INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927

• (f) if any trade or industry in Saorstát Eireann or any person or class of persons engaged therein, is unfairly prejudiced by the conditions attached by the patentee, whether before or after the passing of this Act, to the purchase, hire, licence, or use of the patented article, or to the using or working of the patented process:

Provided that, for the purpose of determining whether there has been any abuse of the monopoly rights under a patent, it shall be taken that patents for new inventions are granted not only to encourage invention but to secure that new inventions shall so far as possible be worked on a commercial scale in Saorstát Eireann without undue delay.

• (3) On being satisfied that a case of abuse of the monopoly rights under a patent has been established, the controller may exercise any of the following powers as he may deem expedient in the circumstances:—

• (a) he may order the patent to be indorsed with the words “licences of right” and thereupon the same rules shall apply as are provided in this Act in respect of patents so indorsed, and an exercise by the controller of this power shall entitle every existing licensee to apply to the controller for an order entitling him to surrender his licence in exchange for a licence to be settled by the controller in like manner as if the patent had been so indorsed at the request of the patentee, and the controller may make such order; and an order that a patent be so indorsed may be made notwithstanding that there may be an agreement subsisting which would have precluded the indorsement of the patent at the request of the patentee;

• (b) he may order the grant to the applicant of a licence on such terms as the controller may think expedient, including a term precluding the licensee from importing into Saorstát Eireann any goods the importation of which, if made by persons other than the patentee or persons claiming under him, would be an infringement of the patent, and in such case the patentee and all licensees for the time being shall be deemed to have mutually covenanted against such importation. A licensee under this paragraph shall be entitled to call upon the patentee to take proceedings to prevent infringement of the patent, and if the patentee refuses, or neglects to do so within two months after being so called upon, the licensee may institute proceedings for infringement in his own name as though he were the patentee, making the patentee a defendant. A patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings. Service on him may be effected by leaving the writ at his address for service given on the register. In settling the terms of a licence under this paragraph the controller shall be guided as far as may be by the same considerations as are specified in this Act for his guidance in settling licences under patents indorsed “licences of right”;

• (c) if the controller is satisfied that the invention is not being worked on a commercial scale within Saorstát Eireann, and is such that it cannot be so worked without the expenditure of capital for the raising of which it will be necessary to rely on the patent mono-poly, he may, unless the patentee or those claiming under him will undertake to find such capital, order the grant to the applicant, or any other person, or to the applicant and any other person or persons jointly, if able and willing to provide such capital, of an exclusive licence on such terms as the controller may think just, but subject as hereinafter provided;

• (d) if the controller is satisfied that the objects of this section cannot be attained by the exercise of any of the foregoing powers, he may order the patent to be revoked, either forthwith or after such reasonable interval as may be specified in the order, unless in the meantime such conditions as may be prescribed in the order with a view to attaining the objects of this section are fulfilled, and the controller may, on reasonable cause shown in any case, by subsequent order extend the interval so specified:

Provided that the controller shall make no order for revocation which is at variance with any treaty, convention, arrangement, or engagement with any foreign country or British dominion made by or binding on Saorstát Eireann;

• (e) if the controller is of opinion that the objects of this section will be best attained by making no order under the above provisions of this section, he may make an order refusing the application and dispose of any question as to costs thereon as he thinks just.

• (4) In settling the terms of any such exclusive licence as is provided in paragraph (c) of the last preceding sub-section, due regard shall be had to the risks undertaken by the licensee in providing the capital and working the invention, but, subject thereto, the licence shall be so framed as—

• (a) to secure to the patentee the maximum royalty compatible with the licensee working the invention within Saorstát Eireann on a commercial scale and at a reasonable profit;

• (b) to guarantee to the patentee a minimum yearly sum by way of royalty, if and so far as it is reasonable so to do, having regard to the capital requisite for the proper working of the invention and all the circumstances of the case;

and, in addition to any other powers expressed in the licence or order, the licence and the order granting the licence shall be made revocable at the discretion of the controller if the licensee fails to expend the amount specified in the licence as being the amount which he is able and willing to provide for the purpose of working the invention on a commercial scale within Saorstát Eireann, or if he fails so to work the invention within the time specified in the order.

• (5) In deciding to whom such an exclusive licence is to be granted the controller shall, unless good reason is shown to the contrary, prefer an existing licensee to a person having no registered interest in the patent.

• (6) The order granting an exclusive licence under this section shall operate to take away from the patentee any right which he may have as patentee to work or use the invention and to revoke all existing licences, unless otherwise provided in the order, but on granting an exclusive licence the controller may, if he thinks it fair and equitable, make it a condition that the licensee shall give proper compensation to be fixed by the controller for any money or labour expended by the patentee or any existing licensee in developing or exploiting the invention.

• (7) Every application presented to the controller under this section must set out fully the nature of the applicant's interest and the facts upon which the applicant bases his case and the relief which he seeks. The application must be accompanied by statutory declarations verifying the applicant's interest and the facts set out in the application.

• (8) The controller shall consider the matters alleged in the application and declarations, and, if satisfied that the applicant has a bonâ fide interest and that a primâ facie case for relief has been made out, he shall direct the applicant to serve copies of the application and declarations upon the patentee and upon any other persons appearing from the register to be interested in the patent, and shall advertise the application in the Journal.

• (9) If the patentee or any person is desirous of opposing the granting of any relief under this section, he shall, within such time as may be prescribed or within such extended time as the controller may on application further allow, deliver to the controller a counter statement verified by a statutory declaration fully setting out the grounds on which the application is to be opposed.

• (10) The controller shall consider the counter statement and declarations in support thereof and may thereupon dismiss the application if satisfied that the allegations in the application have been adequately answered, unless any of the parties demands a hearing or unless the controller himself appoints a hearing. In any case the controller may require the attendance before him of any of the declarants to be cross-examined or further examined upon matters relevant to the issues raised in the application and counter statement, and he may, subject to due precautions against disclosure of information to rivals in trade, require the production before him of books and documents relating to the matter in issue.

