TRADE MARKS ACT, 1963

39.—The application in the State of a trade mark to goods to be exported from the State, and any other act done in the State in relation to goods to be so exported which, if done in relation to goods to be sold or otherwise traded in within the State, would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods for any purpose for which such use is material under this Act or at common law.

40 General power to rectify entries in register.

40.—(1) Any person aggrieved by the non-insertion in or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the Court or, at the option of the applicant and subject to section 59 of this Act, to the Controller, and the Court or the Controller (as the case may be) may make such order for making, expunging or varying the entry as the Court or the Controller (as the case may be) may think fit.

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

• (3) In case of fraud in the registration, assignment or transmission of a registered trade mark, or in any other case in which he considers it to be necessary in the public interest, the Controller may himself apply to the Court under this section.

• (4) Any order of the Court rectifying the register shall direct that notice of the rectification shall be served in the prescribed manner on the Controller, and the Controller shall on receipt of the notice rectify the register accordingly.

• (5) The power to rectify the register conferred by this section shall include power to remove a registration in Part A of the register to Part B.

41 Power to expunge or vary registration for breach of condition.

41.—On application by any person aggrieved to the Court or, at the option of the applicant and subject to section 59 of this Act, to the Controller or on application by the Controller to the Court, the Court or the Controller (as the case may be) may make such order as the Court or the Controller (as the case may be) may think fit for expunging or varying the registration of a trade mark on the ground of any contravention of, or failure to observe, a condition entered on the register in relation thereto.

42 Correction of register.

42.—(1) The Controller may, on request made in the prescribed manner by the registered proprietor—

• (a) correct any error in the name, address or description of the registered proprietor of a trade mark;

• (b) enter any change in the name, address or description of the person who is registered as proprietor of a trade mark;

• (c) cancel the entry of a trade mark on the register;

• (d) amend the specification of the goods in respect of which a trade mark is registered provided that the amendment does not in any way extend the rights given by the existing registration of the trade mark; or

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

• (2) The Controller may, on request made in the prescribed manner by a registered user of a trade mark, correct any error, or enter any change, in the name, address or description of the registered user.

• (3) The Controller may, of his own motion, after having given the prescribed notice, correct any error made by him in any entry on the register.

43 Alteration of registered trade mark.

43.—(1) The registered proprietor of a trade mark may apply in the prescribed manner to the Controller for leave to add to or alter the trade mark in any manner not substantially affecting the identity thereof, and the Controller may refuse leave or may grant it on such terms and subject to such limitations as he may think fit.

• (2) The Controller may cause an application under this section to be advertised in the prescribed manner in any case where it appears to him that it is expedient so to do and, where he does so, if within the prescribed time from the date of the advertisement any person gives notice to the Controller in the prescribed manner of opposition to the application, the Controller shall, after hearing the parties if so required, decide the matter.

• (3) Where leave as aforesaid is granted, the trade mark as altered shall be advertised in the prescribed manner, unless it has already been advertised, in the form to which it has been altered, in an advertisement under subsection (2) of this section.

44 Adaptation of entries in register to amended or substituted classification of goods.

44.—(1) The Minister may from time to time make such rules, prescribe such forms and generally do such things as he thinks expedient, for empowering the Controller to amend the register, whether by making or expunging or varying entries therein, so far as may be requisite for the purpose of adapting the designation therein of the goods or classes of goods in respect of which trade marks are registered to any amended or substituted classification that may be prescribed.

• (2) The Controller shall not, in exercise of any power conferred on him for the purpose aforesaid, make any amendment of the register that would have the effect of adding any goods or classes of goods to those in respect of which a trade mark is registered (whether in one or more classes) immediately before the amendment is to be made, or of antedating the registration of a trade mark in respect of any goods:

Provided that this subsection shall not have effect in relation to goods as to which the Controller is satisfied that compliance with this subsection in relation thereto would involve undue complexity and that the addition or antedating, as the case may be, would not affect any substantial quantity of goods and would not substantially prejudice the rights of any person.

