IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
2.3 Trade Mark Rights The rights of Irish trade mark owners are statutory, not common law based (unlike passing off). They arise automatically once a mark is registered, and are codified in the Trade Marks Act. The key rights are as follows: • the exclusive right to use the mark; • the right to prevent unauthorised third-party use of the mark; Registered trade mark rights persist throughout the term of a mark so long as the mark remains valid, registered and in genuine use, and is not revoked or cancelled. 2.4 Use in Commerce Trade marks must be used in the “course of trade”. Examples of use in the course of trade include: • placing the trade mark on the goods or their pack - aging; • offering the goods for sale, placing the goods on the market under the trade mark, or supplying the goods with the mark; • the right to sue for infringement; • the right to assign the mark; and • the right to license the mark. • importing or exporting the goods with the mark; • using the trade mark on business documents or marketing tools; and • using the trade mark as a business name or as part of a business name. 2.5 Notices and Symbols Trade mark owners may use the TM symbol upon filing their application and the ® symbol following registra - tion. There is no obligation to use either symbol, but it is preferable to do so as it puts third parties on notice that a trade mark exists. 2.6 Related Rights In Ireland, a trade mark can also be protected by cop - yright or related rights, provided it meets the require - ments of copyright law. Trade mark registration does not prevent a work from simultaneously enjoying copyright protection, and both systems can operate in parallel.
Ireland can protect famous foreign trade marks that are not yet used or registered in Ireland, but only where they qualify as a well-known mark under international treaties. Ireland does not have a broad famous marks doctrine like the US, but it does follow the well-known marks rule under Article 6bis of the Paris Convention and Article 16 (2) of the TRIPS Agreement. 2.2 Essential Elements of Trade Mark Protection In order for a trade mark to qualify for protection in Ireland, it must: • be a sign capable of clear representation; • be capable of distinguishing goods/services; • be distinctive (inherently or through acquired use); • not be descriptive or generic; • not be deceptive, immoral or contrary to public policy; • not consist exclusively of prohibited shapes; • not have been filed in bad faith; • not conflict with earlier marks or rights; and • be associated with correctly classified goods/ser - vices. Trade mark owners must show that the sign has gained recognition by a significant proportion of its relevant market to prove acquired distinctiveness. In order to be distinctive, the use of the mark in the course of trade must identify its origin and not be descriptive. The following factors should be considered when assessing whether a trade mark has gained acquired distinctiveness: • the date on which the mark was first used; • details of the first and current use of the mark and the goods and services it is used on; • the geographic region in which the mark is used; • details of how the mark has been advertised and marketed since it was first used; • details of the amount of money spent on advertis - ing and marketing; • details of turnover relating to goods and services bearing the mark; and • examples of how the mark is used.
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