Trade Marks Act , 1996

PART I Preliminary and General

1 Short title and commencement.

1.—(1) This Act may be cited as the Trade Marks Act, 1996.

(2) The provisions of the Act shall come into operation on such day as the Minister may by order fix.

(3) Different days may be so fixed for different provisions and different purposes.

2 Interpretation.

2.—(1) In this Act, except where the context otherwise requires—

“the Act of 1963”means the Trade Marks Act, 1963;

“assignment” means assignment by act of the parties concerned;

“business” includes a trade or profession;

“Community trade mark”, and “Community Trade Mark Regulation” have the meanings assigned by section 56;

“the Controller” means the Controller of Patents, Designs and Trade Marks;

“Convention country” has the meaning assigned by section 60;

“the Court” means the High Court;

“director”, in relation to a body corporate whose affairs are managed by its members, means any member of the body;

“earlier trade mark” has the meaning assigned by section 11;

“exclusive licence” and “exclusive licensee” have the meanings assigned by section 33;

“infringement proceedings”, in relation to a registered trade mark, include proceedings under section 20;

“the Journal” means the Patents Office Journal;

“the Minister” means the Minister for Enterprise and Employment;

“the Office” means the Patents Office;

“the Paris Convention” has the meaning assigned by section 60;

“partnership” has the meaning assigned by section 1 of the Partnership Act, 1890;

“prescribed” means, in relation to proceedings before the Court, prescribed by rules of court and, in any other case, prescribed by this Act or orders, rules or regulations made hereunder;

“publish” means make available to the public, and references to publication—

(a) in relation to an application for registration, are to publication under section 43 (1), and

(b) in relation to registration, are to publication under section 45 (4);

“the register”, except in Part V, means the Register of Trade Marks kept under this Act;

“rules”, except in relation to rules of court, mean rules made by the Minister under section 81;

“State emblem of Ireland” means any emblem notified as such under Article 6ter of the Paris Convention;

“trade” includes any business or profession;

“trade mark” has the meaning assigned by section 6.

(2) References in this Act to use (or any particular description of use) of a trade mark, or of a sign identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use) otherwise than by means of a graphic representation.

(3) Any reference in this Act to a Community instrument includes a reference to any instrument amending or replacing that instrument.

(4) In this Act—

(a) a reference to a Part or section is to a Part or section of this Act, unless it is indicated that reference to some other enactment is intended; and

(b) a reference to a subsection or paragraph is to the subsection or paragraph of the provision in which the reference occurs, unless it is indicated that some other provision is intended.

(5) In this Act a reference to an enactment includes a reference to that enactment as amended by or under any other enactment, including this Act.

3 Orders, regulations and rules.

3.—(1) Where a power to make orders, regulations or rules is conferred by this Act, such orders, regulations or rules may be made either in respect of all, or in respect of any one or more, of the matters to which the power relates, and different provisions may be made by any such orders, regulations or rules in respect of matters which are of different classes or descriptions.

(2) Subject to subsection (3), every order, regulation or rule made under this Act shall be laid before each House of the Oireachtas as soon as may be after it is made and, if a resolution annulling the order, regulation or rule is passed by either such House within the next twenty-one days on which that House has sat after the order, regulation or rule is laid before it, the order, regulation or rule shall be annulled accordingly, but without prejudice to the validity of anything previously done thereunder.

(3) Where—

(a) a regulation is proposed to be made under section 57 or section 59, or

(b) an order is proposed to be made under section 60,

subsection (2) shall not apply and a draft of the order or regulation shall be laid before both Houses of the Oireachtas, and the order or regulation shall not be made until a resolution approving the draft has been passed by each House.

(4) As soon as may be after any order, regulation or rule is made under this Act, notice of the making thereof and of the place where copies thereof may be obtained, shall be published in the Journal.

(5) Any power under this Act to make an order includes power to amend or revoke an order made in the exercise of that power except in the case of an order under section 1 (2).

4 Expenses.

4.—The expenses incurred by the Minister in the administration of this Act shall, to such extent as may be sanctioned by the Minister for Finance, be paid out of moneys provided by the Oireachtas.

5 Repeal.

5.—Subject to the provisions of section 100, the Act of 1963 is hereby repealed.

PART II Register Trade Marks

Introductory

6 Trade marks.

6.—(1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

(2) Without prejudice to subsection (1), a trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or of their packaging.

(3) References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark within the meaning of section 54 or a certification mark within the meaning of section 55.

7 Registered trade marks.

7.—(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark shall have the rights and remedies provided by this Act.

(2) No proceedings shall lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act shall affect the law relating to passing off.

Grounds for Refusal of Registration

8 Absolute grounds for refusal of registration.

8.—(1) The following shall not be registered as trade marks:

(a) signs which do not satisfy the requirements of section 6 (1);

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

(2) A sign shall not be registered as a trade mark if it consists exclusively of—

(a) the shape which results from the nature of the goods themselves; or

(b) the shape of goods which is necessary to obtain a technical result; or

(c) the shape which gives substantial value to the goods.

(3) A trade mark shall not be registered if—

(a) it is contrary to public policy or to accepted principles of morality; or

(b) it is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

(4) A trade mark shall not be registered if or to the extent that—

(a) its use is prohibited in the State by any enactment or rule of law or by any provision of Community law; or

(b) the application for registration is made in bad faith by the applicant.

9 Specially protected emblems.

9.—(1) A trade mark which consists of or contains any State emblem of Ireland or any insignia or device so nearly resembling such emblem that it may be mistaken for such emblem shall not be registered unless the Controller is satisfied that consent for its registration has been given by the Minister.

(2) A trade mark which consists of or contains a representation of the national flag of the State, as defined by Article 7 of the Constitution, shall not be registered if it appears to the Controller that the use of the trade mark would be misleading or grossly offensive.

(3) The Controller may refuse to register a trade mark which consists of or contains any badge, device or emblem of a public authority unless such consent as is required by rules is obtained.

10 Relative grounds for refusal of registration.

10.—(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.

(2) A trade mark shall not be registered if because—

(a) it is identical with an earlier trade mark and would be registered for goods or services similar to those for which the earlier trade mark is protected, or

(b) it is similar to an earlier trade mark and would be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the later trade mark with the earlier trade mark.

(3) A trade mark which—

(a) is identical with or similar to an earlier trade mark, and

(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the State (or, in the case of a Community trade mark, in the Community) and the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier trade mark.

(4) A trade mark shall not be registered if, or to the extent that, its use in the State is liable to be prevented—

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade; or

(b) by virtue of an earlier right, other than those referred to in subsections (1) to (3) and paragraph (a), in particular by virtue of the law of copyright, registered designs or any other law relating to a right to a name, a right of personal portrayal or an industrial property right.