• (11) All orders of the controller under this section shall be subject to appeal to the court, and on any such appeal the law officer or such other counsel as he may appoint shall be entitled to appear and be heard.

• (12) In any case where the controller does not dismiss an application as hereinbefore provided, and—

• (a) if the parties interested consent; or

• (b) if the proceedings require any prolonged examination of documents or any scientific or local investigation which cannot in the opinion of the controller conveniently be made before him;

the controller may at any time order the whole proceedings or any question or issue of fact arising thereunder to be referred to an arbitrator agreed on by the parties, or in default of agreement appointed by the controller, and, where the whole proceedings are so referred, the award of such arbitrator shall, if all the parties consent, be final, but otherwise shall be subject to the same appeal as the decision of the controller under this section, and, where a question or issue of fact is so referred, the arbitrator shall report his findings to the controller.

• (13) For the purposes of this section, the expression “patented article” includes articles made by a patented process.

44 Operation of order for grant of licence.

44.—Any order for the grant of a licence under this Act shall, without prejudice to any other method of enforcement, operate as if it were embodied in a deed granting a licence executed by the patentee and all other necessary parties.

45 Register of patents.

45.—(1) There shall be kept at the Office a book called the register of patents, wherein shall be entered the names and addresses of grantees of patents granted under this Act, notifications of assignments and of transmissions of such patents, of licences under such patents, and of amendments, extensions, and revocations of such patents, and such other matters affecting the validity or proprietorship of such patents as may be prescribed.

• (2) The register of patents shall be prima facie evidence of all matters by this Act directed or authorised to be inserted therein.

• (3) Copies of deeds, licences, and any other documents affecting the proprietorship in any patent or in any licence thereunder, must be supplied to the controller in the prescribed manner for filing in the Office.

• (4) Certified copies of all entries in the British register relating to British patents which by virtue of this Act are deemed to be patents granted under this Act shall be furnished to the controller and shall be entered in the register of patents under this Act, but it shall not be obligatory to make such entries in the register until the first occasion on which certified copies of such entries in the British register are required by or under this Act to be furnished to the controller.

46 Inventor or patentee may assign benefit to Minister.

46.—(1) Any inventor or patentee may (either for or without valuable consideration) assign to a Minister on behalf of the State all the benefit of an invention and of any patent obtained or to be obtained for the invention.

• (2) In this section the word “Minister” means a Minister head of a Department of State established under the Ministers and Secretaries Act, 1924 (No. 16 of 1924).

47 Inventions relating to instruments or munitions of war.

47.—(1) The inventor of any improvement in instruments or munitions of war may (either for or without valuable consideration) assign to the Minister for Defence on behalf of the State all the benefit of the invention and of any patent obtained or to be obtained for the invention.

• (2) The assignment shall effectually vest the benefit of the invention and patent in the Minister for Defence on behalf of the State, and all covenants and agreements therein contained for keeping the invention secret and otherwise shall be valid and effectual (notwithstanding any want of valuable consideration), and may be enforced accordingly by the Minister for Defence.

• (3) Where any such assignment as aforesaid has been made, the Minister for Defence may at any time before the publication of the complete specification certify to the controller that, in the interest of the public service, the particulars of the invention and of the manner in which it is to be performed should be kept secret.

• (4) If the Minister for Defence so certifies the application and specifications, with the drawings (if any) and any amendment of the complete specification, and any copies of such documents and drawings shall, instead of being left in the ordinary manner at the Office, be delivered to the controller in a packet sealed by authority of the Minister for Defence.

• (5) The packet aforesaid shall, until the expiration of the term during which a patent for the invention may be in force, be kept sealed by the controller and shall not be opened save under the authority of an order of the Minister for Defence or of the law officer.

• (6) The sealed packet aforesaid shall be delivered at any time during the continuance of the patent to any person authorised by the Minister for Defence to receive it, and shall, if returned to the controller, be again kept sealed by him.

• (7) On the expiration of the term of the patent, the sealed packet shall be delivered to the Minister for Defence.

• (8) Where the Minister for Defence certifies as aforesaid after an application for a patent has been left at the Office, but before the publication of the complete specification, the application and specifications, with the drawings (if any), shall be forthwith placed in a packet sealed by authority of the controller, and the packet shall be subject to the foregoing provisions respecting a packet sealed by authority of the Minister for Defence.

• (9) No proceeding by petition or otherwise shall lie for revocation of a patent granted for an invention in relation to which such a certificate as aforesaid has been given by the Minister for Defence.

• (10) No copy of any specification or other document or drawings by this section required to be placed in a sealed packet, shall in any manner whatever be published or opened to the inspection of the public, but, save as in this section is otherwise directed, the provisions of this Act shall apply in respect of any such invention and patent as aforesaid.

• (11) The Minister for Defence may at any time waive the benefit of this section with respect to any particular invention, and thereupon the specifications, documents, and drawings relating to that invention shall thenceforth be kept and dealt with in the ordinary way.

• (12) The communication of any invention for any improvement in instruments or munitions of war to the Minister for Defence or to any person or persons authorised by the Minister for Defence to investigate the same or the merits thereof, shall not, nor shall anything done for the purposes of the investigation, be deemed use or publication of such invention so as to prejudice the grant or validity of any patent for the same.

• (13) Rules may be made under this Act by the Minister, after consultation with the Minister for Defence, for the purpose of ensuring secrecy with respect to patents to which this section applies, and those rules may modify any of the provisions of this Act in their application to such patents as aforesaid so far as may appear necessary for the purpose aforesaid.

48 Hearing with assessor.

48.—(1) In an action or proceeding for infringement or revocation of a patent, the court may, if it thinks fit, and shall, on the request of all parties to the proceedings, call in the aid of an assessor specially qualified, and try the case wholly or partially with his assistance, in which event the action shall be tried without a jury unless the court otherwise directs.

