INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927

• (9) In any appeal under this section in relation to registration in Part A of the register, the court may, after hearing the controller, permit the trade mark proposed to be registered to be modified in any manner not substantially affecting the identity of such trade mark, but in such case the trade mark as so modified shall be advertised in the prescribed manner before being registered.

92 Disclaimer of non-distinctive elements.

92.—If a trade mark in respect of which an application is made to enter or which has been entered in Part A of the register contains parts not separately registered by the proprietor as trade marks, or if it contains matter common to the trade or otherwise of a non-distinctive character, the controller or the Minister or the court, in deciding whether such trade mark shall be entered or shall remain upon that Part of the register, may require, as a condition of its being upon that Part of the register, that the proprietor shall disclaim any right to the exclusive use of any part or parts of such trade mark, or of all or any portion of such matter, to the exclusive use of which they hold him not to be entitled, or that he shall make such other disclaimer as they may consider needful for the purpose of defining his rights under such registration: Provided always that no disclaimer upon the register shall affect any rights of the proprietor of a trade mark except such as arise out of the registration of the trade mark in respect of which the disclaimer is made.

93 Date of registration.

93.—When an application for registration of a trade mark has been accepted and has not been opposed, and the time for notice of opposition has expired, or having been opposed the opposition has been decided in favour of the applicant, the controller shall, unless the mark has been accepted in error or the Minister otherwise directs, register the said trade mark, and the trade mark, when registered, shall be registered as of the date of the application for registration, and such date shall be deemed for the purpose of this Act to be the date of registration.

94 Certificate of registration.

94.—On the registration of a trade mark the controller shall issue to the applicant a certificate in the prescribed form of the registration of such trade mark under the hand and sealed with the seal of the controller.

95 Delay in completion of registration.

95.—Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the controller may, 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 such notice.

96 Identical trade marks.

96.—Except by order of the court or in the case of trade marks in use before the thirteenth day of August one thousand eight hundred and seventy-five, no trade mark shall be registered in respect of any goods or description of goods which is identical with one belonging to a different proprietor which is already on the register with respect to such goods or description of goods, or so nearly resembling such a trade mark as to be calculated to deceive.

97 Rival claims to identical marks.

97.—Where each of several persons claims to be proprietor of the same trade mark, or of nearly identical trade marks in respect of the same goods or description of goods, and to be registered as such proprietor, the controller may refuse to register any of them until their rights have been determined by the court, or have been settled by agreement in a manner approved by him or (on appeal) by the Minister.

98 Concurrent user.

98.—In case of honest concurrent user or of other special circumstances which, in the opinion of the court or the controller make it proper so to do, the court or the controller may permit the registration of the same trade mark, or of nearly identical trade marks, for the same goods or description of goods by more than one proprietor subject to such conditions and limitations, if any, as to mode or place of user or otherwise as the court or the controller, as the case may be, may think it right to impose.

99 Assignment and transmission of trade marks.

99.—(1) Save as otherwise provided by this Act, a trade mark when registered shall be assigned and transmitted only in connexion with the goodwill of the business concerned in the goods for which it has been registered and shall be determinable with that goodwill.

• (2) Nothing in this section contained shall be deemed to affect the right of the proprietor of a registered trade mark to assign the right to use the same in any British dominion or protectorate or any foreign country in connexion with any goods for which it is registered together with the goodwill of the business therein in such goods, and the assignment of such right to use the same shall constitute the assignee a proprietor of a separate trade mark for the purpose of the immediately preceding section, subject to such conditions and limitations as may be imposed under that section.

100 Apportionment of trade marks on dissolution of partnership.

100.—(1) In any case where from any cause, whether by reason of dissolution of partnership or otherwise, a person ceases to carry on business, and the goodwill of such person does not pass to one successor but is divided, the controller may (subject to the provisions of this Act as to associated trade marks), on the application of the parties interested, permit an apportionment of the registered trade marks of the person among the persons in fact continuing the business, subject to such conditions and modifications, if any, and to such limitations, if any, as to mode or place of user as he may think necessary in the public interest.

• (2) Every decision of the controller under this section shall be subject to appeal to the Minister.

101 Associated trade marks.

101.—If application be made for the registration in Part A of the register of a trade mark identical with or so closely resembling a trade mark of the applicant already on that Part of the register for the same goods or description of goods as to be calculated to deceive or cause confusion if used by a person other than the applicant, the tribunal hearing the application may require as a condition of registration that such trade marks shall be entered on the register as associated trade marks.

102 Combined trade marks.

102.—If the proprietor of a trade mark registered in Part A of the register claims to be entitled to the exclusive use of any portion of such trade mark separately he may apply to register the same in the said Part A as separate trade marks. Each such separate trade mark must satisfy all the conditions and shall have all the incidents of an independent trade mark, except that when registered it and the trade mark of which it forms a part shall be deemed to be associated trade marks and shall be entered on the register as such, but the user of the whole trade mark shall for the purposes of this Act be deemed to be also a user of such registered trade marks belonging to the same proprietor as it contains.

103 Series of trade marks.

103.—(1) When a person claiming to be the proprietor of several trade marks for the same description of goods which, while resembling each other in the material particulars thereof, yet differ in respect of—

• (a) statements of the goods for which they are respectively used or proposed to be used; or

• (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 such trade marks, they may be registered as a series in one registration.

• (2) All the trade marks in a series of trade marks registered under this section shall if registered in Part A of the register be deemed to be, and shall be registered as, associated trade marks.

104 Assignment and user of associated trade marks.

104.—Associated trade marks shall be assignable or transmissible only as a whole and not separately, but they shall for all other purposes be deemed to have been registered as separate trade marks: Provided that where under the provisions of this Act user of a registered trade mark is required to be proved for any purpose, the tribunal may if and so far as it shall think right accept user of an associated registered trade mark, or of the trade mark with additions or alterations not substantially affecting its identity, as an equivalent for such user.

105 Duration of registration.

105.—The registration of a trade mark shall be for a period of fourteen years, but may be renewed from time to time in accordance with the provisions of this Act.