(5) Where by virtue of any such rule of law or earlier right as is referred to in subsection (4) a person would be entitled to prevent the use of a trade mark, that person is in this Act referred to as the proprietor of an “earlier right” in relation to the trade mark.

(6) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.

11 Meaning of “earlier trade mark”.

11.—(1) In this Act an “earlier trade mark” means—

(a) a registered trade mark, an international trade mark or a Community trade mark which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks;

(b) a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark, even when the latter trade mark has been surrendered or allowed to lapse; or

(c) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention as a well-known trade mark.

(2) References in this Act to an earlier trade mark include references to a trade mark in respect of which an application for registration has been made and which, subject to its being registered, would be an earlier trade mark by virtue of subsection (1) (a) or (b).

(3) Where the registration of a trade mark specified in subsection (1) (a) or (b) expires, the trade mark shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry unless the Controller is satisfied that there was no bona fide use of the trade mark during the two years immediately preceding the expiry.

12 Raising of relative grounds in case of honest concurrent use.

12.—(1) This section applies where on an application for the registration of a trade mark it appears to the Controller—

(a) that there is an earlier trade mark in relation to which any of the conditions set out in subsections (1) to (3) of section 10 obtains, or

(b) that there is an earlier right in relation to which the condition set out in section 10(4) is satisfied,

but the applicant shows to the satisfaction of the Controller that there has been honest concurrent use of the trade mark for which registration is sought.

(2) In a case to which this section applies, the Controller shall not refuse the application by reason of the earlier trade mark or other earlier right unless objection on that ground is raised in opposition proceedings by the proprietor of that earlier trade mark or other earlier right.

(3) For the purposes of this section “honest concurrent use” means such use in the State, by the applicant or with his consent, as would formerly have amounted to honest concurrent use for the purposes of section 20(2) of the Trade Marks Act, 1963.

(4) Nothing in this section affects—

(a) the refusal of registration on the grounds mentioned in section 8; or

(b) the making of an application for a declaration of invalidity under section 52 (2).

Effects of Registered Trade Mark

13 Rights conferred by registered trade mark.

13.—(1) The proprietor of a registered trade mark shall have exclusive rights in the trade mark and such rights shall be infringed by the use of that trade mark in the State without the proprietor's consent; and the acts referred to in section 14, if done without that consent, shall constitute infringement of the proprietor's rights.

(2) References in this Act to the infringement of a registered trade mark are references to any infringement of the rights of the proprietor of the registered trade mark.

(3) The rights of the proprietor of a registered trade mark shall have effect from the date of registration of the trade mark (as determined under section 45 (3)).

(4) Notwithstanding subsection (3)—

(a) no infringement proceedings may be begun before the date of publication of the registration of the trade mark; and

(b) no offence shall be regarded as committed under section 92 by anything done before that date.

14 Infringement of registered trade mark.

14.—(1) A person shall infringe a registered trade mark if that person uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

(2) A person shall infringe a registered trade mark if that person uses in the course of trade a sign where because—

(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association of the sign with the trade mark.

(3) A person shall infringe a registered trade mark if that person uses in the course of trade a sign which—

(a) is identical with or similar to the trade mark, and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the State and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.

(4) For the purposes of this section, use of a sign shall include, in particular—

(a) affixing it to goods or the packaging thereof;

(b) offering or exposing goods for sale, putting them on the market or stocking them for those purposes under the sign, or offering or supplying services under the sign;

(c) importing or exporting goods under the sign; or

(d) using the sign on business papers or in advertising.

(5) A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services shall be treated as a party to any use of the material which infringes the registered trade mark if, when that person applied the mark, that person knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee of the registered trade mark.

(6) Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or licensee of the registered trade mark; but any such use, otherwise than in accordance with honest practices in industrial or commercial matters, shall be treated as infringing the registered trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trade mark.

15 Limits on effect of registered trade mark.

15.—(1) A registered trade mark shall not be infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered, but subject to section 52 (6).

(2) A registered trade mark shall not be infringed by—

(a) the use by a person of his own name or address;

(b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service or other characteristics of goods or services; or

(c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts:

Provided that such use is in accordance with honest practices in industrial and commercial matters.

(3) A registered trade mark shall not be infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.

(4) For the purpose of subsection (3) an “earlier right” means an unregistered trade mark or other sign continuously used in relation to goods or services by, or by a predecessor in title of, a person from a date prior to whichever is the earlier of—

(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of the proprietor; and

(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of the proprietor;

and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by any rule of law, in particular the law of passing off.

16 Exhaustion of rights conferred by registered trade mark.

16.—(1) A registered trade mark shall not be infringed by the use of the trade mark in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor of the trade mark or with the consent of the proprietor.

(2) The provisions of subsection (1) shall not apply where there exist legitimate reasons for the proprietor of the trade mark to oppose further dealings in the goods, in particular, where the condition of the goods has been changed or impaired after they have been put on the market.

17 Registration subject to disclaimer or limitation.

17.—(1) A person who applies for the registration of a trade mark or the proprietor of a registered trade mark may—

(a) disclaim any right to the exclusive use of any specified element of the trade mark, or

(b) agree that the rights conferred by the registration shall be subject to a specified territorial or other limitation;

and where the registration of a trade mark is subject to a disclaimer or limitation, the rights conferred by section 13 shall be restricted accordingly.

(2) If on an application for the registration of a trade mark, it appears to the Controller that any particular element of the trade mark is not distinctive and the inclusion of the element in the trade mark could give rise to doubts as to the scope of protection of the trade mark, he may refuse to accept the application unless the applicant agrees to make a disclaimer in respect of that element under subsection (1) (a) within such period as the Controller may specify.

(3) Particulars of any disclaimer or limitation shall be entered in the register.

Infringement Proceedings

18 Action for infringement.

18.—(1) Where a registered trade mark is infringed, the infringement shall be actionable by the proprietor of the trade mark.

(2) In an action for infringement of a registered trade mark all such relief by way of damages, injunctions, accounts or otherwise shall be available to the proprietor as is available in respect of the infringement of any other property right.

19 Order for erasure &c. of offending sign.

19.—(1) Where a person is found to have infringed a registered trade mark, the Court may make an order requiring him—

(a) to cause the offending sign to be erased, removed or obliterated from any infringing goods, material or articles in his possession, custody or control, or

(b) if it is not reasonably practicable for the offending sign to be erased, removed or obliterated, to secure the destruction of the infringing goods, materials or articles in question.

(2) If an order under subsection (1) is not complied with, or it appears to the Court likely that such an order would not be complied with, the Court may order that the infringing goods, material or articles be delivered to such person as the Court may direct for erasure, removal or obliteration of the sign, or for destruction, as the case may be.