• (2) The Supreme Court may, if it thinks fit, in any proceeding before them call in the aid of an assessor as aforesaid.

• (3) The remuneration, if any, to be paid to an assessor under this section shall be determined by the court or the Supreme Court, as the case may be, and be paid as part of the expenses of the execution of this Act.

49 Counterclaim for revocation of patent.

49.—A defendant in an action for infringement of a patent, if entitled to present a petition to the court for the revocation of the patent, may, without presenting such a petition, apply in accordance with the rules of the court by way of counterclaim in the action for the revocation of the patent.

50 Power of court to grant relief in respect of particular claims.

50.—(1) Notwithstanding anything to the contrary appearing in section 39 (which relates to restriction on damages where specification amended) of this Act, if the court in any action for infringement of a patent finds that any one or more of the claims in the specification in respect of which infringement is alleged are valid, it shall, subject to its discretion as to costs and as to the date from which damages should be reckoned and subject to such terms as to amendment as it may deem desirable, grant relief in respect of any such claims which are infringed without regard to the invalidity of any other claim in the specification.

• (2) In exercising the discretion mentioned in the foregoing sub-section, the court may take into consideration the conduct of the parties in inserting the invalid claims in the specification or permitting such claims to remain therein.

51 Exemption of innocent infringer from liability for damages.

51.—A patentee shall not be entitled to recover any damages in respect of any infringement of a patent from any defendant who proves that at the date of the infringement he was not aware, nor had reasonable means of making himself aware, of the existence of the patent, and the marking of an article with the word “patent,” “patented,” or any word or words expressing or implying that a patent has been obtained for the article, stamped, engraved, impressed on, or otherwise applied to the article, shall not be deemed to constitute notice of the existence of the patent unless the word or words are accompanied by the year and number of the patent:

Provided that nothing in this section shall affect any proceedings for an injunction.

52 Order for injunction or inspection.

52.—In an action for infringement of a patent, the plaintiff shall be entitled to relief by way of injunction and damages but not to an account of profits, but subject as aforesaid the court may on the application of either party make such order for an injunction or inspection, and impose such terms and give such directions respecting the same and the proceedings thereon as the court may see fit.

53 Grant of patent to two or more persons.

53.—Where a patent is granted to two or more persons jointly, they shall, unless otherwise specified in the patent, be treated for the purpose of the devolution of the legal interests therein as joint tenants, but, subject to any contract to the contrary, each of such persons shall be entitled to use the invention for his own profit without accounting to the others, but shall not be entitled to grant a licence without their consent, and, if any such person dies, his beneficial interest in the patent shall devolve on his personal representatives as part of his personal estate.

54 Avoidance of certain conditions attached to the sale, etc., of patented articles.

54.—(1) It shall not be lawful in any contract in relation to the sale or lease of, or licence to use or work, any article or process protected by a patent to insert a condition the effect of which will be—

• (a) to prohibit or restrict the purchaser, lessee, or licensee from using any article or class of articles, whether patented or not, or any patented process, supplied or owned by any person other than the seller, lessor, or licensor or his nominees; or

• (b) to require the purchaser, lessee, or licensee to acquire from the seller, lessor, licensor, or his nominees, any article or class of articles not protected by the patent;

and any such condition shall be null and void, as being in restraint of trade and contrary to public policy:

Provided that this subsection shall not apply if—

• (i) the seller, lessor, or licensor proves that at the time the contract was entered into the purchaser, lessee, or licensee had the option of purchasing the article or obtaining a lease or licence on reasonable terms, without such conditions as aforesaid; and

• (ii) the contract entitles the purchaser, lessee, or licensee to relieve himself of his liability to observe any such condition on giving the other party three months notice in writing and on payment in compensation for such relief in the case of a purchase of such sum, or in the case of a lease or licence of such rent or royalty for the residue of the term of the contract, as may be fixed by an arbitrator appointed by the Minister.

• (2) In any action, application, or proceedings under this Act no person shall be estopped from applying for or obtaining relief by reason of any admission made by him as to the reasonableness of the terms offered to him under paragraph (i) of the provision to sub-section (1) of this section.

• (3) Any contract relating to the lease of or licence to use or work any patented article or patented process may at any time after the patent or all the patents by which the article or process was protected at the time of the making of the contract has or have ceased to be in force, and notwithstanding anything in the same or in any other contract to the contrary, be determined by either party on giving three months notice in writing to the other party.

• (4) The insertion by the patentee in a contract of any condition which by virtue of this section is null and void shall be available as a defence to an action for infringement of the patent to which the contract relates brought while that contract is in force.

• (5) Nothing in this section shall—

• (a) affect any condition in a contract whereby a person is prohibited from selling any goods other than those of a particular person; or

• (b) be construed as validating any contract which would, apart from this section, be invalid; or

• (c) affect any right of determining a contract or condition in a contract exerciseable independently of this section; or

• (d) affect any condition in a contract for the lease of or licence to use a patented article, whereby the lessor or licensor reserves to himself or his nominees the right to supply such new parts of the patented article as may be required to put or keep it in repair.

55 Chemical products and substances intended for food or medicine.

55.—(1) In the case of inventions relating to substances prepared or produced by chemical processes or intended for food or medicine, the specification shall not include claims for the substance itself, except when prepared or produced by the methods or processes of manufacture described and claimed or by their obvious chemical equivalents: Provided that, in an action for infringement of a patent where the invention relates to the production of a new substance, any substance of the same chemical composition and constitution shall in the absence of proof to the contrary be deemed to have been produced by the patented process.

• (2) In the case of any patent for an invention intended for or capable of being used for the preparation or production of food or medicine, the controller shall, unless he sees good reason to the contrary, grant to any person applying for the same, a licence limited to the use of the invention for the purposes of the preparation or production of food or medicine but not otherwise; and, in settling the terms of such licence and fixing the amount of royalty or other consideration payable, the controller shall have regard to the desirability of making the food or medicine available to the public at the lowest possible price consistent with giving to the inventor due reward for the research leading to the invention.

