Ranked consistently in Tier 1 in the Legal 500, Chambers Europe, and PLC, we have a dedicated IP team covering commercial and contentious IP of all sorts. Our lawyers have long years of experience in patent litigation, trade mark infringement and passing off, trade mark prosecutions, copyright and design infringement, confidential information disputes, the importation of infringing/counterfeit goods, customs watch notices, the seeking of delivery up/seizure orders, recall of faulty product and communication of such recalls, misleading/comparative advertising issues of all types, labelling and packaging issues.

We lobbied and were instrumental in procuring the Irish Government to strengthen the provisions of the trade marks legislation in the absence in Ireland of a trading standards regime. We advise in domain name disputes and were involved in one of the first successful ADR proceedings against EURid for .eu domain names. We are one of the few Irish law firms that provides a trade mark and design registration service in Ireland and Europe.

Trade Mark  & Design Framework in Ireland

• Registered Irish Trade Marks
• Unregistered Trade Marks
• Community Trade Marks (27 countries)
• International Trade Marks
• Irish Registered Designs
• Community Registered Designs
• Unregistered Community Designs

Ireland is a Paris Convention signatory country allowing claims of priority from applications in the other 171 contracting states.  It is also a member of the Madrid Protocol system for the international registration of trade marks.

Trade Marks
Trade marks can consist of words, designs, logos, letters, numerals, the shape of goods or of their packaging, smells, sounds or of other signs or indications and must be:

• Capable of being represented graphically
• Capable of distinguishing goods or services
• Not excluded by statute (e.g. the registration of state symbols is restricted)

Once registered, a trade mark can be renewed indefinitely for successive 10-year periods.

Designs
Designs must be new and have individual character in order to be registrable. Designs that relate to how a product functions or for parts that in normal use are not visible may not be registered.  

Registered design rights can be renewed every 5 years up to a maximum of 25 years.  Unregistered Community Designs last for 3 years from the date on which the design was first made available to the public within the EU.

Unique features of the Irish trade mark system

• Examination – Irish Patents Office may reject trade mark applications based on relative grounds for refusal (earlier Irish or Community Trade Mark applications or registrations). Affords stronger protection for registered marks
• Series of Marks – Applications may be made for a series of trade marks at no extra cost. A series is a number of trade marks which resemble each other in their important features and differ only in respect of non-distinctive elements. Very useful for registering logos in different colours
• Opposition Period – Ireland still has a three-month non – extendable publication period during which oppositions may be filed

Enforcement of Rights in Ireland

Civil Remedies & the Commercial Court
In Ireland proprietors of trade marks and designs can avail of an array of protections both legal and practical including though our Commercial Court. It takes approximately 21 weeks from the date a case is entered into the Commercial Court for the case to be heard at trial – 50% of cases conclude within 16 weeks and 90% within 47 weeks. The Commercial Court is proving more effective for claimants as an alternative to seeking an interlocutory injunction (which once granted will also require a full trial) as judgment is handed down so quickly and there is no requirement for an undertaking as to damages to be given.

In actions for infringement of trade marks or design rights, relief by way of the following may be available to the claimant:

• Orders for the following:
    – seizure of materials (without a warrant)
    – search of premises (with a warrant)
    – erasure or removal of offending signs
    – delivery up/disposal of materials
• Damages
• Injunctions (interim and interlocutory relief)
• Account of profits

Criminal Sanctions
Fraudulent application or use of trade marks (or assisting in such) in relation to goods is an offence.  Similarly a person who without permission of the proprietor of a registered design makes for sale or rent; imports into Ireland; or in the course of a business, trade or profession, has in his or her possession, custody or control; a product which is, and which he/she knows or has reason to believe is an infringing product, shall be guilty of an offence.

Border Protection
The Irish Customs can be requested to watch for and take action to prevent the export or import into Ireland of counterfeit goods.  This is a free service.  In 2008 almost 285,000 items were seized with a value of €5,760,000.

This article was contributed by Carol Plunkett and Leo Moore