106 Renewal of registration.

106.—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 such trade mark for a period of fourteen years from the expiration of the original registration or of the last renewal of registration, as the case may be, which date is in this Act termed “the expiration of the last registration.”

107 Procedure on expiry of period of registration.

107.—At the prescribed time before the expiration of the last registration of a trade mark, the controller shall send notice in the prescribed manner to the registered proprietor at his registered address of the date at which the existing registration will expire and the conditions as to payment of fees and otherwise upon which a renewal of such registration may be obtained, and if at the expiration of the time prescribed in that behalf such conditions have not been duly complied with, the controller may remove such trade mark from the register, subject to such conditions (if any) as to its restoration to the register as may be prescribed.

108 Status of unrenewed trade mark.

108.—Where a trade mark registered in Part A of the register has been removed from the register for non-payment of the fee for renewal, such trade mark shall, nevertheless, for the purpose of any application for registration during one year next after the date of such removal, be deemed to be a trade mark which is already registered, unless it is shown to the satisfaction of the controller that there had been no bonâ fide trade user of such trade mark during the two years immediately preceding such removal.

109 Removal from register of word trade marks used as name of articles.

109.—(1) Where in the case of an article or substance manufactured under any patent in force at or granted after the commencement of this Part of this Act, a word trade mark registered under this Act is the name or only practicable name of the article or substance so manufactured, all rights to the exclusive use of such trade mark, whether under the common law or by registration, shall cease upon the expiration or determination of the patent, and thereafter such word shall not be deemed a distinctive mark, and may be removed by the court from the register on the application of any person aggrieved.

• (2) No word which is the only practicable name or description of any single chemical element or single chemical compound, as distinguished from a mixture, shall be registered as a trade mark, and any such word may be removed by the court from the register on the application of any person aggrieved:

Provided that the provisions of this sub-section shall not apply where the mark is used to denote only the proprietor's brand or make of such substance, as distinguished from the substance as made by others, and in association with a suitable and practicable name open to the public use.

• (3) The power to remove a trade mark from the register conferred by this section shall be in addition to and not in derogation of any other powers of the court in respect of the removal of trade marks from the register.

• (4) An application under this section may, at the option of the applicant, be made in the first instance to the controller, and in such case the controller shall have all the powers of the court under this section, but his decision shall be subject to appeal to the court.

110 Alteration of registered trade mark.

110.—The registered proprietor of any trade mark may apply in the prescribed manner to the controller for leave to add to or alter such trade mark in any manner not substantially affecting the identity of the same, and the controller may refuse such leave or may grant the same on such terms and subject to such limitations as to mode or place of user as he may think fit, but any such refusal or conditional permission shall be subject to appeal to the Minister. If leave be granted, the trade mark as altered shall be advertised in the prescribed manner.

111 Non-user of trade mark.

111.—(1) A registered trade mark may, on the application to the court of any person aggrieved, be taken off the register in respect of any of the goods for which it is registered, on the ground that it was registered by the proprietor or a predecessor in title without any bonâ fide intention to use the same in connexion with such goods, and there has in fact been no bonâ fide user of the same in connexion therewith, or on the ground that there has been no bonâ fide user of such trade mark in connexion with such goods during the five years immediately preceding the application, unless in either case such non-user is shown to be due to special circumstances in the trade, and not to any intention not to use or to abandon such trade mark in respect of such goods.

• (2) Any application under this section may, at the option of the applicant, be made in the first instance to the controller, and in such case the controller shall have all the powers of the court under this section, but his decision shall be subject to appeal to the court.

112 Powers of registered proprietor.

112.—Subject to the provisions of this Act—

• (a) the person for the time being entered in the register as proprietor of a trade mark shall, subject to any rights appearing from such register to be vested in any other person, have power to assign the same, and to give effectual receipts for any consideration for such assignment;

• (b) any equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property.

113 Rights of registered proprietor.

113.—(1) Subject to the provisions of this Act relating to the registration of identical or nearly identical trade marks and to any limitations and conditions entered upon the register, the registration of a person in Part A of the register as proprietor of a trade mark shall, if valid, give to such person the exclusive right to the use of such trade mark upon or in connexion with the goods in respect of which it is registered.

• (2) Where two or more persons are registered in either Part of the register as proprietors of the same (or substantially the same) trade mark in respect of the same goods, no rights of exclusive user of such trade mark shall (except so far as their respective rights shall have been defined by the court) be acquired by any one of such persons as against any other by the registration thereof, but each of such persons shall otherwise have the same rights as if he were the sole registered proprietor thereof.

114 Effect of registration in Part B.

114.—The registration of a person as the proprietor of a trade mark in Part B of the register shall be primâ facie evidence that that person has the exclusive right to the use of that trade mark, but, in any action for infringement of a trade mark entered in Part B of the register, no injunction or other relief shall be granted to the owner of the trade mark in respect of such registration, if the defendant establishes to the satisfaction of the court that the user of which the plaintiff complains is not calculated to deceive or to lead to the belief that the goods the subject of such user were goods manufactured, selected, certified, dealt with, or offered for sale by the proprietor of the trade mark.

115 Registration to be primâ facie evidence of validity.

115.—In all legal proceedings relating to a registered trade mark (including applications for rectification of the register) the fact that a person is registered as proprietor of such trade mark shall be primâ facie evidence of the validity of the original registration of such trade mark and of all subsequent assignments and transmissions of the same.

116 Registration to be conclusive after seven years.

116.—(1) In all legal proceedings relating to a trade mark registered in Part A of the register (including applications for the rectification of the register) the original registration of such trade mark shall after the expiration of seven years from the date of such original registration be taken to be valid in all respects unless such original registration was obtained by fraud, or unless the trade mark is a trade mark the registration of which is prohibited by section 84 (which relates to deceptive or misleading trade marks) or section 138 (which relates to inventions, etc., contrary to law or morality) of this Act.