Any decision of the controller under this sub-section shall be subject to appeal to the court.

56 Acts which do not amount to anticipation.

56.—(1) An invention covered by a patent granted or registered in Saorstát Eireann shall not be deemed to have been anticipated by reason of its publication in—

• (a) a specification left in the Patent Office in London pursuant to an application made in that Office not less than fifty years before the date of the application for the patent, or

• (b) a provisional specification left in the Patent Office in London before the commencement of this Part of this Act and not followed by a complete specification, or

• (c) a provisional specification left in the Office and not followed by a complete specification.

• (2) A patent shall not be held to be invalid by reason only of the invention in respect of which the patent was granted, or any part thereof, having been published prior to the date of the patent, if the patentee proves to the satisfaction of the court that the matter published was derived or obtained from him, and that the publication was made without his knowledge or consent, and, if he learnt of the publication before the date of his application for the patent, that he applied for and obtained protection for his invention with all reasonable diligence after learning of the publication:

Provided that the protection afforded by this sub-section shall not extend to a patentee who has commercially worked his invention in Saorstát Eireann otherwise than for the purpose of reasonable trial of the invention prior to the application for the patent.

57 Discrepancies between provisional and complete specifications.

57.—A patent shall not be held to be invalid on the ground that the complete specification describes a further or different invention to that contained in the provisional specification if the invention therein described, so far as it is not contained in the provisional specification, was novel at the date when the complete specification was put in, and the applicant was the first and true inventor thereof.

58 Rights of representative of deceased inventor.

58.—(1) If the person claiming to be inventor of an invention dies without making an application for a patent for the invention, application may be made by, and a patent for the invention granted to, his legal representative.

• (2) Every such application must contain a declaration by the legal representative that he believes the deceased person to have been the true and first inventor of the invention.

59 Loss or destruction of patent.

59.—If a patent is lost or destroyed, or its non-production is accounted for to the satisfaction of the controller, the controller may at any time seal a duplicate thereof.

60 Publication of invention at certain exhibitions.

60.—(1) The exhibition of an invention at an industrial or international exhibition, certified as such by the Minister, or the publication of any description of the invention during the period of the holding of the exhibition, or the use of the invention for the purpose of the exhibition in the place where the exhibition is held, or the use of the invention during the period of the holding of the exhibition by any person elsewhere, without the privity or consent of the inventor, or the reading of a paper by an inventor before a learned society or the publication of the paper in the society's transactions, shall not prejudice the right of the inventor to apply for and obtain a patent in respect of the invention or the validity of any patent granted on the application: Provided that—

• (a) the exhibitor, before exhibiting the invention, or the person reading such paper or permitting such publication, gives the controller the prescribed notice of his intention to do so; and

• (b) the application for a patent is made before or within six months from the date of the opening of the exhibition, or the reading or publication of such paper.

• (2) The Executive Council may by Order apply this section to any exhibition mentioned in the Order in like manner as if it were an industrial or international exhibition certified as such by the Minister and any such Order may provide that the exhibitor shall be relieved from the condition of giving notice to the controller of his intention to exhibit, and shall be so relieved either absolutely or upon such terms and conditions as may be stated in the Order.

61 Use of invention on foreign vessel in home waters.

61.—(1) A patent shall not prevent the use of an invention for the purposes of the navigation of a foreign vessel within the area of jurisdiction of the Government of Saorstát Eireann, or the use of an invention in a foreign vessel within that area, provided it is not used therein for or in connection with the manufacture or preparation of anything intended to be sold in or exported from Saorstát Eireann.

• (2) This section shall not extend to vessels of any foreign state of which the laws do not confer corresponding rights with respect to the use of inventions in vessels of Saorstát Eireann while in the ports of that state, or in the waters within the jurisdiction of its courts.

• (3) For the purposes of this section the expression “foreign vessel” includes a ship registered in a British dominion and the expression “foreign state” includes a British dominion.

62 Patent agents to be registered.

62.—(1) There shall be kept at the Office a book called the register of patent agents, and no person shall practice, describe himself, or hold himself out, or permit himself to be described or held out, as a patent agent, unless—

• (a) in the case of an individual, he is registered as a patent agent in the register of patent agents;

• (b) in the case of a firm, the firm and every partner of the firm is so registered;

• (c) in the case of a company, the company and every director and the manager (if any) of the company is so registered.

• (2) If and when the Minister so directs there shall be kept at the Office a book called the register of clerks in which shall be entered the names of approved clerks of registered patent agents.

• (3) If at any time after the expiration of three months from the commencement of this Act, any person contravenes the provisions of this section, he 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 company every director, manager, secretary, or other officer of the company who is knowingly a party to the contravention shall be guilty of a like offence and liable to a like fine.

• (4) For the purposes of this section, the expression “patent agent” means a person, firm, or company carrying on for gain in Saorstát Eireann the business of applying for or obtaining patents in Saorstát Eireann or elsewhere.

• (5) Nothing in this section shall be taken to prohibit solicitors from taking such part as they have heretofore taken in proceedings analogous to any proceedings under this Act.

• (6) No alien shall be registered as a patent agent.

63 Management of register of patent agents.

63.—(1) Any person who—

• (a) resides or has a place of business in Saorstát Eireann, and

• (b) is not an alien, and

• (c) possesses the prescribed educational and professional qualifications, and

• (d) complies with the prescribed conditions,

shall be eligible to be registered in the register of patent agents and shall on application in the prescribed form and manner and payment of the prescribed fee be so registered.

• (2) Any person registered in the register of patent agents who

• (a) ceases to be eligible to be so registered, or

• (b) is proved to the satisfaction of the Minister to have been convicted of such an offence or to have been guilty of such misconduct as renders him unfit in the opinion of the Minister to be a patent agent, or

• (c) applies to be removed from the register,

may be removed by the Minister from the register of patent agents, but no person shall be so removed (except on his own application) without being given an opportunity of being heard.

