TRADE MARKS ACT, 1996

• (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.

79.—(1) Unless otherwise provided by rules of court, within the period of three months from the date of a decision of the Controller under this Act, an appeal shall lie from the decision to the Court.

• (2) On an appeal under this section—

• (a) the Controller shall be entitled to appear and be heard, and shall appear if so directed by the Court: and

• (b) the Court may exercise any power which could have been exercised by the Controller in the proceedings from which the appeal is brought.

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

80 No award of costs to or against the Controller.

80.—In any proceedings before the Courts under this Act, the Controller shall not be awarded or be ordered to pay costs.

Rules and Fees

81 Power of Minister to make rules.

81.—(1) The Minister may make rules—

• (a) for the purposes of any provision of this Act authorising the making of rules with respect to any matter; and

• (b) for prescribing anything authorised or required by any provision of this Act to be prescribed,

and generally for regulating practice and procedure under this Act.

• (2) Without prejudice to the generality of subsection (1), provision may, in particular, be made by rules under this section—

• (a) as to the manner of filing of applications and other documents;

• (b) requiring and regulating the translation of documents and the filing and authentication of any translation;

• (c) as to the service of documents;

• (d) authorising the rectification of irregularities of procedure; and

• (e) prescribing time limits for anything required to be done in connection with any proceeding under this Act, and providing for the extension of any such limit (whether or not it has already expired).

82 Fees.

82.—(1) There shall be charged by the Controller and paid in respect of applications and registration and other matters under this Act, such fees as may from time to time be prescribed by the Minister with the sanction of the Minister for Finance.

• (2) Provision may be made by rules to enable the payment of a single fee in respect of two or more matters.

• (3) All fees charged by the Controller under this section shall be collected and accounted for in such manner as shall be determined by the Minister with the consent of the Minister for Finance.

• (4) The Public Offices Fees Act, 1879, shall not apply in respect of any fees payable under this section.

PART V Trade Mark Agents

83 Authorised agent may act.

83.—(1) Subject to rules made under section 90, whenever, under this Act, any act has to be done by or to any person in connection with the registration of a trade mark or any procedure relating to a registered trade mark, the act may be done by or to an agent—

• (a) who is authorised by that person orally or in writing; and

• (b) who is a registered trade mark agent.

• (2) A person duly authorised by another person under subsection (1) to act as his registered trade mark agent may (subject to any provision to the contrary in any agreement between the agent and that person), on giving notice to the Controller and the other person, cease to act as registered trade mark agent for the other person.

84 Register of Trade Mark Agents.

84.—The Register which, immediately before the commencement of this section, was known as the Register of Trade Mark Agents shall continue to be known as such and to be maintained by the Controller; and in this Part—

• (a) “the Register” means the Register of Trade Mark Agents;

• (b) “registered trade mark agent” means a person whose name is entered in the Register; and

• (c) “registration”, in relation to a person who is or has been a registered trade mark agent, means the entry of that person's name in the Register.

85 Business to be carried on only by registered trade mark agents &c.

85.—(1) Subject to the provisions of this section, an individual who is not a registered trade mark agent shall not—

• (a) carry on a business (otherwise than in partnership) under any name or other description which contains the words “registered trade mark agent”, or

• (b) in the course of a business otherwise describe or hold himself out, or permit himself to be described or held out, as a registered trade mark agent.

• (2) A partnership shall not—

• (a) carry on a business under any name or other description which contains the words “registered trade mark agent”, or

• (b) in the course of a business otherwise describe or hold itself out or permit itself to be described or held out, as a firm of registered trade mark agents,

unless all the partners are registered trade mark agents or the partnership satisfies such conditions as may be prescribed for the purposes of this section.

• (3) A body corporate shall not—

• (a) carry on a business (otherwise than in partnership) under any name or other description which contains the words “registered trade mark agent”, or

• (b) in the course of a business otherwise describe or hold itself out, or permit itself to be described or held out, as a registered trade mark agent,

unless all the directors of the body corporate and any manager who is not also a director are registered trade mark agents or the body satisfies such conditions as may be prescribed for the purposes of this section.