20 Order for delivery up of infringing goods, material or articles.

20.—(1) The proprietor of a registered trade mark may apply to the Court for an order for the delivery up to the proprietor, or such other person as the Court may direct, of any infringing goods, material or articles of which a person has possession, custody or control in the course of a business or otherwise for the purpose of dealing in any way (including offering or exposing for sale or hire).

(2) An application for the delivery up of any infringing goods, material or articles shall not be made after the end of the period specified in section 22; and no order shall be made unless the Court also makes, or it appears to the Court that there are grounds for making, an order under section 23.

(3) A person to whom any infringing goods, material or articles are delivered up in pursuance of an order under this section shall, if an order under section 23 is not made, retain them pending the making of an order or the decision not to make an order under that section.

(4) Nothing in this section shall affect any other power of the Court.

21 Meaning of “infringing goods, material or articles”.

21.—(1) In this Act the expressions “infringing goods”, “infringing material” and “infringing articles” shall be construed as defined herein.

(2) Goods shall be “infringing goods”, in relation to a registered trade mark, if they or their packaging bear a sign identical or similar to that mark and either—

(a) the application of the sign to the goods or their packaging was an infringement of the registered trade mark, or

(b) they have been or are proposed to be imported into the State and the application of the mark in the State to the goods or their packaging would constitute an infringement of the registered trade mark, or

(c) the sign has otherwise been used in relation to the goods in such a way as to infringe the registered trade mark.

(3) Nothing in subsection (2) (b) shall be construed as applying to goods which may lawfully be imported into the State by virtue of any right created or arising under or by virtue of the treaties governing the European Union.

(4) Material shall be “infringing material”, in relation to a registered trade mark, if it bears a sign identical or similar to that mark and either—

(a) it is used for labelling or packaging goods, as a business paper, or for advertising goods or services, in such a way as to infringe the registered trade mark, or

(b) it is intended to be so used and such use would infringe the registered trade mark.

(5) “Infringing articles”, in relation to a registered trade mark, means articles—

(a) which are specifically designed or adapted for making copies of a sign identical or similar to that mark, and

(b) which are in the possession, custody or control, of a person who knows or has reason to believe that they have been or are to be used to produce infringing goods or material.

22 Period after which remedy of delivery up not available.

22.—(1) Subject to the provisions of this section, an application for an order under section 20 may not be made after the end of the period of six years from—

(a) in the case of infringing goods, the date on which the trade mark was applied to the goods or their packaging;

(b) in the case of infringing material, the date on which the trade mark was applied to the material; or

(c) in the case of infringing articles, the date on which they were made.

(2) If during the whole or part of the period referred to in subsection (1) the proprietor of the registered trade mark—

(a) is under a disability, or

(b) is prevented by fraud or concealment from discovering the facts entitling the proprietor to apply for an order,

an application may be made at any time before the end of the period of six years from the date on which the proprietor ceased to be under a disability or, as the case may be, could with reasonable diligence have discovered those facts.

(3) For the purposes of subsection (2) a person is under a disability if he is so for the purposes of the Statute of Limitations, 1957.

23 Order as to disposal of infringing goods, material or articles.

23.—(1) Where infringing goods, material or articles have been delivered up in pursuance of an order under section 20, an application may be made to the Court—

(a) for an order that they be destroyed or forfeited to such person as the Court thinks fit, or

(b) for a decision that no such order should be made.

(2) In considering what order (if any) should be made, the Court shall consider whether other remedies available in an action for infringement of the registered trade mark would be adequate to compensate and protect the interests of the proprietor and any licensee.

(3) Provision may be made by rules of court as to the service of notice on any person having an interest in the goods, material or articles, and any such person shall be entitled—

(a) to appear in proceedings for an order under this section, whether or not he was served with notice, and

(b) to appeal against any order made, whether or not he appeared;

and, unless the Court otherwise directs, an order shall not take effect until the end of the period within which notice of an appeal may be given or, if before the end of that period notice of appeal is duly given, until the final determination or abandonment of the proceedings on the appeal.

(4) Where there is more than one person interested in the goods, material or articles, the Court shall make such order as it thinks just.

(5) If the Court decides that no order should be made under this section, the person in whose possession, custody or control the goods, material or articles were before being delivered up shall be entitled to their return.

(6) References in this section to a person having an interest in goods, material or articles include references to any person in whose favour an order could be made under section 27 of the Copyright Act, 1963.

24 Remedy for groundless threats of infringement proceedings.

24.—(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than in relation to—

(a) the application of the mark to goods,

(b) the importation of goods to which the mark has been applied, or

(c) the supply of services under the mark,

any person aggrieved may apply to the Court for relief under this section.

(2) The relief which may be applied for as mentioned in subsection (1) is any of the following:

(a) a declaration that the threats are unjustifiable;

(b) an injunction against the continuance of the threats;

(c) damages in respect of any loss sustained by the threats.

(3) A plaintiff shall be entitled to such relief as is referred to in subsection (2) unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.

(4) Notwithstanding the provisions of subsection (3), the plaintiff shall be entitled to such relief as is referred to in subsection (2) if the plaintiff shows that the registration of the trade mark is invalid or liable to be revoked in a relevant respect.

(5) Notification that a trade mark is registered or that an application for registration has been made shall not of itself constitute a threat of proceedings for the purposes of this section.

25 Infringing goods, material or articles: powers of seizure and search.

25.—(1) If the District Court is satisfied by evidence that there is reasonable ground for believing that infringing goods, material or articles are in the possession, custody or control of any person in the course of business or otherwise for the purpose of dealing in any way (including offering or exposing for sale), the District Court may by order authorise a member of the Garda Síochána to seize the goods, material or articles without warrant and to bring them before the court.

(2) If a Judge of the District Court is satisfied by information on oath that there is reasonable ground for suspecting that infringing goods, material or articles are on any premises in the course of business or otherwise for the purpose of dealing in any way, the Judge may grant a search warrant authorising a named member of the Garda Síochána not below the rank of inspector, accompanied by such other members of the Garda Síochána as may be necessary, to enter on the premises, if need be by force, and to seize any such goods, material or articles and bring them before the court.

(3) On proof to the District Court that any goods, material or articles brought before the court under subsection (1) or (2) are infringing goods, material or articles, the court may—

(a) order them to be delivered up to the proprietor of the registered trade mark concerned;

(b) order them to be destroyed or forfeited to such person as the court thinks fit; or

(c) order them to be dealt with in such other way as the court thinks fit.

(4) The powers of the District Court under this section shall be exercisable by the Judge of the District Court for the district in which the goods, material or articles are for the time being or, as the case may be, where the premises concerned are situated.

Registered Trade Mark as Object of Property

26 Nature of registered trade mark.

26.—A registered trade mark is personal property.

27 Jointly owned trade marks.

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

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

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

those persons may be registered as joint proprietors of the trade mark.