• (3) The Minister may by order make rules for the management of the register of patent 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 that register, and the maximum fees which may be charged by any person registered in the register of patent agents or by any solicitor for such services in connection with the application for or the obtaining of patents as may be specified in such rules.

• (4) If a register of clerks is established under this Act the Minister may by order make rules for the management of such register and may by such rules prescribe the qualifications and conditions for eligibility for and the fees to be paid on registration in such register.

• (5) In this section the word “prescribed” means prescribed by rules made under this section.

PART III.—DESIGNS.

64 Registration of designs generally.

64.—(1) The controller may (subject to the provisions of this section) on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not published in the late United Kingdom before the establishment of Saorstát Eireann and not previously published in Saorstát Eireann register such design under this Act.

• (2) Where copyright subsists under Parts VI. and VII. of this Act in the artistic work defining a design, such design shall not be registered under this Part of this Act without the consent of the owner of such copyright.

• (3) The same design may be registered in more than one class, and, in case of doubt as to the class in which a design ought to be registered, the controller may decide the question.

• (4) The controller may, if he thinks fit, refuse to register any design presented to him for registration, but any person aggrieved by any such refusal may (except where an appeal lies under this Act to the law officer) appeal to the court, and the court shall, after hearing the applicant and, if so required the controller make an order determining whether, and subject to what conditions, if any, registration is to be permitted.

• (5) An application which, owing to any default or neglect on the part of the applicant, has not been completed so as to enable registration to be effected within the prescribed time shall be deemed to be abandoned.

• (6) A design when registered shall be registered as of the date of the application for registration.

65 Registration of designs in certain cases.

65.—(1) Any person or the legal representative or assignee of any person who applied after the 6th day of December, 1921, and before the commencement of this Part of this Act to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann for the registration of a design shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for the registration of the same design and shall be entitled to have such application under this Act dated and treated as having been made as of the date of the first-mentioned application for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date as of which the design is to be registered, and determining whether the design had been previously published in Saorstát Eireann.

• (2) Any person or the legal representative or assignee of any person who has obtained between the 6th day of December, 1921, and the commencement of this Part of this Act protection for a design in any British dominion (other than Great Britain and Northern Ireland) or foreign state to which the provisions of section 152 (which relates to international arrangements) of this Act are applied or declared to be applicable by order made under that section shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for the registration of the same design and shall be entitled to have the said application under this Act dated and treated as having been made as of the date of the application for protection of the said design in such British dominion or foreign state for the purposes of determining the respective priorities of the said application under this Act and any other application, fixing the date as of which the design is to be registered, and determining whether the design had been previously published in Saorstát Eireann.

• (3) Any person who applies under the provisions of this section for the registration of a design may at any time before the completion of such registration (hereinafter called the first-mentioned registration) apply to the controller for the cancellation of any registration (hereinafter called the second-mentioned registration) of the same design made under section 66 (which relates to the registration of designs registered in the Patent Office in London) of this Act and dated as of a date between the 6th day of December, 1921, and the commencement of this Part of this Act on the ground that the date of the application for the second-mentioned registration was subsequent to the date of an application made by the applicant for the first-mentioned registration to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann or in any such British dominion or foreign state as is mentioned in the foregoing sub-section for registration of the same design, and the controller may on such application for cancellation cancel the second-mentioned registration on the ground aforesaid but on no other ground.

• (4) An appeal shall lie to the law officer from every decision of the controller on an application for cancellation under the foregoing sub-section.

66 Registration of designs registered in Patent Office in London.

66.—(1) The person who is for the time being registered in the Patent Office in London as the proprietor of a design which is registered in that Office at the commencement of this Part of this Act shall, on payment of the prescribed fee and furnishing to the controller for registration certified copies of such design and of the entries in the British register relating thereto, be entitled at any time within six months after the commencement of this Part of this Act to have such design registered under this Act in the register of designs in the Office in the same classes and subject to the same notices and other matters as such design is registered in and subject to in the Patent Office in London at the date of the application for registration under this Act.

• (2) For all purposes under this Act a design registered pursuant to this section shall be deemed to have been first registered under this Act on the date on which such design was first registered in the Patent Office in London notwithstanding that such date is prior to the passing of this Act or to the commencement of this Part of this Act and (whenever appropriate) the period of the copyright in such design shall be deemed to have been extended under this Act on the date or respective dates and for the time or respective times on and for which such period was extended in the Patent Office in London before the registration of such design pursuant to this section whether such date or dates was or respectively were prior or subsequent to the passing of this Act or the commencement of this Part of this Act.

67 Registration of designs in new classes.

67.—Where a design has been registered in one or more classes of goods the application of the proprietor of the design to register it in some one or more other classes shall not be refused, nor shall the registration thereof be invalidated—

• (a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or

• (b) on the ground of the design having been previously published in Saorstát Eireann, by reason only that it has been applied to goods of any class in which it was so previously registered:

Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from the previous registration.

68 Certificate of registration.

68.—(1) The controller shall grant a certificate of registration to the proprietor of the design when registered.

• (2) The controller may, in case of loss of the original certificate, or in any other case in which he deems it expedient, furnish one or more copies of the certificate.

69 Register of designs.

69.—(1) There shall be kept at the Office a book called the register of designs, wherein shall be entered the names and addresses of proprietors of registered designs, notifications of assignments and of transmissions of registered designs, and such other matters as may be prescribed.

• (2) The register of designs shall be primâ facie evidence of all matters by this Act directed or authorised to be entered therein.

70 Copyright in registered designs.

70.—(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, and subject and without prejudice to the copyright conferred by Part VII. of this Act in respect of certain artistic works defining designs, have copyright in the design during five years from the date of registration.

• (2) If within the prescribed time before the expiration of the said five years application for the extension of the period of copyright is made to the controller in the prescribed manner, the controller shall on payment of the prescribed fee extend the period of copyright for a second period of five years from the expiration of the original period of five years.