• (2) Nothing in this Act shall entitle the proprietor of a trade mark registered in either Part of the register to interfere with or restrain the user by any person of a similar trade mark upon or in connexion with goods upon or in connexion with which such person has, by himself or his predecessors in business, continuously used such trade mark from a date anterior to the user or registration whichever is the earlier of the first-mentioned trade mark by the proprietor thereof or his predecessors in business, or to object (on such user being proved) to such person being put upon the register for such similar trade mark in respect of such goods under the provisions of this Act relating to the registration of identical or nearly identical trade marks.

117 Unregistered trade mark.

117.—(1) No person shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of an unregistered trade mark unless such trade mark was in use before the thirteenth day of August one thousand eight hundred and seventy-five, and either has been refused registration under this Act, or has been, before the commencement of this Part of this Act, refused registration in the Patent Office in London.

• (2) The controller may, on request, grant a certificate that registration under this Act has been refused.

118 Admission of evidence of trade usages.

118.—In any action or proceeding relating to a trade mark or trade name the tribunal 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 other persons.

119 No interference with use of own name, etc.

119.—No registration under this Act shall interfere with any bonâ fide use by a person of his own name or place of business or that of any of his predecessors in business, or the use by any person of any bonâ fide description of the character or quality of his goods.

120 Remedies for “passing off” not affected.

120.—Nothing in this Act contained shall be deemed to affect rights of action against any person for passing off goods as those of another person or the remedies in respect thereof.

121 Registration of marks by Ministers.

121.—(1) Any Minister may procure the registration in Part A of the register of a mark intended to indicate the origin, material, mode of manufacture, quality, accuracy, or other characteristic of goods to which it is applied and every such mark when so registered shall be deemed to be in all respects, save as is otherwise provided by this section, a registered trade mark and the Minister by whom its registration was procured shall be and be registered as the proprietor thereof.

• (2) An application for the registration of a mark under the foregoing sub-section shall be made in the prescribed manner by a Minister, and the registration of the mark shall be subject to the provisions of this Act relating to the registration of a trade mark in Part A of the register save in so far as such provisions are inconsistent with the provisions of this section.

• (3) Any Minister may procure the registration in any register maintained in any place outside Saorstát Eireann of a mark (whether registered or not registered under the foregoing provisions of this section) intended to indicate the origin, material, mode of manufacture, quality, accuracy, or other characteristic of goods 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 register as the proprietor of such mark.

• (4) A Minister who is the registered proprietor of any such mark as is mentioned in the foregoing sub-sections of this section may grant to any person a licence to use such mark and to apply the same to all or any of the goods or classes of goods in respect of which such mark is registered but in the case of a mark registered in a register maintained in a place out of Saorstát Eireann only if and so far as the granting of such licence is permitted by the law regulating such register.

• (5) Every licence granted by a Minister under the foregoing sub-section shall have effect according to the terms thereof and shall contain provisions for ensuring that the mark to which the 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 terms and provisions as the Minister granting the same shall think proper and in particular provisions for ensuring that the mark to which the licence relates shall only be applied to goods of a specified quality or description.

• (6) A Minister who is the registered proprietor of any such mark as aforesaid may require the controller to enter on or remove from the register in respect of such mark the words “licences not registrable,” and, whenever and so long as such words are so entered in the register, licences made by the Minister under this section in respect of such marks shall not (notwithstanding the provisions of section 127 (which relates to registration of assignments, etc.) of this Act) be or be capable of being entered in the register or be refused admission in evidence in any court merely on account of such non-entry in the register.

• (7) A Minister who is the registered proprietor of any such mark as aforesaid may at any time take such lawful steps, whether by action, prosecution at law, or otherwise as he shall think proper to prevent, restrain, or punish infringements of or otherwise to protect such mark and may take such steps in Saorstát Eireann or any other country in which he is registered as such proprietor.

• (8) A mark registered under this section shall be deemed to be a trade mark within the meaning of any enactment heretofore passed by the Oireachtas relating to the registration of trade marks by Ministers.

• (9) 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).

122 Misuse of trade marks indicative of Irish origin.

122.—It shall be lawful for the Minister to take in any country or place outside Saorstát Eireann such lawful steps, whether by way of action or prosecution at law or otherwise, as he shall think proper to prevent, restrain, or punish the registration, use, or application in relation to or in respect of goods not grown, produced, or manufactured in Ireland 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 grown, manufactured, or produced in Ireland.

123 Trade marks used solely as certificates of quality, etc.

123.—(1) Where any association or person undertakes to certify the origin, material, mode of manufacture, quality, accuracy, or other characteristic of any goods, by mark used upon or in connexion with such goods, the Minister if and so long as he is satisfied that such association or person is competent to certify as aforesaid, may if he shall judge it to be to the public advantage, permit such association or person to register such mark as a trade mark in respect of such goods, whether or not such association or person be a trade association or trader or possessed of a goodwill in connexion with such certifying. When so registered such trade mark shall be deemed in all respects to be a registered trade mark, and such association or person shall be deemed to be the proprietor thereof, save that such trade mark shall be transmissible or assignable only by permission of the Minister.

• (2) The proprietor of a mark registered under this section or of a mark originally registered in the Patent Office in London under section 62 of the Trade Marks Act, 1905 and subsequently registered under section 89 (which relates to the registration of trade marks registered in the Patent Office in London) of this Act in the register of trade marks in the Office, may assign such mark to the Minister and the Minister may take an assignment thereof, and on such assignment being made section 121 (which relates to the registration of marks by Ministers) of this Act shall apply to such mark as fully as if the Minister had procured the registration thereof under the said section 121.

PART V GENERAL PROVISIONS RELATING TO PATENTS, DESIGNS AND TRADE MARKS.

124 Trusts not to be entered in registers.

124.—There shall not be entered in any register kept under this Act, or be receivable by the controller, any notice of any trust expressed, implied, or constructive.

125 Inspection of and extracts from registers.

125.—Every register kept under this Act shall at all convenient times be open to the inspection of the public, subject to the provisions of this Act and to such regulations as may be prescribed, and certified copies, sealed with the seal of the controller, of any entry in any such register shall be given to any person requiring the same on payment of the prescribed fee.