(2) Except as provided by subsection (1), nothing in this Act shall permit the registration as joint proprietors of a trade mark of two or more persons who use, or propose to use, the trade mark independently.

(3) Subject to subsection (4), where, in accordance with subsection (1), two or more persons are registered as joint proprietors of a trade mark, this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights were vested in a single person.

(4) The rights of any one of the persons who are registered as joint proprietors of a trade mark (in this subsection referred to as “the joint owners”) shall be deemed to be infringed by any other of the joint owners who uses the trade mark in physical or other relation to goods or services—

(a) in respect of which the trade mark is so registered; but

(b) with which both or all of the joint owners are not and have not been connected in the course of trade.

28 Assignment &c. of registered trade mark.

28.—(1) A registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal property, and shall be so transmissible either in connection with the goodwill of a business or independently.

(2) An assignment or other transmission of a registered trade mark may be partial, that is, limited so as to apply—

(a) in relation to some but not all of the goods or services for which the trade mark is registered; or

(b) in relation to use of the trade mark in a particular manner or a particular locality.

(3) An assignment of a registered trade mark, or a vesting assent relating to a registered trade mark, shall not be effective unless it is in writing signed by or on behalf of the assignor or, as the case may be, a personal representative; and this requirement may be satisfied in a case where the assignor or personal representative is a body corporate by the affixing of its seal.

(4) Subsections (1) to (3) shall apply to assignment by way of security as in relation to any other assignment.

(5) A registered trade mark may be the subject of a charge in the same way as other personal property.

(6) Nothing in this Act shall be construed as affecting the assignment or other transmission of an unregistered trade mark as part of the goodwill of a business.

29 Registration of transactions affecting registered trade mark.

29.—(1) On application being made to the Controller in the prescribed manner by—

(a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction, or

(b) any other person claiming to be affected by such a transaction,

particulars of the transaction shall be entered in the register in the prescribed manner.

(2) The following are registrable transactions for the purposes of this Act—

(a) an assignment of a registered trade mark or any right in it;

(b) the grant or assignment of a licence under a registered trade mark;

(c) the granting of any security interest (whether fixed or floating) over a registered trade mark or any right in or under it;

(d) the making by a personal representative of a vesting assent in relation to a registered trade mark or any right in or under it; and

(e) an order of a court or other competent authority transferring a registered trade mark or any right in or under it.

(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction—

(a) the transaction shall be ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of it; and

(b) a person claiming to be a licensee by virtue of the transaction shall not have the protection of section 34 or 35.

(4) Where a person becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction, then unless—

(a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with the date of the transaction, or

(b) the Court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter,

that person shall not be entitled to damages or an account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the application for registration of the prescribed particulars is made.

(5) Provision may be made by rules with respect to the amendment or deletion of particulars of registrable transactions entered in the register by virtue of this section.

30 Trusts and equities.

30.—(1) No notice of any trust (express, implied or constructive) shall be entered in the register; and the Controller shall not be affected by any such notice.

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

31 Application for registration of trade mark as an object of property.

31.—(1) The provisions of sections 26 to 30 shall apply, with the necessary modifications, in relation to an application for the registration of a trade mark as they apply in relation to a registered trade mark.

(2) In section 29 as it applies in relation to a transaction affecting an application for the registration of a trade mark, the references to the entry of particulars in the register, and to the making of an application to register particulars, shall be construed as references to the giving of notice to the Controller of those particulars.

(3) The procedure subsequent to the giving of notice as mentioned in subsection (2) shall be such as may be prescribed by rules.

Licensing

32 Licensing of registered trade mark.

32.—(1) A licence to use a registered trade mark may be general or limited.

(2) A limited licence may, in particular, apply—

(a) in relation to some but not all of the goods or services for which the trade mark is registered; or

(b) in relation to use of the trade mark in a particular manner or a particular locality.

(3) A licence shall not be effective unless it is in writing signed by or on behalf of the grantor and this requirement may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.

(4) Unless the licence provides otherwise, it shall be binding on a successor in title to the grantor's interest; and references in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly.

(5) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.

33 Exclusive licences.

33.—(1) In this Act an “exclusive licence” means a licence (whether general or limited) authorising the licensee, to the

exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence; and the expression “exclusive licensee” shall be construed accordingly.

(2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as the exclusive licensee has against the person granting the licence.

34 General provisions as to rights of licensees in case of infringement.

34.—(1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark, except where or to the extent that, by virtue of section 35 (2), the licensee has a right to bring proceedings in the licensee's own name.

(2) A licensee is entitled, unless the licence, or any licence through which the licensee's interest is derived, provides otherwise, to call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects the licensee's interests.

(3) If the proprietor—

(a) refuses to take proceedings when called upon under subsection (2), or

(b) fails to do so within two months after being so called upon,

the licensee may bring the proceedings in his own name as if he were the proprietor.

(4) Where infringement proceedings are brought by a licensee by virtue of this section, the licensee may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant; but this subsection does not affect the granting of interlocutory relief on an application by a licensee alone.

(5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be liable for any costs in the action unless he takes part in the proceedings.

(6) In infringement proceedings brought by the proprietor of a registered trade mark the Court shall take into account any loss suffered or likely to be suffered by licensees; and the Court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees.

(7) The provisions of this section shall apply in relation to an exclusive licensee if or to the extent that the licensee has, by virtue of section 35 (1), the rights and remedies of an assignee as if the licensee were the proprietor of the registered trade mark.

35 Exclusive licensee having rights and remedies of assignee.

35.—(1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment.

(2) Where or to the extent that provision is made as mentioned in subsection (1), the licensee shall be entitled, subject to the provisions of the licence and to the following provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in the licensee's own name.

(3) Any such rights and remedies of an exclusive licensee shall be concurrent with those of the proprietor of the registered trade mark; and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly.

(4) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark.

36 Exercise of concurrent rights.

36.—(1) Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the Court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant; but this subsection does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone.

(2) A person who is added as a defendant as mentioned in subsection (1) shall not be liable for any costs in the action unless he takes part in the proceedings.

(3) Where an action for infringement of a registered trade mark is brought which relates (wholly or partly) to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action—

(a) the Court shall in assessing damages take into account—

(i) the terms of the licence, and

(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;

(b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and

(c) the Court shall, if an account of profits is directed, apportion the profits between them as the Court considers just, subject to any agreement between them.

(4) The provisions of subsection (3) apply whether or not the proprietor and the exclusive licensee are both parties to the action; and if they are not both parties the Court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.

(5) The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 20; and the Court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.

(6) The provisions of this section shall have effect subject to anyagreement to the contrary between the exclusive licensee and the proprietor.

Application for Registered Trade Mark

37 Application for registration.

37.—(1) An application for registration of a trade mark shall be made to the Controller in such manner and containing such information as may be prescribed.