• (4) With a view to the fulfilment by the Government on behalf of the State of any international agreement to which the State is a party, the Minister may permit any person who is not a registered trade mark agent but who is a citizen of a state which is also a party to that international agreement, upon application made by that person, to act on behalf of others in relation to trade marks subject to any conditions that the Minister considers appropriate.

• (5) The legal personal representative of a deceased registered trade mark agent may carry on the business or practice of the deceased agent for a period not exceeding three years from the agent's death, or for such further period (if any) as the Court allows if the personal representative—

• (a) is authorised by the Court to manage the business or practice; or

• (b) employs another person who is so authorised to manage the business or practice on behalf of the personal representative.

• (6) Any person who contravenes any provision of this section shall be liable on summary conviction to a fine not exceeding £500 in the case of a first offence and, in the case of a second or subsequent offence, £1,000; and, notwithstanding section 10 (4) of the Petty Sessions (Ireland) Act, 1851, proceedings for an offence under this section may be commenced at any time within twelve months from the date of the offence.

• (7) Nothing in this Act shall be construed as prohibiting solicitors or barristers from taking such part in proceedings under this Act as has heretofore been taken by solicitors or barristers in connection with a trade mark or any procedure relating to a trade mark or the registration thereof.

• (8) A registered trade mark agent shall not be guilty of an offence under section 58 of the Solicitors Act, 1954 (which prohibits the preparation for reward of certain instruments by persons not legally qualified), by reason only of the preparation by the agent of—

• (a) a deed assigning the property in a trade mark application or trade mark; or

• (b) any document (not being a deed) for use in proceedings under this Act before the Controller or the Court.

• (9) No offence is committed under any enactment restricting the use of certain expressions in reference to any person not qualified to act as a solicitor by use of the term “Community Trade Mark Attorney” in reference to a Registered Trade Mark Agent.

86 Entitlement to be registered as trade mark agent.

86.—(1) Any person who—

• (a) resides in the State or in such other state as may be prescribed,

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

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

• (d) complies with the prescribed conditions,

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

• (2) Persons and partnerships whose names were entered in the Register under the Act of 1963 immediately before the commencement of this Act shall continue to be registered trade mark agents.

87 Removal from Register.

87.—The Controller may, upon the application of any person who is a registered trade mark agent, remove that person's name from the Register.

88 Suspension and erasure of registration of trade mark agent.

88.—(1) Where, in the opinion of the Controller, a person who is a registered trade mark agent ceases to be eligible to be registered or has been guilty of conduct disgraceful to that person in the capacity of a registered trade mark agent, the Controller may, after giving that person an opportunity to be heard, decide that the name of that person should be erased from the Register or that, during a period of specified duration, that person's registration should not have effect.

• (2) On making a decision under subsection (1), the Controller shall forthwith send by post to the person to whom the decision relates (in this section referred to as “the person in default”), at that person's address as stated in the Register, a notice in writing stating the decision, the date thereof and the reason therefor.

• (3) On giving notice to the Controller in the prescribed manner, the person in default may, within the period of 21 days beginning on the date of the decision in question, apply to the Court for cancellation of the decision; and, if that person so applies, the Court, on hearing the application, may either—

• (a) cancel the decision, or

• (b) declare that it was proper for the Controller to make a decision under subsection (1) in relation to the person in default and either (as the Court may consider proper)—

• (i) direct the Controller to erase the name of the person in default from the Register; or

• (ii) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

• (4) If at any time the Controller satisfies the Court that the person in default has delayed unduly in proceeding with an application under subsection (3), the Court shall, unless it sees good reason to the contrary, declare that it was proper for the Controller to make a decision under subsection (1) in relation to the person in default and either (as the Court may consider proper)—

• (a) direct the Controller to erase the name of the person in default from the Register; or

• (b) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

• (5) Where the person in default does not, within the period of 21 days beginning on the date of the decision in question, apply to the Court for cancellation of the decision, the Controller may apply exparte 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, declare accordingly and either (as the Court may consider proper)—

• (a) direct the Controller to erase the name of the person in default from the Register; or

• (b) direct that, during a specified period (beginning not earlier than 7 days after the decision of the Court), the registration of the person in default shall not have effect.