• (3) If within the prescribed time before the expiration of such second period of five years application for the extension of the period of copyright is made to the controller in the prescribed manner, the controller may, subject to any rules under this Act, on payment of the prescribed fee extend the period of copyright for a third period of five years from the expiration of the second period of five years.

71 Requirements before delivery on sale.

71.—(1) Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall—

• (a) (if exact representations or specimens were not furnished on the application for registration), furnish to the controller the prescribed number of exact representations or specimens of the design; and if he fails to do so the controller may erase his name from the register, and thereupon the copyright in the design shall cease; and

• (b) cause each such article to be marked with the prescribed mark, or with the prescribed words or figures denoting that the design is registered; and if he fails to do so the proprietor shall not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design unless he shows that he took all proper steps to ensure the marking of the article, or unless he shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.

• (2) Where a representation is made to the Minister by or on behalf of any trade or industry that in the interests of the trade or industry it is expedient to dispense with or modify as regards any class or description of articles any of the requirements of this section as to marking, the Minister may if he thinks fit, by general rules made under this Act dispense with or modify such requirements as regards any such class or description of articles to such extent and subject to such conditions as he thinks fit.

72 No publication by confidential disclosure of design.

72.—The disclosure of a design by the proprietor to any other person, in such circumstances as would make it contrary to good faith for that other person to use or publish the design, and the disclosure of a design in breach of good faith by any person other than the proprietor of the design, and the acceptance of a first and confidential order for goods bearing a new or original textile design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance.

73 Inspection of registered designs.

73.—(1) During the existence of copyright in a design, or such shorter period not being less than two years from the registration of the design as may be prescribed, the design shall not be open to inspection except by the proprietor or a person authorised in writing by him, or a person authorised by the controller or by the court, and furnishing such information as may enable the controller to identify the design, and shall not be open to the inspection of any person except in the presence of the controller, or of an officer acting under him, and on payment of the prescribed fee; and the person making the inspection shall not be entitled to take any copy of the design, or of any part thereof:

Provided that where registration of a design is refused on the ground of identity with a design already registered, the applicant for registration shall be entitled to inspect the design so registered.

• (2) After the expiration of the copyright in a design or such shorter period as aforesaid, the design shall be open to inspection, and copies thereof may be taken by any person on payment of the prescribed fee.

• (3) Different periods may be prescribed under this section for different classes of goods.

74 Information as to existence of registration.

74.—On the request of any person furnishing such information as may enable the controller to identify the design, and on payment of the prescribed fee, the controller shall inform such person whether the registration still exists in respect of the design, and if so, in respect of what classes of goods, and shall state the date of registration, and the name and address of the registered proprietor.

75 Cancellation of registration of design.

75.—(1) At any time after the registration of a design any person interested may apply to the controller for the cancellation of the registration of the design, on either of the following grounds:—

• (a) that the design was prior to the date of registration thereof published either in the late United Kingdom before the establishment of Saorstát Eireann or in Saorstát Eireann;

• (b) that the design is applied by manufacture to any article in a foreign country, and is not so applied by manufacture in Saorstát Eireann to such an extent as is reasonable in the circumstances of the case:

Provided that, if the application be on the last-mentioned ground, and the controller is satisfied that the time which has elapsed from the date of registration has been insufficient for such application by manufacture in Saorstát Eireann, the controller may adjourn the application for such time as he may deem sufficient for that purpose; and that in lieu of cancellation the controller may order the grant of a compulsory licence on such terms as he may consider just.

• (2) An appeal shall lie from any order of the controller under this section to the court, and the controller may at any time refer any such application to the court for trial.

76 Publication of designs at certain exhibitions.

76.—(1) The exhibition at an industrial or international exhibition certified as such by the Minister, or the exhibition elsewhere during the period of the holding of the exhibition, without the privity or consent of the proprietor, of a design, or of any article to which a design is applied, or the publication, during the holding of any such exhibition, of a description of a design, shall not prevent the design from being registered, or invalidate the registration thereof: Provided that—

• (a) the exhibitor, before exhibiting the design or article, or publishing a description of the design, gives the controller the prescribed notice of his intention to do so; and

• (b) the application for registration is made before or within six months from the date of the opening of the exhibition.

• (2) The Executive Council may, by Order, apply this section to any exhibition mentioned in the Order in like manner as if it were an industrial or international exhibition certified as such by the Minister, and any such Order may provide that the exhibitor shall be relieved from the condition of giving notice to the controller of his intention to exhibit, and shall be so relieved either absolutely or upon such terms and conditions as may be stated in the Order.

77 Ministers may acquire designs.

77.—(1) It shall be lawful for any Minister to acquire by purchase or otherwise from the proprietor of a design (whether registered in Saorstát Eireann or elsewhere or unregistered) and it shall be lawful for such proprietor to sell or otherwise alienate to such Minister, such design or any right, liberty, or privilege in relation thereto upon such terms as may be agreed upon between the Minister and the proprietor and be sanctioned by the Minister for Finance.

• (2) Any Minister may procure the registration (subject to the provisions of this Act) of any design acquired by or vested in him under this section or otherwise in the appropriate register established under this Act, and may procure the registration of any such design in any register maintained in any place outside Saorstát Eireann 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 as the proprietor of any design so registered.

• (3) It shall be lawful for a Minister to grant to any person a licence to use and apply to any goods any design of which such Minister shall be the registered proprietor and to charge such fees as shall be sanctioned by the Minister for Finance for such licences.

• (4) Every licence granted by a Minister under the foregoing sub-section may contain provisions ensuring that the design to which such licence relates shall be applied by the licensee only to goods grown, manufactured, or produced in Saorstát Eireann, and any such licence may also contain such provisions, conditions, and restrictions as the Minister may think proper for ensuring that the design to which such licence relates shall only be applied by the licensee to goods of a specified quality or description.

• (5) A Minister may at any time take such lawful steps, whether by action, or prosecution at law or otherwise, as he shall think proper to restrain or punish infringements of or otherwise to protect the copyright in any design of which he shall be the registered proprietor under this section, and may take such steps in Saorstát Eireann or in any other country or place in which he shall be so registered.