• (3) A proposal for the amendment of the register for the purpose aforesaid shall be notified to the registered proprietor of the trade mark affected, shall be advertised with any modifications, and may be opposed before the Controller by any person aggrieved on the ground that the proposed amendment contravenes subsection (2) of this section.

45 Certification trade marks.

45.—(1) A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, mode of manufacture, quality, accuracy or other characteristic, from goods not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods in the name, as proprietor thereof, of that person:

Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind certified.

• (2) In determining whether a mark is adapted to distinguish as aforesaid, the Court or the Controller (as the case may be) may have regard to the extent to which—

• (a) the mark is inherently adapted to distinguish as aforesaid in relation to the goods in question; and

• (b) by reason of the use of the mark or of any other circumstances, the mark is in fact adapted to distinguish as aforesaid in relation to the goods in question.

• (3) Subject to subsections (4) to (6) of this section, and of sections 15 and 16 of this Act, the registration of a person as proprietor of a certification trade mark in respect of any goods shall, if valid, give to that person the exclusive right to the use of the trade mark in relation to those goods, and, without prejudice to the generality of the foregoing words, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a person authorised by him under the regulations in that behalf using it in accordance therewith, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either—

• (a) as being use as a trade mark; or

• (b) in a case in which the use is use upon the goods or in physical relation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or by his authorisation under the relevant regulations to use the trade mark or to goods certified by the proprietor.

• (4) The right to the use of a certification trade mark given by registration as aforesaid shall be subject to any conditions or limitations entered on the register, and shall not be deemed to be infringed by the use of any such mark as aforesaid in any mode, in relation to goods to be sold or otherwise traded in in any place, in relation to goods to be exported to any market, or in any other circumstances, to which, having regard to any such limitations, the registration does not extend.

• (5) The right to the use of a certification trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person—

• (a) in relation to goods certified by the proprietor of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or another in accordance with his authorisation under the relevant regulations has applied the trade mark and has not subsequently removed or obliterated it, or the proprietor has at any time expressly or impliedly consented to the use of the trade mark; or

• (b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might for the time being be so used, if the use of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact that the goods are certified by the proprietor:

Provided that paragraph (a) of this subsection shall not have effect in the case of use consisting of the application of any such mark as aforesaid to any goods, notwithstanding that they are such goods as are mentioned in that paragraph, if such application is contrary to the relevant regulations.

• (6) Where a certification trade mark is one of two or more registered trade marks that are identical or nearly resemble each other, the use of any of those trade marks in exercise of the right to the use of that trade mark given by registration shall not be deemed to be an infringement of the right so given to the use of any other of those trade marks.

• (7)
• (a) There shall be deposited at the Office in respect of every trade mark registered under this section regulations approved by the Minister for governing the use thereof, which shall include provisions as to the cases in which the proprietor is to certify goods and to authorise the use of the trade mark, and may contain any other provisions that the Minister may require or permit to be inserted therein (including provisions conferring a right of appeal to the Controller against any refusal of the proprietor to certify goods or to authorise the use of the trade mark in accordance with the regulations).

• (b) Regulations deposited under this subsection shall be open to inspection in like manner as the register.

• (8) A certification trade mark shall not be assignable or transmissible otherwise than with the consent of the Minister.

• (9) The provisions of the First Schedule to this Act shall have effect with respect to the registration of a mark under this section and to marks so registered.

46 Registration of marks by Ministers.

46.—(1) A Minister of State may, subject to this Act, procure the registration of a trade mark or of a certification trade mark and a Minister by whom such registration is procured shall be, and shall be registered as, the proprietor thereof for all purposes under this Act.

• (2) A Minister of State may procure the registration in any register maintained in any place outside the State of a trade mark (whether registered or not registered under subsection (1) of this section) if and so far as and subject to such conditions as such registration is permitted by the law regulating such register and in any such case may procure himself to be entered in such register as the proprietor of such trade mark.

47 Misuse of trade marks indicative of Irish origin.

47.—It shall be lawful for the Minister to take in any place outside the State such lawful steps, whether by way of action or prosecution at law or otherwise, as he shall think proper to prevent, restrain, or to secure punishment for the registration, use, or application in relation to or in respect of goods not grown, produced, or manufactured in the State of any trade mark or other mark or description indicating or suggesting or likely to lead to the belief that the goods in respect of which or to which such trade mark, mark, or description is used or applied were grown, produced or manufactured in the State.