• (6) The decision of the Court on an application under subsection (3) or subsection (5) shall be final, save that, by leave of the Court or the Supreme Court, an appeal by the Controller or the person in default from the decision shall lie to the Supreme Court on a specified question of law.

89 Notice of erasure or suspension: subsequent restoration.

89.—(1) Upon the erasure of the name of a person from the Register the Controller shall forthwith send by pre-paid post to that person, at that person's address as stated in the Register, notice in writing of the erasure.

• (2) Where a decision is made under section 88 that, during a specified period, a person's registration shall not have effect, the Controller shall, before the commencement of that period, send by pre-paid post to that person, at that person's address as stated in the Register, notice in writing of the decision.

• (3) The name of any person which has been erased from the Register may at any time be restored to the Register by direction of the Controller but not otherwise; and, when a person's name is so restored to the Register, the Controller may attach to the restoration such conditions (including the payment of a fee not exceeding the fee which would be payable by the person for registration if that person was being registered for the first time) as the Controller thinks fit.

• (4) Where a person's registration has ceased to have effect under section 88 for a specified period, the Controller may, if he so thinks fit, on application made to him by that person, terminate the suspension.

90 Rules relating to trade mark agents.

90.—(1) The Minister may make rules for the management of the Register and may, by those rules, prescribe any matter or thing referred to in this section or section 85 and, in particular, may so prescribe the educational and professional qualifications and the conditions (including conditions relating to nationality or citizenship) for eligibility for registration and the maximum fees which may be charged by any person who is registered for such services in connection with trade marks as may be specified in the rules.

• (2) Rules under subsection (1) may authorise the Controller to refuse to recognise as agent in respect of any business under this Act any person who does not satisfy the requirements of section 85.

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

91 Privileged communications.

91.—(1) This section applies to communications in respect of any matter relating to the protection of a trade mark or in respect of any matter involving passing off.

• (2) Any communication to which this section applies—

• (a) between a person and his registered agent, or

• (b) for the purposes of obtaining or in response to a request for information which a person is seeking for the purpose of instructing his registered agent,

is privileged from disclosure in legal proceedings in the State in the same way as a communication between a person and his solicitor or, as the case may be, a communication for the purpose of obtaining or in response to a request for information which a person seeks for the purpose of instructing his solicitor.

• (3) In subsection (2) “registered agent” means—

• (a) a registered trade mark agent;

• (b) a partnership entitled to describe itself as a firm of registered trade mark agents; or

• (c) a body corporate entitled to describe itself as a registered trade mark agent.

PART VI Offences

92 Fraudulent application or use of trade mark in relation to goods.

92.—(1) Subject to the provisions of subsection (3), it shall be an offence for any person—

• (a) to apply a mark identical to or nearly resembling a registered trade mark to goods or to material used or intended to be used for labelling, packaging or advertising goods,

• (b) to sell, let for hire, offer or expose for sale or hire or distribute—

• (i) goods bearing such a mark, or

• (ii) material bearing such a mark which is used or intended to be used for labelling, packaging or advertising goods,

• (c) to use material bearing such a mark in the course of a business for labelling, packaging or advertising goods, or

• (d) to possess in the course of a business goods or material bearing such a mark with a view to doing any of the things mentioned in paragraph (a) to (c),

when that person is not entitled to use the mark in relation to the goods in question or authorised by a person who is so entitled.

• (2) Subject to the provisions of subsection (3), it shall be an offence for any person to possess in the course of a business goods or material bearing a mark identical to or nearly resembling a registered trade mark with a view to enabling or assisting another person to do any of the things mentioned in subsection (1) (a), (b) or (c), knowing or having reason to believe that the other person is not entitled to use the mark in relation to the goods in question or authorised by a person who is so entitled.