126 Reports of officers to be privileged.

126.—Reports of examiners and other officers made under this Act shall not in any case be published or be open to public inspection, and shall not be liable to production or inspection, and shall not be liable to production or inspection in any legal proceeding, unless the court or officer having power to order discovery in such legal proceeding certifies that such production or inspection is desirable in the interests of justice, and ought to be allowed:

Provided that, on application being made by any person in the prescribed form, the controller may disclose the result of a search made under section 19 (which relates to documents to accompany specifications) or section 20 (which relates to investigation of specifications published previous to application) or section 21 (which relates to investigation of specifications published subsequent to application) of this Act on any particular application for the grant of a patent.

127 Registration of assignments, etc.

127.—(1) Where a person becomes entitled by assignment, transmission, or other operation of law to a patent or to the copyright in a registered design or to a registered trade mark, he shall make application to the controller to register his title, and the controller shall on receipt of such application and on proof of title to his satisfaction, register him as the proprietor of such patent, design, or trade mark, and shall cause an entry to be made in the prescribed manner on the appropriate register of the assignment, transmission, or other instrument affecting the title.

• (2) Where any person becomes entitled as mortgagee, licensee, or otherwise to any interest in a patent or a design, or as mortgagee or otherwise to any interest in a trade mark, he shall make application to the controller to register his title, and the controller shall, on receipt of such application and on proof of title to his satisfaction, cause notice of the interest to be entered in the prescribed manner in the appropriate register with particulars of the instrument (if any) creating such interest.

• (3) The person registered as the proprietor of a patent, design, or trade mark shall, subject to the provisions of this Act, and to any rights appearing from the register to be vested in any other person, have power absolutely to assign, or otherwise deal with the patent, design, or trade mark (including, in the case of a patent or a design, to grant licences in respect thereof), and to give effectual receipts for any consideration for any such assignment, licence, or dealing.

• (4) Any equities in respect of a patent, design, or trade mark may be enforced in like manner as in respect of any other personal property.

• (5) Except in cases of appeals under this section and applications and appeals complaining of the non-insertion in or omission from a register of an entry relating to a document or instrument, a document or instrument in respect of which no entry has been made in the register in accordance with the provisions of this section shall not be admitted in evidence in any court in proof of the title to a patent, or copyright in a design, or a trade mark, or to any interest therein, unless the court otherwise directs.

• (6) Any decision of the controller under this section shall be subject to appeal to the court.

128 Power of controller to amend register.

128.—The controller may on request made in the prescribed manner by the registered proprietor of a patent, design, or trade mark or by some person entitled by law to act in his name—

• (a) correct any clerical error in or in connection with an application for a patent or in any patent or in any specification or in any register kept pursuant to any of the foregoing Parts of this Act;

• (b) enter any change in the name or address of any person who is entered on a register kept pursuant to any of the foregoing Parts of this Act;

• (c) cancel the registration of a design or trade mark either wholly or in respect of any goods or class of goods in or for which such design or trade mark is registered;

• (d) enter a disclaimer or memorandum relating to a design or trade mark which does not in any way extend the rights given by the existing registration of such design or trade mark.

129 Power of court to amend register.

129.—(1) Subject to the provisions of this Act the court may, on the application in the prescribed manner of any person aggrieved by the non-insertion in or omission from any register kept pursuant to any of the foregoing Parts of this Act of any entry or by any entry made in any such register without sufficient cause, or by any entry wrongly remaining on any such register, or by an error or defect in any entry in any such register, make such order for making, expunging, or varying such entry as it may think fit.

• (2) The court may in any proceeding under this section decide any question that it may be necessary or expedient to decide in connection with the rectification of any such register.

• (3) The prescribed notice of any application under this section shall be given to the controller, who shall have the right to appear and be heard thereon, and shall appear if so directed by the court.

• (4) In the case of fraud in the registration or transmission of a patent, or a registered design or trade mark, the controller may himself apply to the court under the provisions of this section.

• (5) Any order of the court rectifying any such register shall direct that notice of the rectification be served on the controller in the prescribed manner, who shall upon the receipt of such notice rectify the register accordingly.

• (6) Any application under this section (other than an application by the controller) may, at the option of the applicant, be made in the first instance to the controller, and in such case the controller shall have all the powers of the court under this section, but his decision shall be subject to appeal to the court.

• (7) The court may in any proceeding under this section in relation to the register of trade marks, direct a trade mark registered in Part A of that register to be removed to Part B of that register.

130 Rights of State in respect of patented inventions and registered designs.

130.—(1) A patent and the registration of a design shall respectively have to all intents the like effect as against the State as they have against a citizen:

Provided that any Minister head of a Department of State may, by himself or by such of his agents, contractors, or others as may be authorised in writing by him at any time after the application, make, use, or exercise the invention, or use, or apply the design for the services of the State on such terms as may, either before or after the use thereof, be agreed on with the approval of the Minister for Finance between such Minister and the proprietor, or, in default of agreement, as may be settled in the manner hereinafter provided, and the terms of any agreement or licence concluded between the proprietor and any person other than a Minister shall be inoperative so far as concerns the making, use, or exercise of the invention or the use or application of the design for the service of the State:

Provided further that, where an invention which is the subject of any patent, or any registered design has, before the date of the patent or of the registration, been duly recorded in a document by, or been tried by or on behalf of any such Minister (such invention or design not having been communicated directly or indirectly by the applicant or the proprietor) any Minister or such of his agents, contractors, or others as may be authorised in writing by him, may make, use, and exercise the invention, or use or apply the design so recorded or tried for the service of the State free of any royalty or other payment to the proprietor, notwithstanding the existence of the patent or registration, and if in the opinion of such Minister the disclosure to the applicant or the proprietor, as the case may be, of the document recording the invention or design or the evidence of the trial thereof would be detrimental to the public interest, such disclosure may be made confidentially to counsel on behalf of the applicant or proprietor or to any independent expert mutually agreed upon.