PART III. Provisions Relating to Powers and Duties of Controller and to Legal Proceedings.

48 Preliminary advice by Controller as to distinctiveness.

48.—(1) The power to give to a person who proposes to apply for the registration of a trade mark in Part A or Part B of the register advice as to whether the trade mark appears to the Controller prima facie to be inherently adapted to distinguish, or capable of distinguishing, as the case may be, shall be a function of the Controller under this Act.

• (2) Any such person who is desirous of obtaining such advice must make application to the Controller therefor in the prescribed manner.

• (3) If on an application for the registration of a trade mark as to which the Controller has given advice as aforesaid in the affirmative, made within three months after the advice is given, the Controller, after further investigation or consideration, gives notice to the applicant of objection on the ground that the trade mark is not adapted to distinguish, or capable of distinguishing, as the case may be, the applicant shall be entitled, on giving notice of withdrawal of the application within the prescribed period, to have repaid to him any fee paid on the filing of the application.

49 Controller may consult Attorney General.

49.—The Controller may, in any case of doubt or difficulty in the administration of this Act, apply to the Attorney General for directions in the matter.

50 Hearing before exercise of Controller's discretion.

50.—Where any discretionary or other power is given to the Controller by this Act or the rules, he shall not exercise that power adversely to the applicant for registration or the registered proprietor of the trade mark in question without (if duly required so to do within the prescribed time) giving to the applicant or registered proprietor an opportunity of being heard.

51 Power of Controller to award costs.

51.—In all proceedings before the Controller under this Act, the Controller shall have power 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, by leave of the Court, be enforced in the same manner as a judgment or order of the Court to the same effect.

52 Registration to be prima facie evidence of validity.

52.—In all legal proceedings relating to a registered trade mark (including applications under section 40 of this Act) the fact that a person is registered as proprietor of the trade mark shall be prima facie evidence of the validity of the original registration of the trade mark and of all subsequent assignments and transmissions thereof.

53 Certificate of validity.

53.—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 the trade mark, the Court may certify to that effect, and if it so certifies then in any subsequent legal proceeding in which the validity of the registration comes into question the proprietor of the trade mark on obtaining a final order or judgment in his favour shall have his full costs, charges and expenses as between solicitor and client, unless in the subsequent proceeding the Court certifies that he ought not to have them.

54 Costs of the Controller in Court proceedings.

54.—In any proceedings before the Court under this Act the Controller shall be neither awarded costs nor ordered to pay the costs of any other party.

55 Trade usage and other matters to be considered.

55.—In any action or proceeding relating to a trade mark or trade name, the Court or the Controller (as the case may be) shall admit evidence of the usages of the trade concerned and of any relevant trade mark or trade name or get-up legitimately used by other persons.

56 Controller's appearance in proceedings.

56.—(1) The Controller shall be given notice in writing (by the plaintiff, appellant or applicant, as the case may be) of any legal proceeding in which the relief sought would affect the register (including an appeal from any order or decision of the Controller and an application under section 25 or 26 of this Act to extend the time for making an appeal against a decision of the Controller under either of those sections) and of the decision of the Court respecting any such legal proceeding, and shall have the right to appear and be heard, and shall appear if so directed by the Court, in any such legal proceeding.

• (2) Unless otherwise directed by the Court, the Controller in lieu of appearing and being heard may submit to the Court a statement in writing signed by him, giving particulars of the proceedings before him in relation to the matter in issue or of the grounds of any decision given by him affecting it or of the practice of the Office in like cases or of such other matters relevant to the issues, and within his knowledge as Controller, as he thinks fit, and the statement shall be deemed to form part of the evidence in the proceeding.

57 Appeal to the Court.

57.—(1) An appeal shall lie to the Court from any order or decision of the Controller under any provision of this Act (not being a decision of the Controller under section 11 or subsection (7) of section 69 of this Act) or from a correction of an error in the register by the Controller under subsection (3) of section 42 of this Act, and the Court may make such order confirming, annulling or varying the order or decision or correction of the Controller as it thinks fit.