• (3) Any person who contravenes the provisions of subsection (1) or (2) shall be guilty of an offence if, but only if that person acts with a view to gain, for himself or another, or with intent to cause a loss to another and it shall be a defence for a person charged with an offence under subsection (1) to show that he believed, on reasonable grounds, that he was entitled to use the trade mark in relation to the goods in question.

• (4) A person who commits an offence under this section shall be liable—

• (a) on summary conviction to imprisonment for a term not exceeding six months or to a fine not exceeding £1,000, or to both;

• (b) on conviction on indictment to imprisonment for a term not exceeding five years or to a fine not exceeding £100,000, or to both.

93 Falsification of register, &c.

93.—(1) It shall be an offence for a person to make, or cause to be made, an entry in the register which that person knows or has reason to believe to be false.

• (2) It shall be an offence for a person—

• (a) to make or cause to be made anything falsely purporting to be a copy of an entry in the register, or

• (b) to produce or tender or cause to be produced or tendered in evidence any such thing,

knowing or having reason to believe that it is false.

• (3) A person who commits an offence under this section shall be liable—

• (a) on summary conviction, to imprisonment for a term not exceeding six months or to a fine not exceeding £1,000, or to both,

• (b) on conviction on indictment, to imprisonment for a term not exceeding two years or to a fine not exceeding £200,000, or to both.

94 Falsely representing trade mark as registered.

94.—(1) It shall be an offence for a person—

• (a) falsely to represent that a mark is a registered trade mark, or

• (b) to make a false representation as to the goods or services for which a trade mark is registered,

knowing or having reason to believe that the representation is false.

• (2) For the purposes of this section, the use in the State in relation to a trade mark—

• (a) of the word “registered”, or

• (b) of any other word or symbol importing a reference (express or implied) to “registration”,

shall be deemed to be a representation as to registration under this Act unless it is shown that the reference is to registration elsewhere than in the State and that the trade mark is in fact so registered for the goods or services in question.

• (3) A person guilty of an offence under this section shall be liable on summary conviction to a fine not exceeding £1,000 and, in the case of a continuing offence, to a further fine not exceeding £100, for every day on which the offence continues.

95 Offences committed by partnerships and bodies corporate.

95.—(1) Without prejudice to any liability of a partner under subsection (3), proceedings for an offence under this Act alleged to have been committed by a partnership shall be brought against the partnership in the name of the firm and not in that of the partners.

• (2) A fine imposed on a partnership on its conviction in proceedings brought in accordance with subsection (1) shall be paid out of the assets of the partnership.

• (3) Where a partnership is guilty of an offence under this Act, every partner, other than a partner who is proved to have been ignorant of or to have attempted to prevent the commission of the offence, shall also be guilty of the offence and liable to be proceeded against and punished accordingly.

• (4) Where an offence under this Act which is committed by a body corporate is proved to have been committed with the consent or connivance of, or to be attributable to any neglect on the part of, any person who, when the offence was committed, was a director, manager, secretary or other similar officer of the body corporate or a person who was purporting to act in any such capacity, that person (as well as the body corporate) shall be guilty of an offence and liable to be proceeded against and punished as if guilty of the offence committed by the body corporate.

PART VII Miscellaneous and General

96 Jurisdiction of the Circuit Court.

96.—Without prejudice to the powers conferred by this Act upon the Court, proceedings for an order under section 20 or section 23 may be brought in the Circuit Court in the county in which the infringing goods, material or articles are situated or in the county in which resides any person having those goods, material or articles in his possession, custody or control.

97 Unauthorised use of State emblems of Ireland.

97.—(1) A person shall not, without the authority of the Minister, use in connection with any business the State emblems of Ireland notified under Article 6ter of the Paris Convention or emblems so closely resembling the State emblems as to be calculated to deceive in such a manner as to be calculated to lead to the belief that that person is duly authorised to use the State emblems.