• (2) In case of any dispute as to the making, use, or exercise of an invention, or use or application of a design, under this section, or the terms therefor, or as to the existence or scope of any record or trial as aforesaid, the matter shall be referred to the court for decision, which shall have the power to refer the whole matter or any question or issue of fact arising thereon to be tried before an arbitrator upon such terms as it may direct. The court or arbitrator, as the case may be, may with the consent of the parties take into consideration the validity of the patent or registration, for the purposes only of the reference and the determination of the issues between the applicant and such Minister. The court or arbitrator in settling the terms as aforesaid shall be entitled to take into consideration any benefit or compensation which the proprietor or any other person interested in the patent or design may have received directly or indirectly from the State or from any Minister or any Government Department in respect of such patent or design.

• (3) The right to use an invention or a design for the service of the State under the provisions of this section, shall include the power to sell any articles made in pursuance of such right which are no longer required for the service of the State.

• (4) Nothing in this section shall affect the right of the State or of any person deriving title directly or indirectly from the State, to sell or use any articles forfeited under the laws relating to the customs or excise.

• (5) In this section the word “applicant” means either an applicant for a patent or an applicant for the registration of a design, as the case may require, and the word “proprietor” means an inventor, or a patentee, or a registered proprietor of a design, as the case may require.

131 Remedy in case of groundless threats of legal proceedings.

131.—(1) Where any person claiming to have an interest in a patent, registered design, or registered trade mark, by circulars, advertisements, or otherwise, threatens any other person with any legal proceedings or liability in respect of any alleged infringement of the patent, or of the copyright in the design or of the trade mark, any person aggrieved thereby may bring an action against him, and may obtain an injunction against the continuance of such threats, and may recover such damage (if any) as he has sustained thereby, if the alleged infringement to which the threats related was not in fact an infringement of the patent, copyright, or trade mark.

• (2) This section shall not apply if an action for the infringement of the patent, copyright in the design, or trade mark (as the case may be) is commenced and prosecuted with due diligence.

132 Certificate of validity questioned and costs thereon.

132.—(1) In an action for infringement of a patent the Court may certify that the validity of any claim in the specification of the patent came in question, and if the Court so certifies then in any subsequent action for infringement of such claim the plaintiff in such subsequent action, on obtaining a final order or judgment in his favour, shall, unless the Court trying such subsequent action otherwise directs, have his full costs and expenses as between solicitor and client so far as that claim is concerned.

• (2) In an action for infringement of the copyright in a registered design the Court may certify that the validity of the registration of such design came in question, and if the Court so certifies then in any subsequent action for infringement of such copyright the plaintiff in such subsequent action, on obtaining a final order or judgment in his favour, shall, unless the Court trying such subsequent action otherwise directs, have his full costs and expenses as between solicitor and client.

• (3) In any legal proceeding in which the validity of the registration of a registered trade mark comes into question and is decided in favour of the proprietor of such trade mark, the Court may certify the same, and if it so certifies then in any subsequent legal proceeding in which such validity comes into question the proprietor of the said trade mark, on obtaining a final order or judgment in his favour, shall, unless the Court trying such subsequent legal proceeding otherwise directs, have his full costs and expenses as between solicitor and client.

133 Procedure on appeals to law officer.

133.—The law officer may examine witnesses on oath and administer oaths for that purpose, and may make rules regulating references and appeals to the law officer and the practice and procedure before him under this Act; and in any proceeding before the law officer under this Act, the law officer may order costs to be paid by either party, and any such order may be made a rule of the court.

134 Exercise of discretionary power by controller.

134.—Where any discretionary power is by or under this Act given to the controller, he shall not exercise that power adversely to the applicant for a patent, or for amendment of a specification, or for registration of a design or trade mark or the registered proprietor of a patent, design, or trade mark with out (if so required within the prescribed time by the applicant or registered proprietor) giving the applicant or registered proprietor an opportunity of being heard.

135 Costs and security for costs.

135.—(1) The controller and the Minister shall, in any proceedings before either of them under this Act, respectively, have power by order to award to any party such costs as he may consider reasonable, and to direct how and by what parties they are to be paid, and any such order may be made a rule of the court.

• (2) If any party giving notice of any opposition under this Act, or applying to the controller for the revocation of a patent, or giving notice of appeal from any decision of the controller under this Act, neither resides nor carries on business in Saorstát Eireann, the controller, or in case of appeal to the Minister, law officer, or the court, the Minister, law officer, or the court may require such party to give security for the costs of the proceedings or appeal, and in default of such security being given may proceed to treat the proceedings or appeal as abandoned.

136 Controller may consult law officer.

136.—The controller may, in any case of doubt or difficulty arising in the administration of any of the provisions of this Act, apply to the law officer for directions in the matter.

137 Recognition of agents.

137.—(1) Whenever under this Act any act has to be done by or to any person in connexion with a patent, design, or trade mark or any procedure relating to a patent or the obtaining thereof or to a design or trade mark or the registration thereof, such act may under and in accordance with rules made under this Act or in particular cases by special leave of the Minister be done by or to an agent of such person duly authorised in the prescribed manner.

• (2) Rules under this Act may authorise the controller to refuse to recognise as agent in respect of any business under this Act any person whose name, having been entered in the register of patent agents under this Act, has been removed therefrom.

• (3) Rules under this Act may authorise the controller to refuse to recognise as agent in respect of any business under this Act a company or firm of which any director or manager or any partner (as the case may be) is an individual whom the controller could refuse to recognise as an agent.

• (4) The controller shall refuse to recognise as agent in respect of any business under this Act any person who neither resides nor has a place of business in Saorstát Eireann.

138 Inventions, etc., contrary to law or morality.

138.—(1) The controller may refuse to grant a patent for an invention, or to register a design or trade mark of which the use would, in his opinion, be contrary to law or morality.

• (2) An appeal shall lie from the decision of the controller under this section to the court.

139 Controller to make annual reports.

139.—The controller shall, before the first day of September in every year, cause a report respecting the execution by or under him of this Act during the year ending on the previous 31st day of March to be laid before both Houses of the Oireachtas, and therein shall include for the year to which the report relates all general rules made in that year under or for the purposes of this Act and an account of all fees, salaries, and allowances, and other money received and paid under this Act.