• (2) In any appeal from a decision of the Controller to the Court under this Act, the Court shall have and exercise the same discretionary powers as under this Act are conferred upon the Controller.

• (3) Except by leave of the Court, no appeal (other than an appeal under section 25 or 26 of this Act) from an order or decision of the Controller or from a correction of an error in the register by the Controller under subsection (3) of section 42 of this Act shall be entertained of which notice to the Court is not given within one month from the date of the order, decision or correction appealed against or within such further period not exceeding three months as the Controller may allow (upon request received before the expiration of the said period of one month).

• (4) Subject to subsection (5) of this section, a decision of the Court under this section shall be final and not appealable.

• (5) By leave of the Court, an appeal from a decision of the Court under this section shall lie to the Supreme Court on a specified question of law.

58 Court's power to review Controller's decision.

58.—The Court, in dealing with any question of the rectification of the register (including all applications under section 40 of this Act), shall have power to review any decision of the Controller relating to the entry in question or the correction sought to be made.

59 Procedure in cases of option to apply to Court or Controller.

59.—Where under this Act an applicant has an option to make an application either to the Court or to the Controller—

• (a) if an action concerning the trade mark in question is pending, the application must be made to the Court;

• (b) if in any other case the application is made to the Controller, he may, at any stage of the proceedings, refer the application to the Court, or he may, after hearing the parties, determine the question between them, subject to appeal to the Court.

60 Mode of giving evidence.

60.—(1) In any proceeding under this Act before the Controller, the evidence shall be given by statutory declaration in the absence of directions to the contrary, but, in any case in which the Controller thinks it right so to do, the Controller may take evidence orally in lieu of or in addition to evidence by declaration.

• (2) 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.

• (3) In case any part of the evidence is taken orally the Controller may do all or any of the following things:—

• (a) summon witnesses to attend before him,

• (b) examine on oath (which he is hereby authorised to administer), or permit the examination on oath of, the witnesses attending before him,

• (c) require any such witness to produce to the Controller any document in such witness's power or control.

• (4) A witness before the Controller shall be entitled to the same immunities and privileges as if he were a witness before the Court.

• (5) A summons shall be signed by the Controller.

• (6) If any person—

• (a) on being duly summoned as a witness before the Controller makes default in attending, or

• (b) being in attendance as a witness refuses to take an oath legally required by the Controller to be taken, or to produce any document in his power or control legally required by the Controller to be produced by him, or to answer any question to which the Controller may legally require an answer, or

• (c) does any other thing which would, if the Controller were a court of law, having power to commit for contempt of court, be contempt of such court,

the Controller may certify the offence of that person under his official seal to the Court and the Court may, after such inquiry as it thinks proper to make, punish or take steps for the punishment of that person in like manner as if he had been guilty of contempt of the Court.

61 Evidence of entries in register.

61.—(1) A copy of any entry in the register, purporting to be certified by, and sealed with the official seal of, the Controller, shall be admitted in evidence in any court of law, and in all proceedings, without further proof or production of the original.

• (2) Any person requiring such a certified copy as aforesaid shall be entitled to obtain it on payment of the prescribed fee.

62 Evidence of things done by Controller.

62.—A certificate purporting to be under the official seal of the Controller as to any entry, matter or thing that he is authorised by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, and of the matter or thing having been done or not done.

PART IV. Miscellaneous.

63 Falsification of entries in register.

63.—A person who makes or causes to be made a false entry in the register, or a writing falsely purporting to be a copy of an entry in the register, or who produces or tenders or causes to be produced or tendered in evidence any such writing, knowing the entry or writing to be false, shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding one hundred pounds or, at the discretion of the court, to imprisonment for any term not exceeding three months or to both such fine and such imprisonment.

