IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
Pinsent Masons Ireland LLP 1 Windmill Lane Dublin 2 D02 F206 Ireland Tel: +353 1 553 8600 Fax: +353 1 553 8601 Email: Jane.Bourke@pinsentmasons.com Web: www.pinsentmasons.com
1. Trade Mark and Copyright Law 1.1 Governing Law The key Irish statutes that govern trade marks and copyright are the Trade Marks Act, 1996 (as amended) (the “Trade Marks Act”) and the Copyright and Related Rights Acts 2000 (as amended) (the “Copyright Act”). Ireland is a common law jurisdiction, and unregistered trade marks are protected through the tort of passing off. To succeed in an action for passing off, a claim - ant must provide evidence of all the elements of the following three-part test: • goodwill in the goods or services; • misrepresentation causing deception; and • damage (or likelihood of damage) to the claimant’s goodwill. 1.2 Conventions and Treaties/Rights of Foreign IP Holders The following international treaties protect foreign IP rights in Ireland: • the Paris Convention; • the Madrid Protocol; • the Berne Convention; and • the TRIPS Agreement. The following EU legislation protects foreign IP rights in Ireland: • the EU Trade Mark Regulation (EUTMR); • EU copyright directives; and • EU Customs Regulation 608/2013.
2. Trade Mark Ownership, Protection and Rights 2.1 Types of Trade Marks Section 6 (1) of the Trade Marks Act is non-exhaustive in terms of what can be registered as a trade mark. The following may be registered as trade marks: • word trade marks; • figurative trade marks; • figurative trade marks with word elements (“com - bined” trade marks); • pattern marks; • position marks; • hologram marks; • certification marks; • collective marks; • series of trade marks; and • trade dress (goodwill can be protected, whether registered or unregistered). Trade marks containing emblems of the Irish State (such as the national flag and the harp) or any pub - lic institution, and marks closely resembling these emblems, are protected by Section 9 of the Trade Marks Act. Section 46 of the National Lottery Act, 2013 protects goodwill in the terms “National Lottery” and “Irish National Lottery” in line with Clause 7 of the National Lottery Licence. • shape marks; • colour marks; • sound marks; • motion marks; • multimedia marks;
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