140 Minister may refer appeals to court.

140.—Whenever an appeal is made to the Minister under this Act, the Minister may if he thinks fit refer such appeal to the court in lieu of hearing and deciding it himself, but, unless the Minister so refers the appeal, it shall be heard and decided by the Minister and the decision of the Minister shall be final

141 Minister may delegate his duties under this Act.

141.—All things required or authorised under this Act to be done by, to, or before the Minister may be done by, to, or before a secretary or an assistant secretary of the Minister or any person authorised in that behalf by the Minister.

142 Evidence before controller.

142.—(1) Subject to general rules made under this Act, in any proceeding under this Act before the controller or the Minister 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, he may take evidence vivâ voce in lieu of or in addition to evidence by declaration or allow any declarant to be cross-examined on his declaration. Any such statutory declaration may in the case of appeal be used before the court in lieu of evidence by affidavit, but if so used shall have all the incidents and consequences of evidence by affidavit.

• (2) In case any part of the evidence is taken vivâ voce, the controller shall, in respect of requiring the attendance of witnesses and taking evidence on oath, and discovery and production of documents, be in the same position in all respects as a judge of the High Court.

143 Appearance of controller in proceedings for rectification.

143.—In any legal proceeding in which the relief sought includes alteration or rectification of a register kept pursuant to this Act, the controller shall have the right to appear and be heard, and shall appear if so directed by the court. 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 the grounds of any decision given by him affecting the same or of the practice of the office in like cases, or of such other matters relevant to the issues, and within his knowledge as such controller, as he shall think fit, and such statement shall be deemed to form part of the evidence in the proceeding.

144 Costs of controller in court proceedings.

144.—In all proceedings before the court under this Act the costs of the controller shall be in the discretion of the court, but the controller shall not be ordered to pay the costs of any other party.

145 Certificate of controller to be evidence.

145.—A certificate purporting to be under the hand of the controller as to any entry, matter, or thing which he is authorised by this Act, or any general rules made thereunder, to make or do, shall be primâ facie evidence of the entry having been made, and of the contents thereof, or of the matter or thing having been done or left undone.

146 Sealed copies of documents in office to be evidence.

146.—Printed or written copies or extracts, purporting to be certified by the controller or an officer of the controller and sealed with the seal of the controller, of or from patents, specifications, designs, trade marks, and other documents in the Office, and of or from registers and other books kept there, shall be admitted in evidence in all courts and in all legal proceedings without further proof or production of the originals.

147 Notices may be sent by post.

147.—Any application, notice, or other document authorised or required to be left, made, or given at the Office or to the controller, or to any other person under this Act, may be sent by post.

148 Excluded days.

148.—Where the last day fixed by this Act for doing anything under this Act falls on any day specified in general rules made under this Act as an excluded day, the rules may provide for the thing being done on the next subsequent day which is not an excluded day.

149 Declarations by infants, lunatics, etc.

149.—(1) If any person is, by reason of infancy, lunacy, or other disability, incapable of making any declaration or doing anything required or permitted by or under this Act, the guardian or committee (if any) of the person subject to the disability, or, if there be none, any person appointed by any court possessing jurisdiction in respect of his property, may make such declaration or a declaration as nearly corresponding thereto as circumstances permit, and do such thing in the name and on behalf of the person subject to the disability.

• (2) An appointment may be made by the court for the purposes of this section upon the petition of any person acting on behalf of the person subject to the disability or of any other person interested in the making of the declaration or the doing of the thing.

150 Offences.

150.—(1) If any person makes or causes to be made a false entry in any register kept under this Act, or a writing falsely purporting to be a copy of an entry in any such register, or produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, he shall be guilty of a misdemeanour.

• (2) If any person falsely represents that any article sold by him is a patented article, or falsely describes any design applied to any article sold by him as registered, or falsely represents a trade mark as registered, he shall be guilty of an offence under this sub-section and shall be liable on summary conviction thereof to a fine not exceeding five pounds.

• (3) If any person sells an article having stamped, engraved, or impressed thereon or otherwise applied thereto the word “patent,” “patented,” “registered,” or any other word expressing or implying that the article is patented or that the design applied thereto or the trade mark thereon is registered, he shall be deemed for the purposes of this section to represent that the article is a patented article or that the design applied thereto is a registered design or that the trade mark thereon is a registered trade mark.

• (4) Any person who, after the copyright in a design has expired, puts or causes to be put on any article to which the design has been applied the word “registered,” or any word or words implying that there is a subsisting copyright in the design, shall be guilty of an offence under this sub-section and shall be liable on summary conviction thereof to a fine not exceeding five pounds.

• (5) If any person uses on his place of business, or on any document issued by him, or otherwise, any words suggesting that his place of business is officially connected with, or is, the Office, he shall be guilty of an offence under this sub-section and shall be liable on summary conviction thereof to a fine not exceeding twenty pounds.

151 Unauthorised user of State badges.

151.—Any person who without lawful authority uses in connection 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 or any officer of the State or any Government Department (or any badge, device, emblem, or flag so closely resembling the same as to be calculated to deceive) in such manner as to be calculated to lead to the belief that he is duly authorised to use such badge, device, emblem, or flag, 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.

152 International arrangements.

152.—(1) If any arrangement binding on Saorstát Eireann (whether by reason of its having been made by the Governor-General on the advice of the Executive Council or for any other reason) has been or shall be made with the government of any foreign state for mutual protection of inventions, or designs, or trade marks, then any person who has applied for protection for any invention, design, or trade mark in that state, or the legal representative or assignee of such person shall be entitled to a patent for his invention or to registration of his design or trade mark under this Act in priority to other applicants; and the patent or registration shall have the same date as the date of the application in the foreign state, provided whichever of the following conditions is applicable be duly complied with, that is to say:—

• (a) in the case of a patent, the application for protection in Saorstát Eireann shall be made within twelve months after the date of the application for protection in the foreign state or, where such last-mentioned application was pending at the commencement of Part II. of this Act, within twelve months after the date of such commencement, and

• (b) in the case of a design, the application for protection in Saorstát Eireann shall be made within four months after the date of the application for protection in the foreign state or, where such last-mentioned application was pending at the commencement of Part III. of this Act, within four months after the date of such commencement, and

• (c) in the case of a trade mark, the application for protection in Saorstát Eireann shall be made within four months after the date of the application for protection in the foreign state or, where such last-mentioned application was pending at the commencement of Part IV. of this Act, within four months after the date of such commencement.