64 Fine for falsely representing a trade mark as registered.

64.—(1) Any person who makes a representation—

• (a) with respect to a mark not being a registered trade mark, to the effect that it is a registered trade mark; or

• (b) with respect to a part of a registered trade mark not being a part separately registered as a trade mark, to the effect that it is so registered; or

• (c) to the effect that a registered trade mark is registered in respect of any goods in respect of which it is not registered; or

• (d) to the effect that the registration of a trade mark gives an exclusive right to the use thereof in any circumstances in which, having regard to limitations entered on the register, the registration does not give that right;

shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding twenty pounds and, in the case of a continuing offence, a further fine not exceeding five pounds for every day on which the offence continues.

• (2) For the purposes of this section, the use in the State in relation to a trade mark of the word “registered”, or of any other word referring whether expressly or impliedly to registration, or of a prescribed symbol shall be deemed to import a reference to registration in the register, except—

• (a) where that word or that symbol is used in physical association with words delineated in characters at least as large as those in which that word or that symbol is delineated and indicating that the reference is to registration as a trade mark under the law of a place outside the State, being a place under the law of which the registration referred to is in fact in force;

• (b) where that word (being a word other than the word “registered”) or that symbol is of itself such as to indicate that the reference is to such registration as last aforesaid; or

• (c) where that word or that symbol is used in relation to a mark registered as a trade mark under the law of a place outside the State and in relation to goods to be exported to that place.

65 Unauthorised user of State badges.

65.—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, the Defence Forces, any officer of the State or any Department of State (or any badge, device, emblem, or flag so closely resembling the same as to be likely to deceive) in such manner as to be likely to lead to the belief that he is duly authorised to 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, to a further fine not exceeding five pounds for every day on which the offence continues) or, at the discretion of the court, to imprisonment for any term not exceeding three months.

66 Change of form of trade connection not to be deemed to cause deception.

66.—The use of a registered trade mark in relation to goods between which and the person using it any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the trade mark has been, or is, used in relation to goods between which and that person or a predecessor in title of his a different form of connection in the course of trade subsisted or subsists.

67 Jointly owned trade marks.

67.—(1) Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except—

• (a) on behalf of both or all of them, or

• (b) in relation to an article with which both or all of them are connected in the course of trade,

those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person:

Provided that the rights of any person who is so registered shall be deemed to be infringed by any other of the said persons who uses the trade mark in physical or other relation to goods in respect of which the trade mark is registered under this section, but with which both or all of the said persons are not and have not been connected in the course of trade.

• (2) Subject to subsection (1) of this section, nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.

68 Trusts and equities.

68.—(1) There shall not be entered in the register any notice of any trust express, implied or constructive, nor shall any such notice be receivable by the Controller.

• (2) Subject to this Act, equities in respect of a trade mark may be enforced in like manner as in respect of any other personal property.

69 Recognition and registration of trade mark agents.

69.—(1) Whenever under this Act any act has to be done by or to any person in connection with a trade mark or any procedure relating to a trade mark or the registration thereof, the act (if not excepted by the rules) may, under and in accordance with rules made under this section or, in particular cases, with the consent of the Minister, be done by or to an agent of that person duly authorised in the prescribed manner and, if acting for gain, registered in the register kept under subsection (2) of this section.

• (2) There shall be kept at the Office a register which shall be called the register of trade mark agents, and no person shall, either alone or in partnership with any other person, practise, describe himself, hold himself out, or permit himself to be described or held out, as a trade mark agent, unless he is registered in the register of trade mark agents, and a partnership shall not so practise, describe itself, hold itself out, or permit itself so to be described or held out, unless all the partners are so registered.

• (3) Any person who—

• (a) resides in the State,

• (b) has a place of business in the State,

• (c) is not an alien (within the meaning of section 2 of the Irish Nationality and Citizenship Act, 1956),

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

• (e) complies with the prescribed conditions,

shall be eligible to be registered in the register of trade mark agents, and a partnership shall be so eligible if every partner thereof is registered in accordance with this section, and a person or partnership so eligible shall on application in the prescribed form and manner and on payment of the prescribed fee, be so registered.

• (4) Notwithstanding subsection (3) of this section any person who has been in continuous practice as a trade mark agent in the State for a period of five years before the commencement of this Act and makes application (in the prescribed form and manner and upon payment of the prescribed fee) for registration within twelve months from the commencement of this Act shall be eligible to be registered in the register of trade mark agents.