(2) The application shall state that the trade mark is being used, by or with the consent of the applicant, in relation to the goods or services specified in the application, or that the applicant has a bona fide intention that it should be so used.

(3) The application shall be subject to the payment of the appropriate fee or fees.

38 Date of filing.

38.—(1) The date of filing of an application for registration of a trade mark is the date on which the prescribed documents are furnished to the Controller by the applicant; and if those documents are furnished on different days, the date of filing is the last of those days.

(2) References in this Act to the date of application for registration are to the date of filing of the application.

39 Classification of goods and services.

39.—(1) Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification; and every trade mark shall be registered in respect of particular goods or services or in respect of classes of goods or services.

(2) Any question arising as to the class within which any goods or services fall shall be determined by the Controller, whose decision shall be final.

Priority

40 Claim to priority of Convention application.

40.—(1) A person who has duly filed an application for protection of a trade mark in a Convention country (in this Act referred to as a “Convention application”), or the successor in title to such a person, has a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a period of six months from the date of filing of the first Convention application.

(2) If the application for registration under this Act is made within the period specified in subsection (1)—

(a) the relevant date for the purposes of establishing which rights take precedence shall be the date of filing of the first Convention application, and

(b) the registrability of the trade mark shall not be affected by any use of the mark in the State in the period between that date and the date of the application under this Act.

(3) Any filing which in a Convention country is equivalent to a regular national filing, under its domestic legislation or an international agreement, shall be treated as giving rise to the right of priority; and for this purpose a “regular national filing” means a filing which is adequate to establish the date on which the application was filed in that country, irrespective of the outcome of the application.

(4) A subsequent application concerning the same subject as the first Convention application, filed in the same Convention country, shall be considered the first Convention application (of which the filing date is the starting date of the period of priority) if, at the time of the subsequent application—

(a) the previous application has been withdrawn, abandoned or refused, without having been laid open to public inspection and without leaving any rights outstanding; and

(b) it has not yet served as a basis for claiming a right of priority;

and in such a case the previous application may not thereafter serve as a basis for claiming a right of priority.

(5) Provision may be made by rules as to the manner of claiming a right to priority on the basis of a Convention application.

(6) A right to priority arising as a result of a Convention application may be assigned or otherwise transmitted, either with the application or independently; and the reference in subsection (1) to the applicant's successor in title shall be construed accordingly.

41 Claim to priority from other relevant overseas application.

41.—(1) This section applies to any country or territory in relation to which the State has entered into a treaty, convention, arrangement or engagement for the reciprocal protection of trade marks.

(2) The Government may by order make provision for conferring on a person who has duly filed an application for protection of a trade mark in a country or territory to which this section applies a right to priority, for the purpose of registering the same trade mark under this Act for some or all of the same goods or services, for a specified period from the date of filing of that application.

(3) In relation to a country or territory to which this section applies, an order under this section may make provision corresponding to that made by section 40 in relation to Convention countries or such other provision as appears to the Government to be appropriate.

Registration Procedure

42 Examination of application.

42.—(1) The Controller shall examine whether an application for registration of a trade mark satisfies the requirements of this Act (including any requirements imposed by rules); and in this section those requirements are referred to as “the requirements for registration”.

(2) If it appears to the Controller that the requirements for registration are not met, the Controller shall inform the applicant and give the applicant an opportunity, within such period as the Controller may specify, to make representations or to amend the application.

(3) If the applicant fails to satisfy the Controller that the requirements for registration have been met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the Controller shall refuse to accept the application.

(4) If it appears to the Controller that the requirements for registration are met, the Controller shall accept the application.

43 Publication, opposition proceedings and observations.

43.—(1) When an application for registration has been accepted, the Controller shall cause the application to be published in the Journal.

(2) Any person may, within the prescribed time from the date of the publication of the application in the Journal, give notice to the Controller of opposition to the registration; and any such notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.

(3) Where an application has been published in the Journal, any person may, at any time before the registration of the trade mark, make observations in writing to the Controller as to whether the trade mark should be registered; and the Controller shall inform the applicant of any such observations.

(4) A person who makes observations as mentioned in subsection (3) shall not thereby become a party to the proceedings on the application.

44 Withdrawal, restriction or amendment of application.

44.—(1) An applicant may at any time by notice in writing withdraw his application or restrict the goods or services covered by the application; and, if the application has been published in the Journal, any withdrawal or restriction of the application shall also be published in the Journal.

(2) Any such withdrawal as is mentioned in subsection (1) shall be irrevocable after the expiry of three months from the date of notice of the withdrawal.

(3) In a case not falling within subsection (1), an application may be amended, at the request of the applicant, so long as the amendment does not substantially affect the identity of the trade mark or extend the goods or services covered by the application and, in particular, an amendment may be made (subject to that qualification) to correct—

(a) the name or address of the applicant;

(b) errors of wording or of copying; or

(c) obvious mistakes.

(4) Provision shall be made by rules for the publication of any amendment which affects the representation of the trade mark, or the goods or services covered by the application, and for the making of objections by any person claiming to be affected by it.

45 Registration.

45.—(1) Where an application has been accepted and—

(a) no notice of opposition has been given within the period referred to in section 43 (2), or

(b) all opposition proceedings have been withdrawn or decided in favour of the applicant,

the Controller shall register the trade mark unless it appears to him, having regard to matters coming to his notice since accepting the application, that it was accepted in error.

(2) A trade mark shall not be registered unless any fee prescribed for the registration has been paid within the prescribed period and, if the fee has not been so paid, the application shall be deemed to be withdrawn.

(3) A trade mark when registered shall be registered as of the date of filing of the application for registration; and that date shall be deemed for the purposes of this Act to be the date of registration.

(4) On the registration of a trade mark the Controller shall publish the registration in the Journal and issue to the applicant a certificate of registration.

(5) The registration procedure shall be regarded as completed on the date of publication under subsection (4); and that date shall be entered in the register.

46 Registration: supplementary provisions.

46.—(1) Provision may be made by rules as to—

(a) the division of an application for the registration of a trade mark into several applications, each having the same filing date as the original application;

(b) the merging of separate applications or registrations; and

(c) the registration of a series of trade marks in one registration.

(2) A “series of trade marks” means a number of trade marks which resemble each other as to their material particulars and differ only in respect of matter of a non-distinctive character which does not substantially affect the identity of the trade mark.

Duration, Renewal and Alteration of Registered Trade Mark

47 Duration of registration.

47.—(1) A trade mark shall be registered for a period of ten years from the date of registration.

(2) Registration may be renewed in accordance with section 48 for further periods of ten years.

48 Renewal of registration.

48.—(1) Subject to payment of the prescribed renewal fee, the registration of a trade mark may be renewed at the request of the proprietor.