• (2) Nothing in this section shall entitle the patentee under a patent or the proprietor of a design or trade mark to recover damages for infringements happening prior to the date on which the complete specification for the patent is accepted or the registration of the design or trade mark is completed (as the case may be).

• (3) The patent granted for the invention or the registration of the design or trade mark shall not be invalidated—

• (a) in the case of a patent, by reason only of the publication of a description of, or the use of, the invention; or

• (b) in the case of a design, by reason only of the exhibition or use of, or the publication of a description or representation of, the design; or

• (c) in the case of a trade mark, by reason only of the use of the trade mark,

in Saorstát Eireann during the period specified in this section as that within which the application may be made.

• (4) The application for the grant of a patent, or the registration of a design, or the registration of a trade mark under this section, must be made in the same manner as an ordinary application under this Act:

Provided that—

• (a) in the case of patents the application shall be accompanied by a complete specification, which, if it is not accepted within the twelve months from the application for protection in the foreign state or the commencement of Part II. of this Act (as the case may require) shall with the drawings (if any) be open to public inspection at the expiration of that period; and

• (b) in the case of trade marks, any trade mark the registration of which has been duly applied for in the country of origin may be registered under this Act.

• (5) The provisions of this section shall apply only in the case of those foreign states with respect to which the Governor-General by order made on the advice of the Executive Council declares them to be applicable, and so long only in the case of each state as the order continues in force with respect to that state.

• (6) Where it is made to appear to the Governor-General that the legislature of any British dominion, protectorate or territory has made satisfactory provision for the protection of inventions, designs, or trade marks, patented or registered in Saorstát Eireann, it shall be lawful for the Governor-General by order made on the advice of the Executive Council to apply the provisions of this section to that dominion, protectorate or territory with such variations or additions, if any, as may be stated in the order

153 Minister may make general rules, etc.

153.—(1) The Minister may make such general rules and do such things as he thinks expedient, subject to the provisions of this Act—

• (a) for regulating the practice of registration under this Act;

• (b) for classifying goods for the purposes of designs and for the purposes of trade marks;

• (c) for making or requiring duplicates of specifications designs, trade marks, drawings, and other documents;

• (d) for securing and regulating the publishing and selling of copies, at such prices and in such manner as he thinks fit, of specifications, designs, trade marks, drawings, and other documents;

• (e) for regulating (with the approval of the Minister for Finance) the publication, issue, and sale of the Journal and all supplements thereto, reports, and other documents which the controller is by this Act required or authorised to publish or issue, and for regulating the matters to be published in the Journal and such supplements, reports, and other documents respectively;

• (f) for securing and regulating the making, printing, publishing, and selling of indexes to, and abridgments of, specifications, designs, trade marks, and other documents in the Office, and providing for the inspection of such indexes and abridgments and other documents;

• (g) for regulating (with the approval of the Minister for Finance) the presentation of copies of publications made under this Act to patentees and to public authorities, bodies, and institutions at home and abroad;

• (h) for regulating the keeping of the several registers to be kept pursuant to this Act;

• (i) for prescribing any matter or thing referred to in this Act as prescribed or to be prescribed;

• (j) for doing anything which is by this Act authorised or required to be done, or is in this Act referred to as being or to be done, by general rules made under this Act;

• (k) generally for regulating the business of the Office, and all things by this Act placed under the direction or control of the controller, or of the Minister.

• (2) General rules made under this section shall whilst in force be of the same effect as if they were contained in this Act.

• (3) All rules made in pursuance of this section shall be advertised twice in the Journal, and shall be laid before both Houses of the Oireachtas as soon as practicable after they are made, and if either House of the Oireachtas within the next forty days after any rules have been so laid before that House, resolves that the rules or any of them ought to be annulled, the rules or those to which the resolution applies shall after the date of such resolution be of no effect, without prejudice to the validity of anything done in the meantime under the rules or to the making of any new rules.

PART VI.—COPYRIGHT.

154 Copyright.

154.—(1) Subject to the provisions of this Act, copyright shall subsist in Saorstát Eireann for the term hereinafter mentioned in every original literary, dramatic, musical, and artistic work, if—

• (a) in the case of a published work, the work was first published within Saorstát Eireann; and

• (b) in the case of an unpublished work, the author was at the date of the making of the work a citizen of Saorstát Eireann or resident within Saorstát Eireann;

but in no other works, except so far as the protection conferred by this Act is extended by Orders thereunder relating to British dominions and to foreign countries:

Provided that the Governor-General may by Order made on the advice of the Executive Council direct that copyright subsisting in Saorstát Eireann under the provisions of this sub-section, in works the authors of which were at the date of the making of the work citizens of a country named in the Order with which no convention relating to copyright and binding on Saorstát Eireann exists and in respect of which no Order has been made under the provisions of section 175 (which relates to power to extend the benefit of this Part of this Act to works first published in a British dominion or foreign country) of this Act, shall be subject to such conditions or formalities (if any) as may be prescribed by the Order and to such modifications as regards the ownership of the copyright or otherwise as may appear necessary owing to the law of that country.

• (2) For the purposes of this Part of this Act, “copyright” means the sole right to produce or reproduce the work or any substantial part thereof in any material form whatsoever, to perform, or in the case of a lecture to deliver, the work or any substantial part thereof in public; if the work is unpublished, to publish the work or any substantial part thereof; and shall include the sole right—

• (a) to produce, reproduce, perform, or publish any translation of the work: provided that such right shall as regards translations into the Irish language cease to exist unless the author of the work or his legal representative shall have within a period of ten years from the date of the first publication of the work published or caused to be published in Saorstát Eireann a translation of the work into the Irish language;

• (b) in the case of a dramatic work, to convert it into a novel or other non-dramatic work;

• (c) in the case of a novel or other non-dramatic work, or of an artistic work, to convert it into a dramatic work, by way of performance in public or otherwise;

• (d) in the case of a literary, dramatic, or musical work, to make any record, perforated roll, cinematograph film, or other contrivance by means of which the work may be mechanically performed or delivered,

and to authorise any such acts as aforesaid.