• (5) Any person who at any time after the expiration of three months from the commencement of this Act contravenes this section shall be guilty of an offence under this section and shall be liable on summary conviction thereof to a fine not exceeding, in the case of a first offence, twenty pounds and, in the case of a second or subsequent offence, one hundred pounds.

• (6) Any person registered in the register of trade mark agents who—

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

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

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

• (7)
• (a) Where a person registered in the register of trade mark agents is found by the Controller, after due inquiry by the Controller (including the hearing by the Controller of representations, if any, by the person), to have been guilty of conduct disgraceful to that person in a professional respect, the Controller may, if he sees fit, decide that the name of that person should be erased from the register of trade mark agents.

• (b) On making a decision under this subsection, the Controller shall forthwith send by post to the person to whom the decision relates, at his address as stated in the register of trade mark agents, a notice in writing stating the decision, the date thereof and the reason therefor.

• (c) A person to whom a decision of the Controller under this subsection relates may, within the period of fourteen days beginning on the date of the decision, on giving notice to the Controller in the prescribed manner apply to the Court for cancellation of the decision, and if he so applies—

• (i) the Court, on the hearing of the application, may either—

• (I) cancel the decision, or

• (II) confirm the decision and direct the Controller to erase the name of such person from the register of trade mark agents,

• (ii) if at any time the Controller satisfies the Court that such person has delayed unduly in proceeding with the application, the Court shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register,

• (iii) the Court may, subject to section 54 of this Act, direct how the costs of the application are to be borne.

• (d) Where a person to whom a decision of the Controller under this subsection relates does not, within the period of fourteen days beginning on the date of the decision, apply to the Court for cancellation of the decision, the Controller may apply ex parte to the Court for confirmation of the decision and, if the Controller so applies, the Court, on the hearing of the application, shall, unless it sees good reason to the contrary, confirm the decision and direct the Controller to erase the name of such person from the register of trade mark agents.

• (e) The decision of the Court on an application under this subsection shall be final, save that, by leave of the Court, an appeal, by the Controller or the person concerned, from the decision shall lie to the Supreme Court on a specified question of law.

• (f) On erasing the name of a person from the register of trade mark agents under this subsection, the Controller shall forthwith send by post to such person, at his address as stated in the register of trade mark agents, notice in writing of the erasure.

• (g) A person whose name has been erased from the register of trade mark agents under this subsection may at any time be restored to the register by special direction of the Controller but not otherwise, and when a person is so restored to the register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by such person if he was then being registered for the first time) as the Controller thinks fit.

• (8) A person (in this subsection referred to as an agent) duly authorised by any person under subsection (1) of this section to act as his agent may (subject to any provision to the contrary in any agreement between the agent and that person), on giving notice to the Controller and that person, cease to act as agent for that person.

• (9) The Minister may by order make rules under this section for the management of the register of trade mark agents, and may by such rules prescribe any matter or thing referred to in this section as prescribed, and in particular may so prescribe the educational and professional qualifications and the conditions for eligibility for registration in the register of trade mark agents, and the maximum fees which may be charged by any person registered in the register of trade mark agents for such services in connection with the registration of trade marks as may be specified in such rules.

• (10)
• (a) A person who is registered in the register of trade mark agents shall not be guilty of an offence under section 58 of the Solicitors Act, 1954, by reason only of the preparation by him for use in proceedings under this Act before the Controller or the Court of any document other than a deed.

• (b) Notwithstanding subsection (5) of this section, it shall not be an offence under this section for the legal personal representative of a deceased trade mark agent to carry on business or practise in the name of that deceased trade mark agent for a period not exceeding three years from the death of that trade mark agent, or for such further period (if any) as the Court allows, if the legal personal representative is himself a trade mark agent or employs a trade mark agent to manage the business or practice on his behalf.

• (11) Notwithstanding subsection (3) of this section, the Minister may, with a view to the fulfilment by the Government on behalf of the State of any international agreement to which the State is a party, by order declare that a citizen of a particular state (being a state which is also a party to that international agreement) shall, if he otherwise complies with that subsection, be eligible to be registered in the register of trade mark agents.