• (2) A person who contravenes the provisions of subsection (1) shall be guilty of an offence and shall be liable on summary conviction to a fine not exceeding £1,000 and, in the case of a continuing offence, to a further fine not exceeding £100 for every day the offence continues.

• (3) The Minister may apply to the Court for an injunction to restrain any person from contravening the provisions of subsection (1).

• (4) Nothing in this section shall affect any right of the proprietor of a registered trade mark containing any such emblem to use that trade mark.

• (5) In any proceedings to restrain any action prohibited under subsection (1) or any prosecution under subsection (2) a certificate purporting to be signed by the Controller that the emblem is a State emblem shall be sufficient evidence of its contents unless the contrary is proved.

98 Misuse of trade marks indicative of Irish origin.

98.—The Minister may 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 that trade mark, mark or description is used or applied were grown, produced or manufactured in the State.

99 Burden of proving use of trade mark.

99.—Where, in any civil proceedings under this Act, an issue arises as to the use made by any person of any registered trade mark, the onus of proving such use shall lie with the proprietor.

100 Transitional provisions.

100.—The provisions of the Third Schedule shall have effect with respect to transitional matters, including the treatment of trade marks registered under the Act of 1963, and applications for registration and other proceedings pending under that Act, on the commencement of this Act.

101 Territorial waters and continental shelf.

101.—For the avoidance of doubt, it is hereby declared that this Act applies to the following waters, namely, the waters in the portion of the sea which comprises the territorial seas of the State, the waters in all areas of the sea to which the internal or inland waters of the State are extended by section 5 of the Maritime Jurisdiction Act, 1959 and the waters in any area which is for the time being a designated area within the meaning of section 1 of the Continental Shelf Act, 1968.

102 Amendment and adaptation of existing statutes.

102.—(1) In any enactment passed before, and in any provision made under any enactment before, the commencement of this Act, any reference to trade marks or registered trade marks, within the meaning of the Act of 1963, shall, unless the context otherwise requires, be construed after the commencement of this Act as a reference to trade marks or registered trade marks, within the meaning of this Act.

• (2) In section 24 of the Consumer Information Act, 1978—

• (a) for the words “the Trade Marks Act, 1963”, in each place where they occur except in paragraph (c), there shall be substituted “the Trade Marks Act, 1996”; and

• (b) in paragraph (c) for the words “a person registered under section 36 of the Trade Marks Act, 1963 as a registered user of a trade mark” there shall be substituted “in the case of a registered trade mark, a person licensed to use it”.

FIRST SCHEDULE Collective Marks

General

Signs of which a collective mark may consist

Indication of geographical origin

• (2) However, the proprietor of a mark referred to in subparagraph (1) shall not be entitled to prohibit the use of the signs or indications in accordance with honest practices in industrial or commercial matters (in particular, in the case of a person who is entitled to use a geographical name).

Mark not to be misleading as to character or significance

• (2) The Controller may, accordingly, require that a mark in respect of which an application is made for registration as a collective mark shall comprise some indication that it is a collective mark, and, notwithstanding section 44 (3), an application may be amended so as to comply with any such requirement.

Regulations governing use of collective mark

• (2) The regulations shall specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including any sanctions against misuse of the mark.

• (3) Provision may be made by rules for further matters in respect of which regulations are required.

Approval of regulations by Controller

• (a) comply with paragraph 5 (2) and any further requirements imposed by rules; and

• (b) are not contrary to public policy or to accepted principles of morality.

• (2) Before the end of the prescribed period after the date of the application for registration of a collective mark, the applicant must file the regulations with the Controller and pay the prescribed fee; and if the applicant does not do so, the application shall be deemed to be withdrawn.

• (a) accept the application;

• (b) accept it subject to conditions (including amendment of the regulations or otherwise); or

• (c) refuse to accept it.

• (2) Where the Controller accepts an application subject to specified conditions, and those conditions are complied with within the prescribed period, the Controller shall proceed with the publication in the Journal in accordance with section 43.