(2) Provision shall be made by rules for the Controller to inform the proprietor of a registered trade mark, before the expiry of the registration, of the date of expiry and the manner in which the registration may be renewed.

(3) Subject to subsection (4), a request for renewal must be made, and the prescribed renewal fee paid, before the expiry of the registration.

(4) If subsection (3) is not complied with, a request for renewal may be made and the fee paid within such further period (of not less than six months) as may be prescribed; in which case the prescribed additional renewal fee must also be paid within that period.

(5) A term of renewal shall take effect from the expiry of the previous registration.

(6) If the registration is not renewed in accordance with the preceding provisions, the Controller shall remove the trade mark from the register; but provision may be made by rules for the restoration of the registration of a trade mark which has been removed from the register, subject to such conditions (if any) as may be prescribed.

(7) The renewal, removal or restoration of the registration of a trade mark shall be published in the Journal.

49 Alteration of registered trade mark.

49.—(1) The proprietor of a registered trade mark may apply in the prescribed manner to the Controller for leave to add to or alter the trade mark in any manner which does not substantially affect its identity; and the Controller may refuse leave or grant it on such terms and subject to such limitations as the Controller thinks fit.

(2) In any case where it appears to the Controller expedient to do so, the Controller may cause an application under subsection (1) to be advertised in the Journal.

(3) If, within the prescribed time from the date of the advertisement of an application under subsection (2), 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.

(4) Where leave is granted as mentioned in subsection (1) and the trade mark concerned, in its altered form, has not already been advertised in an advertisement of the application under subsection (2), the trade mark, in its altered form, shall be advertised in the Journal.

Surrender, Revocation and Invalidity

50 Surrender of registered trade mark.

50.—(1) A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered.

(2) Provision may be made by rules—

(a) as to the manner and effect of a surrender; and

(b) for protecting the interests of other persons having a right in the registered trade mark.

51 Revocation of registration.

51.—(1) The registration of a trade mark may be revoked on any of the following grounds—

(a) that, within the period of five years following the date of publication of the registration, the trade mark has not been put to genuine use in the State, by or with the consent of the proprietor, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;

(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;

(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;

(d) that, in consequence of the use made of it by or with the consent of the proprietor in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.

(2) For the purposes of subsection (1), use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, and use in the State includes affixing the trade mark to goods or to the packaging of goods in the State solely for export purposes.

(3) The registration of a trade mark shall not be revoked on the ground mentioned in paragraph (a) or (b) of subsection (1) if such use as is referred to in that paragraph is commenced or resumed after the expiry of the five year period and before the application for revocation is made; but, for this purpose, any such commencement or resumption of use occurring after the expiry of the five year period and within the period of three months before the making of the application shall be disregarded unless preparations for the commencement or resumption began before the proprietor became aware that the application might be made.

(4) An application for revocation may be made by any person, and may be made either to the Controller or to the Court, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court, the application must be made to the Court; and

(b) if in any other case the application is made to the Controller, he may at any stage of the proceedings refer the application to the Court.

(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.

(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from—

(a) the date of the application for revocation; or

(b) if the Controller or the Court is satisfied that the grounds for revocation existed at an earlier date, that date.

(7) Revocation of a trade mark shall be entered in the register and the Controller shall publish the revocation of a trade mark in the Journal.

52 Grounds for invalidity of registration.

52.—(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 8 or any of the provisions referred to in that section; but where a trade mark was registered in breach of subsection (1) (b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.

(2) The registration of a trade mark may be declared invalid on the grounds—

(a) that there is an earlier trade mark in relation to which any of the conditions set out in subsections (1) to (3) of section 10 obtains, or

(b) that there is an earlier right in relation to which the condition set out in paragraph (a) or (b) of subsection (4) of that section is satisfied,

unless the proprietor of that earlier trade mark or earlier right has consented to the registration.

(3) An application for a declaration of invalidity may be made by any person, and may be made either to the Controller or to the Court, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court, the application must be made to the Court; and

(b) if in any other case the application is made to the Controller, the Controller may at any stage of the proceedings refer the application to the Court.

(4) In the case of bad faith in the registration of a trade mark, the Controller may apply to the Court for a declaration of the invalidity of the registration.

(5) Where the grounds of invalidity exist in respect of only some of the goods or services for which the trade mark is registered, the trade mark shall be declared invalid as regards those goods or services only.

(6) Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made, provided that this shall not affect transactions past and closed.

53 Effect of acquiescence.

53.—(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the State, while being aware of that use, the proprietor shall no longer be entitled, on the basis of that earlier trade mark or other right—

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in connection with which it has been so used,

unless the registration of the later trade mark was applied for in bad faith.

(2) Where subsection (1) applies, the proprietor of the later trade mark shall not be entitled to oppose the use of the earlier trade mark or, as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark or right may no longer be invoked against the proprietor's later trade mark.

Collective Marks

54 Collective marks.

54.—(1) A collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

(2) The provisions of this Act apply to collective marks subject to the provisions of the First Schedule.

Certification Marks

55 Certification marks.

55.—(1) A certification mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

(2) The provisions of this Act apply to certification marks subject to the provisions of the Second Schedule.

PART III Community Trade Marks and International Matters

Community Trade Marks

56 Meaning of “Community trade mark” and “Community Trade Mark Regulation”.

56.—In this Act—

(a) “Community trade mark” has the meaning given by Article 1 (1) of the Community Trade Mark Regulation; and

(b) “the Community Trade Mark Regulation” means Council Regulation (EC) No. 40/94 of 20 December, 1993 on the Community trade mark.

57 Power to make provision in connection with Community Trade Mark Regulation.

57.—(1) The Minister may by regulations make such provision as he considers appropriate in connection with the operation of the Community Trade Mark Regulation.

(2) Provision may, in particular, be made with respect to—

(a) the filing of applications for Community trade marks through the Patents Office;

(b) the procedures for determining a posteriori the invalidity, or liability to revocation, of the registration of a trade mark from which a Community trade mark claims seniority;

(c) the conversion of a Community trade mark or an application

for a Community trade mark into an application for registration under this Act; and

(d) the designation of Courts in the State having jurisdiction over proceedings arising out of the Community Trade Mark Regulation.

(3) Without prejudice to the generality of subsection (1), provision may be made by regulations under this section making in relation to the list of professional representatives maintained in pursuance of Article 89 of the Community Trade Mark Regulation, and persons on that list, provision corresponding to that made by, or capable of being made under, sections 84 to 90 in relation to the register of trade mark agents and registered trade mark agents.

(4) Section 24 (remedy for groundless threats of infringement proceedings) and Part VI (offences) shall apply in relation to a Community trade mark as they apply in relation to a registered trade mark.