• (12) Notwithstanding subsection (4) of section 10 of the Petty Sessions (Ireland) Act, 1851, summary proceedings for an offence under this section may be instituted within twelve months from the date of the offence.

70 International agreements.

70.—(1) Where any person has applied, in a foreign state which is a party to any international agreement for the mutual protection of trade marks to which the State is a party, for protection of a trade mark of which that person is the proprietor, that person or his legal representative or assignee shall be entitled to registration under this Act of that trade mark in priority to other applicants; and the registration shall have the same date as the date of the application in that foreign state:

Provided that—

• (a) the application in the State is made within the prescribed period, and

• (b) nothing in this section shall entitle the proprietor of a trade mark to recover damages for any infringement occurring prior to the date which, but for subsection (1) of section 27 of this Act, would have been the date of registration of that trade mark.

• (2) The registration under this Act of a trade mark to which this section applies shall not be invalidated by reason only of the use of that trade mark in the State during the period prescribed under paragraph (a) of subsection (1) of this section as that within which the application for such registration may be made.

• (3) An application for the registration under this Act of a trade mark to which this section applies shall be made in the manner specified in section 25 of or, in the case of a certification trade mark in the manner specified in the First Schedule to this Act.

• (4) Any person who by an application which—

• (a) in accordance with the law of any foreign state is equivalent to an application duly made in that foreign state or

• (b) in accordance with the terms of any international agreement subsisting between any two or more foreign states is equivalent to an application duly made in one of those foreign states,

has applied for protection of a trade mark of which he is the proprietor shall for the purpose of this section be deemed to have so applied in that foreign state.

• (5) This section shall apply only in the case of those foreign states with respect to which the Government, by order, declares it to be applicable and so long only in the case of each foreign state as the order continues in force with respect to that foreign state.

• (6) In this section “foreign state” includes any territory for the foreign relations of which any state (being a state which is a party to any international agreement for the mutual protection of trade marks to which the State is a party) considers itself responsible.

71 Offences by bodies corporate or unincorporated bodies.

71.—Where an offence under section 63, 64, 65, or 69 of this Act—

• (a) is committed by a body corporate or a partnership or by a person purporting to act on behalf of a body corporate or a partnership, and

• (b) is proved to have been so committed with the consent or approval of, or to have been facilitated by any default on the part of, any person being, in the case of a body corporate, a director thereof, or, in the case of a partnership, a partner thereof,

that person shall also be guilty of the offence.

72 Transitional provisions.

72.—The transitional provisions set out in the Second Schedule to this Act shall have effect with respect to the matters therein mentioned respectively.

FIRST SCHEDULE. Certification Trade Marks.

• (2) The provisions of subsection (2) and of subsections (4) to (8) of section 25 of this Act shall have effect in relation to an application under the said section 45 as they have effect in relation to an application under subsection (1) of the said section 25, except that for references therein to acceptance of an application there shall be substituted references to authorisation to proceed with the application.

• (3) In dealing under the said provisions with an application under the said section 45, the Court or the Controller (as the case may be) shall have regard to the like considerations so far as relevant, as if the application were an application under the said section 25 of this Act and to any other considerations (not being matters within the competence of the Minister under subparagraph (5) of this paragraph) relevant to applications under the said section 45, including the desirability of securing that a certification trade mark shall comprise some indication that it is such a trade mark.

• (4) An applicant for the registration of a mark under the said section 45 shall transmit to the Controller draft regulations for governing the use thereof at such time before the decision of the Controller on the application as he may require in order to enable him to consider the draft, and the Controller shall report thereon to the Minister.

• (5) When authorisation to proceed with an application has been given, the Minister shall consider the application with regard to the following matters, that is to say:—

• (a) whether the applicant is competent to certify the goods in respect of which the mark is to be registered;

• (b) whether the draft regulations are satisfactory; and

• (c) whether in all the circumstances the registration applied for would be to the public advantage;

and may either—

• (i) direct that the application shall not be accepted; or

• (ii) direct the Controller to accept the application, and approve the regulations, either without modification and unconditionally or subject to any conditions or limitations, or to any amendments or modifications of the application or of the regulations, which he thinks requisite having regard to any of the matters aforesaid;

but, except in the case of a direction for acceptance and approval without modification and unconditionally, the Minister shall not decide the matter without giving to the applicant an opportunity of being heard:

Provided that the Minister may, at the request of the applicant made with the concurrence of the Controller, consider the application with regard to any of the matters aforesaid before authorisation to proceed with the application has been given, so however that the Minister shall be at liberty to reconsider any matter on which he has given a decision under this proviso if any amendment or modification is thereafter made in the application or in the draft regulations.

