IRELAND Law and Practice Contributed by: Philip Tully, Emma Doherty, Alice Duffy, Simon Shinkwin and Marie McGinley, Matheson LLP
and generally examines the application to see if its use would infringe pre-existing Irish/EU trade marks or if it otherwise falls within a prohibited form of trade mark. If satisfied with the application, the IPOI publishes it in the Official Journal. Third parties then have three months to oppose the application by filing a notice of opposition. If there is no opposition, or if the opposition proceed - ings are unsuccessful, the application will proceed to registration on payment of the registration fee. An application for an EU trade mark at the European Union Intellectual Property Office (EUIPO) EU trade marks are filed with the EUIPO and undergo an examination, publication and opposition procedure prior to registration, similar to that described for Irish trade marks above. However, unlike the IPOI, EUI - PO do not investigate whether the trade mark would infringe pre-existing EU trade marks. If the application is accepted, the EU trade mark is published in the EU Trade Mark Bulletin. This is followed by a three-month opposition period, during which time any third party can object to the trade mark’s registration. EUIPO also carries out a European Union Search Report and, in the event that the application identifies any existing trade marks which are similar or identical to the trade mark being applied for, EUIPO notifies proprietors of those existing trade marks to give them an opportu - nity to oppose the application. If no objections were filed or if opposition proceedings were unsuccessful, the EU trade mark will proceed to be registered and the registration published. An EU trade mark is a uni - tary European-wide property right and protects the trade mark proprietor in all member states of the EU. An international application designating certain states, including Ireland, under the Madrid Protocol On request, the IPOI will forward a trade mark applica - tion or registration to the International Bureau of the WIPO in Geneva. The Irish or EU trade mark appli - cation or registration serves as a base on which the proprietor may designate the mark for registration in other Madrid Protocol countries, eg, the UK and the US. The International Bureau notifies the trade mark offices designated in the international filing, which,
in turn, decide whether to accept the application for registration in their territory. A Madrid Protocol filing can be a cost-effective and efficient way to obtain trade mark protection in multi - ple jurisdictions outside of the EU. Enforcement and Remedies An infringement will occur where a mark that is the same as or similar to a registered mark is used in the course of trade in relation to the same or similar goods or services as the registered mark. The reliefs avail - able for trade mark infringement include damages, injunctions and orders for an account of profits, and the destruction or delivering up of infringing goods. An unregistered trade mark can be enforced through the vehicle of “passing off”. To succeed in an action for passing off, the plaintiff must show (i) the trader has goodwill or reputation in the product, (ii) the defend - ant makes a misrepresentation in the course of trade to prospective customers which leads to confusion between the goods of the trader and the defendant and (iii) such misrepresentation causes or is likely to Under Irish law, a “design” is defined as the appear - ance of the whole or part of a product resulting from the features of a product or its ornamentation, includ - ing the lines, contours, colour, shape, texture or mate - rials of the product itself or its ornamentation. In order to be registerable, a design must be “new” and have “individual character”. Unregistered designs are also granted a level of protection under Irish law. An EU regulation entered into force in November 2023 which requires member states to put in place a legal framework for geographical indication (GI) protection for craft and industrial products. The Regulation will apply from 1 December 2025. Length of Protection The total term of protection for designs under Irish law is 25 years, renewable at five-year intervals. cause the plaintiff damage. 7.3 Industrial Designs Definition
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