The Madrid Protocol: International Registration

58 The Madrid Protocol.

58.—In this Act—

“the Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June, 1989;

“the International Bureau” has the meaning given by Article 2 (1) of that Protocol; and

“international trade mark” means a trade mark which is entitled to protection in the State under that Protocol.

59 Power to make provision giving effect to Madrid Protocol.

59.—(1) The Minister may by regulations make such provision as he considers appropriate for giving effect in the State to the provisions of the Madrid Protocol.

(2) Provision may, in particular, be made with respect to—

(a) the filing of applications for international registrations through the Patents Office as office of origin;

(b) the procedures to be followed where the basic application or registration in the State fails or ceases to be in force;

(c) the procedures to be followed where the Patents Office receives from the International Bureau a request for extension of protection to the State;

(d) the effects of a successful request for extension of protection to the State;

(e) the transformation of an international registration or an application for an international registration into a national application for registration;

(f) the communication of information to the International Bureau;

(g) the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.

(3) Section 24 (remedy for groundless threats of infringement proceedings); and Part VI (offences) shall apply in relation to an international trade mark as they apply in relation to a registered trade mark.

The Paris Convention: Supplementary Provisions

60 The Paris Convention.

60.—(1) In this Act—

(a) “the Paris Convention” means the Paris Convention for the Protection of Industrial Property of March 20th, 1883, as amended or supplemented by any protocol to that Convention which is for the time being in force in the State; and

(b) a “Convention country” means a country, other than the State, which is a party to that Convention.

(2) The Minister may by order make such amendments of this Act and rules made under this Act as appear to the Minister appropriate in consequence of any revision or amendment of the Paris Convention after the passing of this Act.

61 Protection of well-known trade marks: Article 6bis.

61.—(1) References in this Act to a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark are to a mark which is well known in the State as being the mark of—

(a) a national of a Convention country, or

(b) a person who is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country,

whether or not that person carries on business, or has any goodwill, in the State; and references to the proprietor of such a mark shall be construed accordingly.

(2) Subject to section 53, the proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark shall be entitled to restrain by injunction the use in the State of a trade mark which, or the essential part of which, is identical or similar to the proprietor's mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.

(3) Nothing in subsection (2) shall affect the continuation of any bona fide use of a trade mark begun before the commencement of this section.

62 National emblems &c. of Convention countries: Article 6ter.

62.—(1) A trade mark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Controller that use of the flag in the manner proposed is permitted without such authorisation.

(2) A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention shall not be registered without the authorisation of the competent authorities of that country.

(3) A trade mark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention, be registered in relation to goods or services of the same or a similar kind as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.

(4) The provisions of this section as to national flags and other state emblems and official signs or hallmarks apply equally to anything which, from a heraldic point of view, imitates any such flag or other emblem, sign or hallmark.

(5) Nothing in this section prevents the registration of a trade mark on the application of a national of a country who is authorised to make use of a state emblem or official sign or hallmark of that country, notwithstanding that it is similar to that of another country.

(6) Where, by virtue of this section, the authorisation of the competent authorities of a Convention country is or would be required for the registration of a trade mark, those authorities shall be entitled to restrain by injunction any use of the mark in the State without their authorisation.

63 Emblems &c. of certain international organisations: Article 6ter.

63.—(1) This section applies to—

(a) the armorial bearings, flags or other emblems, and

(b) the abbreviations and names,

of international intergovernmental organisations of which one or more Convention countries are members.

(2) A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention shall not be registered without the authorisation of the international organisation concerned, unless it appears to the Controller that the use of the emblem, abbreviation or name in the manner proposed—

(a) is not such as to suggest to the public that a connection exists between the organisation and the trade mark; or

(b) is not likely to mislead the public as to the existence of a connection between the user and the organisation.

(3) The provisions of this section as to emblems of an international organisation apply equally to anything which, from a heraldic point of view, imitates any such emblem.

(4) Where, by virtue of this section, the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation shall be entitled to restrain by injunction any use of the mark in the State without its authorisation.

(5) Nothing in this section affects the right of a person whose bona fide use of the trade mark in question began before 9th June, 1967 (when the relevant provisions of the Paris Convention entered into force in relation to the State).

64 Notification under Article 6ter of the Convention.

64.—(1) For the purposes of section 62 state emblems of a Convention country (other than the national flag) and official signs or hallmarks shall be regarded as protected under the Paris Convention only if, or to the extent that—

(a) the country in question has notified the State in accordance with Article 6ter (3) of the Convention that it desires to protect the emblem, sign or hallmark;

(b) the notification remains in force; and

(c) the State has not objected to it in accordance with Article 6ter (4) or any such objection has been withdrawn.

(2) For the purposes of section 63, the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that—

(a) the organisation in question has notified the State in accordance with Article 6ter (3) of the Convention that it desires to protect that emblem, abbreviation or name;

(b) the notification remains in force; and

(c) the State has not objected to it in accordance with Article 6ter (4) or any such objection has been withdrawn.

(3) Notification under Article 6ter (3) of the Paris Convention shall have effect only in relation to applications for registration made more than two months after the receipt of the notification.

(4) The Controller shall keep and make available for public inspection by any person, at all reasonable hours and free of charge, a list of—

(a) the state emblems and official signs or hallmarks, and

(b) the emblems, abbreviations and names of international organisations,

which are for the time being protected under the Paris Convention by virtue of notification under Article 6ter (3).

65 Acts of agent or representative: Article 6septies.

65.—(1) The following provisions apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Convention country and the application is made without the proprietor's authorisation.

(2) Where the proprietor opposes the application, registration shall be refused.

(3) Where the application (not being so opposed) is granted, the proprietor may—

(a) apply for a declaration of the invalidity of the registration; or

(b) apply for the rectification of the register so as to substitute the proprietor's name as the proprietor of the registered trade mark.

(4) The proprietor may (notwithstanding the rights conferred by this Act in relation to a registered trade mark) apply to the Court to restrain by injunction any use of the trade mark in the State which is not authorised by the proprietor.

(5) Subsections (2), (3) and (4) shall not apply if, or to the extent that, the agent or representative justifies his action.

(6) An application under subsection (3) (a) or (b) must be made within three years of the proprietor becoming aware of the registration; and no injunction shall be granted under subsection (4) in respect of a use in which the proprietor has acquiesced for a continuous period of three years or more.

PART IV Administrative Provisions

The Register

66 The register.

66.—(1) The Controller shall keep a Register of Trade Marks; and references in this Act to registration (in particular, in the expression “registered trade mark”) are, unless the context otherwise requires, to registration in the register.

(2) There shall be entered in the register in accordance with this Act—

(a) registered trade marks;

(b) particulars of registrable transactions affecting a registered trade mark; and

(c) such other matters as may be prescribed.

(3) The register shall be kept in such form as may be prescribed, and provision shall in particular be made for—

(a) public inspection of the register; and

(b) the supply of certified or uncertified copies of, or extracts from, entries in the register.