• (3) Where the Controller accepts an application subject to specified conditions and those conditions are not complied with within the prescribed period, the application shall be deemed to be withdrawn.

• (2) The provisions of this paragraph are in addition to any other grounds on which an application may be opposed or observations made.

Regulations to be open to inspection

Amendment of regulations

Infringement proceedings: rights of authorised users

• (2) An authorised user shall be entitled to call on the proprietor to take infringement proceedings in respect of any matter which affects the authorised user's interests.

• (3) Where the proprietor refuses or fails to take infringement proceedings in accordance with subparagraph (2) within two months after being called upon to do so, the authorised user may bring the proceedings in the authorised user's name as if the authorised user were the proprietor.

• (4) Where the infringement proceedings are brought by virtue of subparagraph (3)—

• (a) the authorised user may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant; and

• (b) a proprietor who is so added as a defendant shall not be liable for any costs in the action unless he takes part in the proceedings.

• (5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an application by an authorised user alone.

• (6) In the course of infringement proceedings brought by the proprietor of a registered collective mark, any loss suffered or likely to be suffered by authorised users shall be taken into account by the Court; and the Court may give such directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

• (a) the manner in which the mark has been used by the proprietor has made it misleading to the public in the manner referred to in paragraph 4 (1); or

• (b) the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark; or

• (c) an amendment of the regulations has been made so that the regulations—

• (i) no longer comply with paragraph 5 (2) and any further conditions imposed by rules; or

• (ii) are contrary to public policy or to accepted principles of morality.

Grounds for invalidity of registration

SECOND SCHEDULE Certification Marks

General

Signs of which a certification mark may consist

Indication of geographical origin

Provided that the proprietor of such a mark shall not be entitled to restrain the use of the signs or indications in accordance with honest practices in industrial or commercial matters, in particular, by a person who is entitled to use a geographical name.

Nature of proprietor's business

Mark not to be misleading as to character or significance

• (2) The Controller may, accordingly, require that a mark in respect of which an application is made for registration as a certification mark shall comprise some indication that it is a certification mark; and notwithstanding section 44 (3), an application may be amended so as to comply with any such requirement.

Regulations governing use of certification mark

• (2) The regulations shall indicate who is authorised to use the mark, the characteristics to be certified by the mark, how the certifying body is to test those characteristics and to supervise the use of the mark, the fees (if any) to be paid in connection with the operation of the mark and the procedures for resolving disputes.

• (3) Provision may be made by rules for further matters in respect of which regulations are required.

Approval of regulations, &c. by Minister

• (a) the regulations governing the use of the mark—

• (i) comply with paragraph 6 (2) and any further requirements imposed by rules; and

• (ii) are not contrary to public policy or to accepted principles of morality; and

• (b) the applicant is competent to certify the goods or services for which the mark is to be registered.

• (2) If it appears to the Controller that the requirements for registration other than those in subparagraph (1) are met, the Controller shall authorise the applicant to proceed with the application.

• (3) Within the prescribed period of authorisation to proceed, the applicant must file the regulations (if this has not already been done) and pay the prescribed fee, failing which, the application shall be deemed to be withdrawn.

• (2) Where the Minister directs that the application be accepted, and any conditions are complied with within the prescribed period, the Controller shall proceed in accordance with section 43.

• (3) Where the Minister directs that an application be accepted subject to specified conditions and those conditions are not complied with within the prescribed period, the application shall be deemed to be withdrawn.

Regulations to be open to inspection

Amendment of regulations

• (2) The Minister may cause an application for consent under subparagraph (1) to be published in any case where it appears expedient to do so.

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

• (4) After the Minister has consented to such an amendment as is mentioned in subparagraph (1), the Controller shall publish notice in the Journal when the amended regulations are filed with him.

Consent to assignment of registered certification mark

Infringement proceedings: rights of authorised users

• (2) An authorised user shall be entitled to call on the proprietor to take infringement proceedings in respect of any matter which affects the authorised user's interests.