Provided that, in deciding under the said provisions, the Court or the Controller (as the case may be) shall have regard only to the considerations referred to in subparagraph (3) of paragraph 1 of this Schedule, and a decision under the said provisions in favour of the applicant shall be conditional on the determination in his favour by the Minister under subparagraph (2) of this paragraph of any opposition relating to any of the matters referred to in subparagraph (5) of the said paragraph 1.

• (2) When notice of opposition is given relating to any of the matters referred to in subparagraph (5) of paragraph 1 of this Schedule, the Minister shall, after hearing the parties, if so required, and considering any evidence, decide whether, and subject to what conditions or limitations, or amendments or modifications of the application or of the regulations, if any, registration is, having regard to those matters, to be permitted.

• (2) The Minister may cause an application for his consent to be advertised in any case where it appears to him that it is expedient so to do, and, where the Minister causes an application to be advertised, if within the prescribed time from the date of the advertisement any person gives notice to him of opposition to the application, he shall not decide the matter without giving the parties an opportunity of being heard.

• (a) that the proprietor is no longer competent, in the case of any of the goods in respect of which the trade mark is registered, to certify those goods;

• (b) that the proprietor has failed to observe a provision of the deposited regulations to be observed on his part;

• (c) that it is no longer to the public advantage that the trade mark should be registered; or

• (d) that it is requisite for the public advantage that, if the trade mark remains registered, the regulations should be varied;

and neither the Court nor the Controller shall have any jurisdiction to make an order under section 40 of this Act on any of those grounds.

• (2) The Controller shall rectify the register and the deposited regulations in such manner as may be requisite for giving effect to an order made under subparagraph (1) of this paragraph.

SECOND SCHEDULE. Transitional Provisions.

Preservation for three years of rights under section 82 (2) of Act of 1927.

Assignments and transmissions before the commencement of this Act giving exclusive rights in different places in the State.

Provided that, on application made in the prescribed manner within three years from the commencement of this Act, by a person who claims that an assignment or transmission of a registered trade mark to him or to a predecessor in title of his has been so effected, the Controller shall have the like jurisdiction as under the proviso to subsection (6) of the said section 30, and an assignment or transmission approved by him shall not be deemed to have been invalid on the ground of the subsistence of such rights as are mentioned in the said subsection (6) or on the ground that the assignment or transmission was effected otherwise than in connection with the goodwill of a business or was effected in respect of some (but not all) of the goods in respect of which the trade mark was registered, if application for the registration under section 33 of this Act of the title of the person becoming entitled is made within six months from the date on which the approval is given, or was made before that date.

Saving as to retrospective provisions relating to assignments and transmissions.

Association of trade marks assignable or transmissible as a whole.

Previous use of a trade mark by person becoming registered user on application made within three years of appointed day.

Use of trade mark for export trade before appointed day.

Trade marks registered under section 123 of the Industrial and Commercial Property (Protection) Act, 1927 to be deemed to have been registered under section 45 of this Act.

• (a) the proviso to subsection (1) of the said section 45 shall not apply;

• (b) in a case in which regulations for governing the use of the trade mark are deposited at the Office at the commencement of this Act, those regulations shall be deemed to have been deposited under the said section 45;

• (c) in a case in which no such regulations are deposited at the commencement of this Act, the proprietor shall be at liberty, or may be required by the Minister as a condition of the continuance of the registration, to deposit at any time thereafter such regulations as the Minister may permit or require; and

• (d) in a case in which no such regulations are for the time being deposited, the said section 45 shall have effect as if references therein, and in the First Schedule to this Act, to the regulations had been omitted.