67 Rectification or correction of the register.

67.—(1) Any person having a sufficient interest may apply for the rectification of an error or omission in the register:

Provided that an application for rectification may not be made in respect of a matter affecting the validity of the registration of a trade mark.

(2) An application for rectification may be made either to the Controller or to the Court, except that—

(a) if proceedings concerning the trade mark in question are pending in the Court, the application must be made to the Court; and

(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.

(3) Unless the Controller or the Court otherwise directs, the effect of rectification of the register is that the error or omission in question shall be deemed never to have been made.

(4) The Controller may (of his own motion) correct any error made by him in any entry in the Register but, before doing so, he shall give notice of the proposed correction to any person who appears to him to be concerned.

(5) The Controller may, on request made in the prescribed manner by the proprietor of a registered trade mark—

(a) enter any change in the proprietor's name or address as recorded in the register;

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

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

(6) The Controller may, on request made in the prescribed manner by the licensee of a registered trade mark, enter any change in the licensee's name or address as recorded in the register.

(7) The Controller may remove from the register matter appearing to him to have ceased to have effect.

68 Adaptation of entries to new classification.

68.—(1) Provision may be made by rules authorising the Controller to do such things as the Controller considers necessary to implement any amended or substituted classification of goods or services for the purposes of the registration of trade marks.

(2) Provision may, in particular, be made for the amendment of existing entries on the register so as to accord with the new classification.

(3) Any such power of amendment shall not be exercised so as to extend the rights conferred by the registration, except where it appears to the Controller that compliance with this requirement would involve undue complexity and that any extension would not be substantial and would not adversely affect the rights of any person.

(4) The rules may empower the Controller—

(a) to require the proprietor of a registered trade mark, within such time as may be prescribed, to file a proposal for amendment of the register; and

(b) to cancel or refuse to renew the registration of the trade mark in the event of the proprietor failing to do so.

(5) A proposal under subsection (4) (a) shall be advertised, and may be opposed, in such manner as may be prescribed.

Powers and Duties of the Controller

69 Power to require use of forms.

69.—(1) The Controller may require the use of such forms as he may direct for any purpose relating to the registration of a trade mark or any other proceedings before the Controller under this Act.

(2) The forms, and any directions of the Controller with respect to their use, shall be published in the Journal.

70 Information about applications and registered trade marks.

70.—(1) After publication of an application for registration of a trade mark, the Controller shall on request provide a person with such information as may be prescribed and permit him to inspect such documents as may be prescribed relating to the application or to any registered trade mark resulting from it.

(2) A request for the purposes of subsection (1) must be made in the prescribed manner and be accompanied by the appropriate fee (if any).

(3) Before publication of an application for registration of a trade mark, documents or information constituting or relating to the application shall not be published by the Controller or communicated by the Controller to any person except—

(a) in such classes of case and to such extent as may be prescribed; or

(b) with the consent of the applicant;

but subject to the following provisions of this section.

(4) Where a person has been notified—

(a) that an application for registration of a trade mark has been made, and

(b) that the applicant will if the application is granted bring proceedings against that person in respect of acts done after publication of the application,

that person may make a request under subsection (1) notwithstanding that the application has not been published and that subsection shall apply accordingly.

71 Exercise of discretionary powers by Controller.

71.—Where any discretionary power is, by or under this Act, given to the Controller, that power shall not be exercised adversely to any applicant for or proprietor of a trade mark or to any party in any proceedings before the Controller, without that applicant, proprietor or party being given an opportunity of being heard as regards the exercise of that power.

72 Costs and security for costs.

72.—(1) The Controller may, in any proceeding before him under this Act, order the payment to any party of such costs (if any) as the Controller may consider reasonable and direct how and by what party they are to be paid; and any such order may, by leave of the Court, be enforced in the same manner as a judgment or order of the Court to the same effect.

(2) Where, under this Act, a party who neither resides nor carries on business in the State or in any other state which may be prescribed is a party to any proceedings before the Controller, the Controller or, in the case of any appeal, the Court, may require that party to give security for the costs of the proceedings.

(3) If a requirement under subsection (2) is not complied with, the Controller or the Court, as may be appropriate, may treat the proceedings as abandoned.

73 Evidence before the Controller.

73.—In subsection (1) of section 92 of the Patents Act, 1992 (which relates to evidence in proceedings before the Controller under that Act or any other enactment) after the words “before the Controller” there shall be inserted “(including proceedings under the Trade Marks Act, 1996)”.

74 Exclusion of liability in respect of official acts.

74.—(1) The Controller shall not be taken to warrant the validity of the registration of a trade mark under this Act or under any treaty, convention, arrangement or engagement to which the State is a party.

(2) The Controller shall not have any liability by reason of, or in connection with, any examination required or authorised by this Act, or any such treaty, convention, arrangement or engagement, or any report or other proceedings consequent on such examination.

(3) No proceedings shall lie against an officer of the Controller in respect of any matter for which, by virtue of this section, the Controller is not liable.

75 Content of Controller's annual report.

75.—In the report on the execution of the provisions of this Act included in the Controller's annual report, prepared in accordance with section 103 of the Patents Act, 1992, there shall be included a report on the discharge of the Controller's functions in relation to the Madrid Protocol.

Legal Proceedings and Appeals

76 Registration to be prima facie evidence of validity.

76.—In all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it.

77 Certificate of validity of contested registration.

77.—(1) If, in proceedings before the Court, the validity of the registration of a trade mark is contested and it is found by the Court that the trade mark is validly registered, the Court may give a certificate to that effect.

(2) If the Court gives such a certificate and in subsequent proceedings—

(a) the validity of the registration is again questioned, and

(b) the proprietor obtains a final order or judgment in the proprietor's favour,

the proprietor shall be entitled to his costs as between solicitor and client unless the Court otherwise directs.

(3) Subsection (2) does not extend to the costs of an appeal in any proceedings.

78 Controller's appearance in court proceedings.

78.—(1) In any proceedings before the Court (including an appeal) which involve or relate to—

(a) the revocation of the registration of a trade mark, or

(b) a declaration of the invalidity of the registration of a trade mark, or

(c) the rectification of the register, or

(d) any other matter in which the relief sought would affect the register,

the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Court.

(2) Unless otherwise directed by the Court, in any proceedings before the Court the Controller may instead of appearing submit to the Court a statement in writing signed by the Controller, giving particulars of—

(a) any proceedings before the Controller in relation to the matter in issue;

(b) the grounds of any decision given by the Controller affecting it;

(c) the practice of the Patents Office in like cases; or

(d) such matters relevant to the issues and within the Controller's knowledge as the Controller thinks fit;

and the statement shall be deemed to form part of the evidence in the proceedings.

79 Appeals from the Controller.