• (3) Where the proprietor refuses or fails to take infringement proceedings in accordance with subparagraph (2) within two months after being called upon to do so, the authorised user may bring the proceedings in the authorised user's own name as if the authorised user were the proprietor.

• (4) Where infringement proceedings are brought by virtue of subparagraph (3)—

• (a) the authorised user may not, without the leave of the Court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant; and

• (b) a proprietor who is so added as a defendant shall not be liable for any costs in the action unless the proprietor takes part in the proceedings.

• (5) Nothing in subparagraph (4) shall affect the granting of interlocutory relief on an application by an authorised user alone.

• (6) In the course of infringement proceedings brought by the proprietor of a registered certification mark, any loss suffered or likely to be suffered by authorised users shall be taken into account by the Court; and the Court may give such directions as it thinks fit regarding the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy on behalf of such users.

Grounds for revocation of registration

• (a) the proprietor has begun to carry on such a business as is mentioned in paragraph 4; or

• (b) the manner in which the mark has been used by the proprietor has made it misleading to the public in the manner referred to in paragraph 5 (1); or

• (c) the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark; or

• (d) an amendment of the regulations has been made so that the regulations—

• (i) no longer comply with paragraph 6 (2) and any further conditions imposed by rules; or

• (ii) are contrary to public policy or to accepted principles of morality; or

• (e) the proprietor is no longer competent to certify the goods or services for which the mark is registered.

• (2) An application for revocation on the ground mentioned in subparagraph (1) (c), (d) or (e) shall be made to the Minister.

• (3) For the purposes of this paragraph the reference in section 51 (6) to the Controller or the Court shall be construed as a reference to the Minister.

Grounds for invalidity of registration

• (2) An application for a declaration of invalidity on the ground that the registration was made contrary to the provisions of paragraph 7 (1) shall be made to the Minister.

General provisions as to functions of Minister

• (2) Section 79 shall apply in relation to a decision of the Minister under this Schedule as they apply in relation to a decision of the Controller.

• (3) The Minister may, for the purpose of discharging any of his functions under this Schedule, refer any matter to a body or person appearing to the Minister to have experience of matters of that description, and may take their report or advice into account in reaching his decision.

THIRD SCHEDULE Transitional Provisions

Introductory

“commencement” means the commencement of this Act; “existing registered mark” means a trade mark or certification trade mark, within the meaning of the Act of 1963, registered under that Act immediately before commencement;

“the former register” means the register of trade marks kept under the Act of 1963;

“the old law” means the Act of 1963 and any other enactment or rule of law applying to existing registered marks immediately before commencement;

“the new register” means the Register of Trade Marks kept under this Act.

• (2) For the purposes of this Schedule an application shall be treated as pending at commencement if it was made but not finally determined before commencement.

Existing registered marks

• (2) Subparagraph (1) shall apply to all entries relating to existing registered marks as it applies to the marks themselves.

• (3) Entries indicating that existing registered marks are associated with other marks shall cease to have effect on commencement.

• (4) A condition entered on the former register in relation to an existing registered mark immediately before commencement shall cease to have effect on commencement; and proceedings under section 41 of the Act of 1963 (application to expunge or vary registration for breach of condition) which are pending at commencement shall be dealt with under the old law (with any necessary alteration being made in the new register).

• (5) A disclaimer or limitation entered on the former register in relation to an existing registered mark and in force immediately before commencement shall be deemed to be transferred to the new register and have effect as if entered on the new register in pursuance of section 17.

Effects of registration: infringement

• (2) Without prejudice to the operation of the Interpretation Act, 1937, the old law shall continue to apply in relation to infringements committed before commencement.

• (3) It shall not be an infringement of—

• (a) an existing registered mark, or

• (b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,

to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.

Infringing goods, material or articles

Rights and remedies of licensee or authorised user

• (2) Paragraph 13 (6) of the Second Schedule shall apply only in relation to infringements committed after commencement.

Assignment &c. of registered trade marks