• (6) In this section the word “Minister” means a Minister head of a Department of State established under the Ministers and Secretaries Act, 1924 (No. 16 of 1924).

78 Prohibition of infringement of copyright in design.

78.—(1) During the existence of copyright in any design it shall not be lawful for any person—

• (a) for the purposes of sale to apply or cause to be applied to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

• (b) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article without the consent of the registered proprietor to publish or expose or cause to be published or exposed for sale that article.

• (2) If any person acts in contravention of this section he shall be liable for every contravention to pay to the registered proprietor of the design a sum not exceeding fifty pounds, recoverable as a simple contract debt, or if the proprietor elects to bring an action for the recovery of damages for such contravention, and for an injunction against the repetition thereof, he shall be liable to pay such damages as may be awarded and to be restrained by injunction accordingly:

Provided that the total sum recoverable as a simple contract debt in respect of any one design shall not exceed one hundred pounds.

79 Applications abandoned or refused.

79.—Where an application for a design has been abandoned or refused, the application and any drawings, photographs, tracings, representations, or specimens left in connection with the application shall not at any time be open to public inspection or be published by the controller.

PART IV.—TRADE MARKS.

80 Register of trade marks.

80.—(1) There shall be kept at the Office a book called the register of trade marks, wherein shall be entered all registered trade marks with the names and addresses of their proprietors, notification of assignments and transmissions, disclaimers, conditions, limitations, and such other matters relating to such trade marks as may from time to time be prescribed.

• (2) The register of trade marks shall be kept under the control and management of the controller.

• (3) The register of trade marks shall be divided into two parts to be called Part A and Part B, which parts shall respectively comprise the trade marks directed by this Act to be registered therein respectively.

81 Trade mark must be for particular goods.

81.—A trade mark must be registered in respect of particular goods or classes of goods.

82 Requisites for registration in Part A.

82.—(1) In order to be capable of registration in Part A of the register, a trade mark must contain or consist of at least one of the following essential particulars:—

• (a) the name of a company, individual, or firm represented in a special or particular manner;

• (b) the signature of the applicant for registration or some 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 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 the above paragraphs (a), (b), (c) and (d), shall not be registrable under the provisions of this paragraph, except upon evidence of its distinctiveness.

• (2) Notwithstanding the provisions of the foregoing sub-section, any special or distinctive word or words, letter, numeral, or combination of letters or numerals used as a trade mark by the applicant or his predecessors in business before the thirteenth day of August one thousand eight hundred and seventy-five, which has continued to be used (either in its original form or with additions or alterations not substantially affecting the identity of the same) down to the date of the application for registration shall be registrable as a trade mark under this Act.

• (3) For the purposes of this section “distinctive” shall mean adapted to distinguish the goods of the proprietor of the trade mark from those of other persons, and in determining whether a trade mark is so adapted, the tribunal may, in the case of a trade mark in actual use, take into consideration the extent to which such user has rendered such trade mark in fact distinctive for the goods with respect to which it is registered or proposed to be registered.

83 Colour of trade marks.

83.—A trade mark may be limited in whole or in part to one or more specified colours, and in such case the fact that it is so limited shall be taken into consideration by any tribunal having to decide on the distinctive character of such trade mark. If and so far as a trade mark is registered without limitation of colour it shall be deemed to be registered for all colours.

84 Deceptive or misleading trade marks.

84.—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 calculated to deceive or otherwise be disentitled to protection in a court of justice.

85 Application for registration in Part A.

85.—(1) Any person claiming to be the proprietor of a trade mark who is desirous of registering the same in Part A of the register must apply in writing to the controller in the prescribed manner.

• (2) Subject to the provisions of this Act the controller may refuse such application, or may accept it absolutely or subject to conditions, amendments, or modifications, or to such limitations, if any, as to mode or place of user or otherwise as he may think right to impose.

• (3) In case of any such refusal or conditional acceptance the controller shall, if required by the applicant, state in writing the grounds of his decision and the materials used by him in arriving at the same, and such decision shall be subject to appeal to the Minister or to the court at the option of the applicant.

• (4) An appeal under this section shall be made in the prescribed manner, and on such appeal the Minister or the court, as the case may be, shall, if required, hear the applicant and the controller, and shall make an order determining whether, and subject to what conditions, amendments, or modifications, if any, or to what limitations, if any, as to mode or place of user or otherwise, the application is to be accepted.

• (5) Appeals under this section shall be heard on the materials so stated by the controller to have been used by him in arriving at his decision, and no further grounds of objection to the acceptance of the application shall be allowed to be taken by the controller other than those stated by him, except by leave of the tribunal hearing the appeal. When any further grounds of objection are taken the applicant shall be entitled to withdraw his application without payment of costs on giving notice as prescribed.

• (6) The controller or the Minister or the court, as the case may be, may at any time, whether before or after acceptance, correct any error in or in connexion with the application, or may permit the applicant to amend his application upon such terms as they may think fit.

86 Application for registration in Part B.

86.—(1) Where any mark has for not less than two years been bonâ fide used in Saorstát Eireann upon or in connection with any goods (whether for sale in Saorstát Eireann or exportation abroad), for the purpose of indicating that they are the goods of the proprietor of the mark by virtue of manufacture, selection, certification, dealing with or offering for sale, the person claiming to be the proprietor of the mark may apply in writing to the controller in the prescribed manner to have the mark entered as his registered trade mark in Part B of the register in respect of such goods.

• (2) The controller shall consider every such application for registration of a trade mark in Part B of the register, and if it appears to him, after such search, if any, as he may deem necessary, that the registration of the trade mark is prohibited by this Act or if he is not satisfied that the mark has been so used as aforesaid, or that it is capable of distinguishing the goods of the applicant, he may refuse the application, or may accept it subject to conditions, amendments or modifications as to the goods or classes of goods in respect of which the mark is to be registered, or to such limitations, if any, as to mode or place of user or otherwise as he may think right to impose, and in any other case he shall accept the application, but every acceptance of any such application shall be subject to the provisions of this Act.

