Signs of the times

Major changes have been introduced to the law of trade marks in Ireland as a result of the Trade Marks Act 1996. The Act contains many identical provisions to the UK Trade Marks Act 1994, unsurprising because like the UK Act, it was designed to comply with European statute. But it also introduces new special provisions.

Substantive Changes

Registrability

The type of trade mark which can be registered is broadened to include any sign which can be represented graphically and which is capable of distinguishing goods or services. Thus it is now possible to register shapes, sounds, colours, smells and tastes if they fulfil the criteria. They must not, however, be devoid of distinctive character.

The ability to register distinctive shapes and colours or a combination of these may help traders to prevent competitors introducing copycat products.

Paris Convention

For the first time in Ireland, the new Act introduces a system to protect well-known trade marks after Article 6b of the Paris Convention. Such marks will be amenable to protection in Ireland even in the absence of goodwill or reputation.

Service marks

Until now the owner of goodwill in a mark had to rely on the tort of passing off to protect his interest. Under the 1996 Act a service mark can be registered to ensure such protection. It is unclear whether retail and mail order services will be considered “services” for this purpose, the traditional view being that such businesses deal in goods rather than services and therefore their owners should seek protection by way of registration in respect of goods.

Scope of infringement

The scope of infringement will be broadened along the lines of the 1994 UK Act. Infringement now extends to goods or services similar to those the trade mark protects, which includes the likelihood of associating the offending mark with the registered mark. In addition, where a trade mark has a reputation in the state and the use of the later mark will take unfair advantage of, or be detrimental to, the character or reputation of the earlier registered mark, then the owner can prevent its use on any goods or services. Furthermore, unauthorised oral use of an infringing trade mark will infringe a registered trade mark.

Groundless threats

A remedy akin to that under section 53 of the 1992 Patents Act, in relation to groundless threats of infringement proceedings, is now available under the 1996 Act.

Procedural Changes

A new set of Trade Mark Rules is under preparation. These will revamp the existing rules to take into account changes in the substantive law. However, it is clear from the 1996 Act that the existing Parts A and B of the register will be abolished and all existing marks transferred to a new register.

For the purpose of citations, “earlier marks” includes those on the Irish national register, CTMs, International Registrations and trade marks which have a reputation in Ireland or in the EU and where the act complained of would take unfair advantage of, or be detrimental to, the distinctive character or reputation of an earlier registered trade mark.

It will also be possible to file multi-class applications within the one application. The term of registration, previously an initial period of seven years and renewable afterwards for 14-year periods, will now run for 10 years and be renewable for further 10-year periods.