 11 IJRL/T 11 
Page 102 
[1996.] Trade Marks Act, 1996. [No. 6.] 
(4) A condition entered on the former. register in relation to an SCH.3 
existing tegistered mark immediately before commencement shall 
cease to have effect on commencement; and proceedings under 
section 41 of the Act of 1963 (application to expunge o~-vary regis­
tration for breach of condition) which are pending at commencement 
shall be dealt with under the old law (with any necessary alteration 
being made in the new register). 
(5) A disclaimer or limitation entered on the fanner register in 
relation to an existing registered mark and in force immediately 
before commencement shall be deemed to be transferred to the new 
register and have effect as if entered on the new register in pursuance 
of section 17. 
Effects of registration: infringement 
3. (1) Sections 13 to 16 (effects of registration) apply in relation 
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 commencement, subject to subpara­
graph (3). 
(2) Without prejudice to the operation of the Interpretation Act, 
1937, the old law shall continue to apply in relation to infringements 
committed before commencement. 
(3) It shall not be an infringement of -
(a) an existing registered mark, or 
(b) a registered trade mark of which the distinctive elements are 
the same or substantially the same as those of an existing 
registered mark and which is registered for the same 
goods or services, 
to continue after commencement any use which did not amount to 
infringement of the existing registered mark under the old law. 
Infringing goods, material or articles 
4. Section 20 (order for delivery up of infringing goods, material 
or articles) shall apply to infringing goods, material or articles made 
before, as well as after, commencement. 
Rights and remedies of licensee or authorised user 
5. (1) Section 34 (general provisions as to rights of licensees in­
case of infringement) shall apply to licences granted b~fore com­
mencement, but only as regards infringements committed after com­
mencement. 
(2) Paragraph 13 (6) of the Second Schedule shall apply only in 
relation to infringements committed after commencement. 
Assignment &c. of registered trade marks 
6.-(1) Section 28 (assignment or other transmission of registered 
mark) shall apply only in relation to transactions and events occur­
ring after commencement in relation to an existing registered mark; -SCH.3 [No. 6.] Trade M arks Act, 1996 .. IP IN 11 IIRL/T 11 
Page 103 
[1996.] 
and the old law shall continue to apply in relation to transactions 
and e\tents occurring before commencement. 
(2) An application for registration under section 33 of the Act of 
1963 (registration of assignments and transmissions) which is pending 
at commencement shall be treated as an application for registration 
under section 29 and shall proceed accordingly, except that the Con­
troller may require the applicant to amend the application so as to 
conform with the requirements of this Act. 
(3) An applic·ation for registration under section 33 of the Act of 
1963 which has been determined by the Controller but not finally 
determined before commencement shall be dealt with under the old 
law. 
(4) Where, before commencement, a person became entitled by 
assignment or transmission to an existing registered mark but did not 
make an application to register his title, any application for regis­
tration after commencement shall be made under section 29. 
(5) Any entry falling to be made in the old register as a result of 
subparagraph (3) shall be treated for the purposes of paragraph 2 as 
an entry relating to an existing registered mark. 
Licensing of registered mark 
7. (1) Sections 32 and 33 (2) (licensing of registered trade mark: 
rights of exclusive licensee against grantor's successor in title) shall 
apply only in relation to licences granted after commencement; and 
the old law shall continue to apply in relation to licences granted 
before commencement. 
(2) Existing entries under section 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 apprrcation for registration as a registered user \Yhich is 
pending at commencement shall be treated as an application for 
registration of a licence under section 29 (1) and shall proceed 
accordingly, 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 registered user which has 
been determined by the Controller but not finally determined before 
commencement shall be dealt with under the old law, and any entry 
falling to be made in the old register as a result of this subparagraph 
shall be treated for the purposes of paragraph 2 as an entry relating 
to an existing registered mark. . 
(5) Any proceedings pending on commencement under section 36 
(7) or (9) of the Act of 1963 (variation or cancellation of registration 
of registered user) shall be dealt with under the old law (with any 
necessary alteration being made to the new register). 