• (3) Every such application shall be accompanied by a statutory declaration verifying the user, including the date of first user, and such date shall be entered on the register.

• (4) Any such refusal or conditional acceptance shall be subject to appeal to the court, and, if the ground for refusal is insufficiency of evidence as to user, such refusal shall be without prejudice to any application for registration of the trade mark in Part A of the register.

• (5) A mark may be registered in Part B of the register notwithstanding any registration in Part A of the register by the same proprietor of the same mark or any part or parts thereof.

87 Translation of application from Part A to Part B.

87.—If any person applies for the registration of a trade mark in Part A 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 of the register, and deal with the application accordingly.

88 Registration of trade marks in certain cases.

88.—(1) Any person or the legal representative or assignee of any person who applied after the 6th day of December, 1921, and before the commencement of this Part of this Act to the Minister for Economic Affairs of the late Provisional Government of Ireland or to the Minister for Industry and Commerce of Saorstát Eireann for the registration of a trade mark shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for the registration of the same trade mark and shall be entitled to have such application under this Act dated and treated as having been made as of the date of the first-mentioned application for all purposes including the date as of which the trade mark is to be registered.

• (2) Any person or the legal representative or assignee of any person who has obtained between the 6th day of December, 1921, and the commencement of this Part of this Act protection for a trade mark in any British dominion (other than Great Britain and Northern Ireland) or foreign state to which the provisions of section 152 (which relates to international arrangements) of this Act are applied or declared to be applicable by order made under that section shall be entitled to apply under this Act within one year after the commencement of this Part of this Act for the registration of the same trade mark and shall be entitled to have the said application under this Act dated and treated as having been made as of the date of the application for protection of the said trade mark in such British dominion or foreign state for all purposes including the date as of which the trade mark is to be registered.

• (3) Any person who applies under the provisions of this section for the registration of a trade mark (hereinafter called the first mentioned trade mark) may at any time before the completion of such registration apply to the controller for the removal from the register of any trade mark (hereinafter called the second mentioned trade mark) registered under section 89 (which relates to the registration of trade marks registered in the Patent Office in London) of this Act as of any date between the 6th day of December, 1921, and the commencement of this Part of this Act but subsequent to the date as of which the first-mentioned trade mark might be registered and on such application the controller may remove the second-mentioned trade mark from the register on any ground on which the registration of such second-mentioned trade mark could have been successfully opposed by the applicant for such removal but on no other ground.

• (4) An appeal shall lie to the law officer from every decision of the controller on an application for removal under the foregoing sub-section.

89 Registration of trade marks registered in Patent Office in London.

89.—(1) The person who is for the time being registered in the Patent Office in London as the proprietor of a trade mark which is registered in that office at the commencement of this Part of this Act (including a mark registered under section 62 of the Trade Marks Act, 1905) shall, on payment of the prescribed fee and furnishing to the controller for registration certified copies of such trade mark and of the entries in the British register relating thereto, be entitled at any time within six months after the commencement of this Part of this Act to have such trade mark registered under this Act in the register of trade marks in the Office in the like part of the register and in respect of the like goods or classes of goods and subject to the same notifications and other matters as such trade mark is registered in and subject to in the Patent Office in London at the date of the application for registration under this Act and also subject to any further limitations imposed by this Act and applicable to such trade mark.

• (2) For all purposes under this Act a trade mark registered pursuant to this section shall be deemed to have been first registered under this Act on the date on which such trade mark was first registered in the Patent Office in London notwithstanding that such date is prior to the passing of this Act or to the commencement of this Part of this Act and (whenever appropriate) the registration of such trade mark shall be deemed to have been renewed under this Act on the date or respective dates and for the period or respective periods on and for which the registration of such trade mark in the Patent Office in London was renewed in that Office before the registration of such trade mark pursuant to this section whether such date or dates was or respectively were prior or subsequent to the passing of this Act or to the commencement of this Part of this Act.

90 Advertisement of application.

90.—(1) When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions and limitations, the controller shall, as soon as may be after such acceptance, cause the application as accepted to be advertised in the prescribed manner, and every such advertisement shall set forth all conditions and limitations subject to which the application has been accepted.

• (2) In any case in which he deems it is expedient so to do the controller may cause an application for registration of a trade mark to be advertised before acceptance thereof, and whenever an application is so advertised it shall not be necessary to make the advertisement required by sub-section (1) of this section.

• (3) This section shall not apply to an application for registration of a trade mark which is registered in the Patent Office in London and was first so registered at the commencement of this Part of this Act.

91 Opposition to registration.

91.—(1) Any person may, within the prescribed time from the date of the advertisement of an application for registration of a trade mark, give notice to the controller of opposition to such registration.

• (2) Such notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.

• (3) The controller shall send a copy of such notice to the applicant, and within the prescribed time after the receipt of such notice, 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 abandoned his application.

• (4) If the applicant sends such counter-statement, 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 subject to what conditions or what limitations as to mode or place of user or otherwise, registration is to be permitted.

• (5) The decision of the controller shall be subject to appeal to the court.

• (6) An appeal under this section shall be made in the prescribed manner, and on such appeal the court shall, if required, hear the parties and the controller, and shall make an order determining whether, and subject to what conditions, if any, or what limitations, if any, as to mode or place of user or otherwise, registration is to be permitted.

• (7) On the hearing of any such appeal any party may either in the manner prescribed or by special leave of the court bring forward further material for the consideration of the court.

• (8) In proceedings under this section no further grounds of objection to the registration of a trade mark shall be allowed to be taken by the opponent or the controller other than those stated by the opponent as herein-above provided except by leave of the court. Where any further grounds of objection are taken the applicant shall be entitled to withdraw his application without payment of the costs of the opponent on giving notice as prescribed.