• (3) For the purposes of this Part of this Act, publication, in relation to any work, means the issue of copies of the work to the public, and does not include the performance in public of a dramatic or musical work, the delivery in public of a lecture, the exhibition in public of an artistic work, or the construction of an architectural work of art, but, for the purposes of this provision, the issue of photographs and engravings of works of sculpture and architectural works of art shall not be deemed to be publication of such works.

• (4) Notwithstanding anything contained in section 174 (which relates to the preservation of existing copyrights) of this Act, paragraph (a) of sub-section (2) of this section shall apply to copyright acquired before the 6th day of December, 1921, as well as to copyright acquired since that date under this Act.

155 Infringement of copyright.

155.—(1) Copyright in a work shall be deemed to be infringed by any person who, without the consent of the owner of the copyright, does anything the sole right to do which is by this Part of this Act conferred on the owner of the copyright: Provided that the following acts shall not constitute an infringement of copyright:—

• (i) any fair dealing with any work for the purposes of private study, research, criticism, review, or newspaper summary;

• (ii) where the author of an artistic work is not the owner of the copyright therein, the use by the author of any mould, cast, sketch, plan, model, or study made by him for the purpose of the work, provided that he does not thereby repeat or imitate the main design of that work;

• (iii) the making or publishing of paintings, drawings, engravings, or photographs of a work of sculpture or artistic craftsmanship, if permanently situate in a public place or building, or the making or publishing of paintings, drawings, engravings, or photographs (which are not in the nature of architectural drawings or plans) of any architectural work of art;

• (iv) the publication in a collection of prose or poetry or of both, bonâ fide intended for the use of schools and so described in the title and in any advertisements issued by the publisher, of passages not exceeding in each case one hundred lines from published literary works not themselves originally published for the use of schools in which copyright subsists: Provided that such passages shall not include passages taken from copyright works within five years from date of first publication and that not more than two of such passages from works by the same author are published by the same publisher in any one book, and that the sources from which such passages are taken are acknowledged;

• (v) the publication in a newspaper of a report of a lecture delivered in public, unless the report is prohibited by conspicuous written or printed notice affixed before and maintained during the lecture at or about the main entrance of the building in which the lecture is given, and, except whilst the building is being used for public worship, in a position near the lecturer; but nothing in this paragraph shall affect the provisions in paragraph (i) as to newspaper summaries;

• (vi) save in the case of a work which was first published after the commencement of this Part of this Act, the reading or recitation in public by one person of any reasonable extract from any published work;

• (vii) in the case of a work which was first published after the commencement of this Part of this Act, the reading or recitation in public as part of a lecture, address, sermon, or speech of any reasonable extract from the work.

• (2) Copyright in a work shall also be deemed to be infringed by any person who—

• (a) sells or lets for hire, or by way of trade exposes or offers for sale or hire; or

• (b) distributes either for the purposes of trade or to such an extent as to affect prejudicially the owner of the copyright; or

• (c) by way of trade exhibits in public; or

• (d) imports for sale or hire into Saorstát Eireann;

any work which to his knowledge infringes copyright or would infringe copyright if it had been made within Saorstát Eireann.

• (3) Save in the case of a work which was first published after the commencement of this Part of this Act, copyright in a work shall also be deemed to be infringed by any person who for his private profit permits a theatre or other place of entertainment to be used for the performance in public of the work without the consent of the owner of the copyright, unless he was not aware and had no reasonable ground for suspecting that the performance would be an infringement of copyright.

• (4) In the case of a work first published after the commencement of this Part of this Act, copyright shall also be deemed to be infringed by any person who permits a theatre, hall, room, or other place to be used for the public performance for profit of the work without the consent of the owner of the copyright, unless such person was not aware and had no reasonable grounds for suspecting that the performance would be an infringement of copyright.

• (5) Every person who permits a theatre, hall, room, or other place to be used for a performance which is, under the next preceding sub-section of this section, an infringement of copyright shall be guilty of an offence under this section, and shall be liable on summary conviction thereof to a fine not exceeding fifty pounds.

• (6) Notwithstanding anything contained in section 174 (which relates to the preservation of existing copyrights) of this Act, paragraph (iv) of sub-section (1) of this section shall apply to copyright acquired before the 6th day of December, 1921, as well as to copyright acquired since that date under this Act.

156 Term of copyright.

156.—The term for which copyright shall subsist shall, except as otherwise expressly provided by this Act, be the life of the author and a period of fifty years after his death:

Provided that at any time after the expiration of twenty five years or, in the case of a work in which copyright subsisted on the 16th day of December, 1911, thirty years from the death of the author of a published work, copyright in the work shall not be deemed to be infringed by the reproduction of the work for sale if the person reproducing the work proves that he has given the appointed notice in writing of his intention to reproduce the work, and that he has paid in the appointed manner to, or for the benefit of, the owner of the copyright royalties in respect of all copies of the work sold by him calculated at the rate of ten per cent. on the price at which he publishes the work; and, for the purposes of this proviso, the Minister may make regulations appointing the mode in which notices are to be given, and the particulars to be given in such notices, and the mode, time, and frequency of the payment of royalties, including (if he thinks fit) regulations requiring payment in advance or otherwise securing the payment of royalties.

157 Compulsory licences.

157.—If at any time after the death of the author of a literary, dramatic, or musical work which has been published or performed in public a complaint is made to the Minister that the owner of the copyright in the work has refused to republish or to allow the republication of the work or has refused to allow the performance in public of the work, and that by reason of such refusal the work is withheld from the public, the owner of the copyright may be ordered to grant a licence to reproduce the work or perform the work in public, as the case may be, on such terms and subject to such conditions as the Minister may think fit.

158 Ownership of copyright, etc.