Pending applications for registration 
8. (1) The provisions of this paragraph apply where an application 
for registration of a trad.e mark, within th'e meaning of the Act· of 
1963, is pending at commencement. . IP IN 11 IIRL/T 11 
Page 104 
[1996.] Trade Marks Act, 1996. [No. 6.] 
(2) Su.bject to paragraph 9, the application shall be dealt with (and SCH.3 
the registrability of the mark shall be detennined) in accordance with 
the old law and any mark which, on that determination. faHs to be 
registered shall be treated for the purpose of this Schedule as an 
existing registered mark. 
(3) Provision may be made by rules to enable pending appli­
cations for registration to continue in accordance with the procedural 
provisions of this ~ct. 
Conversion of pending application 
9. (1) This paragraph applies if an application which was pending 
at commencement has not been advertised under section 26 of the 
Act of 1963. 
(2) If, in case where subparagraph (1) applies, the applicant gives 
notice to the Controller requesting that the registrability of the mark 
be determined in accordance with the provisions of this Act, the 
Controller shall deal with the application accordingly. 
(3) Notice under subparagraph (2) shall be in the prescribed fonn, 
shall be accompanied by the appropriate fee and shall be given no 
later than six months after commencement. 
(4) Notice given under subparagraph (2) shall be irrevocable and 
the application to which the notice relates shall be treated as if it 
were made at commencement and as if the date of filing were the 
date of commencement. 
Duration and renewal of registration 
10. (1) Section 47 (1) (duration of original period of registration) 
applies in any case where the registrability of a trade mark is deter­
mined in accordance with the 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 falls due at or after commencement; and the old law applies 
in any other case. 
(3) For the purposes of this paragraph it is immaterial when the 
application is made or when the fee is paid. 
Revocation for non-use 
11. (1) An application under section 34 of the Act of 1963 
(removal from register or imposition of limitation on ground of non­
use) which is pending at commencement shall be dealt with under 
the old law (with any necessary alteration being made to the new 
register). 
(2) Subject to subparagraph (3). an application under section 51 
(4) on the grounds specified in section 51 (1) (a) or (b) (revocation 
for 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 registration of an exist­
ing registered mark which was registered by virtue of section 35 of SeH.3 [No. 6.] Trade Marks Act, 1996.· IP IN 11 IIRL/T 11 
Page 105 
[1996.] 
the Act of 1963 (defensive registration of well-known trade marks) 
may be made under section 51 until more than five years after com­
mencement. 
Application for rectification &c. 
12. An application under section 40 or 42 of the Act of 1963 
(rectification or correction of the register) which is pending at com­
mencement shall be dealt with under the old law (with any necessary 
alteration being. made to the new register). 
Validity of existing registered marks 
13. The old law shall continue to apply as regards the validity of 
the registration of an existing registered mark; and no objection to 
the validity of such a registration may be taken on the ground of 
failure to satisfy the requirements of this Act. 
Certification marks 
14. (1) If, at commencement, a req'uest is pending for the amend­
ment of the regulations governing the use of an existing certification 
mark, that request shall be dealt with under the old law. 
(2) In subparagraph (1) "existing certification mark" means a certi­
fication trade mark registered under the Act of 1963 immediately 
before commencement. 
Pre-commencement applications in respect of trade marks for services. 
15. (1) If, at any time between 1st January, 1993 and commence­
ment, an application was made to the Controller for the registration 
of a trade mark in respect of services, this Act shall have effect, 
subject to subparagraph (2), as if-
(a) the application were made at commencement; and 
(b) the date of filing were the date of commencement; 
and the Controller shall deal with the application accordingly. 
(2) Section 20 (3) of the Act of 1963 (separate applications for 
registration of identical trade marks in respect of goods, etc.) shall 
apply in relation to applications falling within subparagraph (l)-
(a) with the substitution of a reference to services for the refer­
ence to goods or a description of goods; and 
(b) with the omission of the proviso.