IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
the goods or services covered by the application. In particular, amendments can be made to correct the name or address of the applicant, errors of wording or obvious mistakes. 4.8 Dividing a Trade Mark Application It is possible to divide a trade mark application in Ire - land, whereby the applicant is allowed to split a single application into two or more separate applications. The applicant files a request for division with the IPOI. Each divisional application receives a new application number and its own processing. A divisional appli - cation is typically made where some goods/services face objection but others do not, or where the appli - cant wants to expedite registration for certain classes while resolving issues with others. 4.9 Incorrect Information in an Application If the incorrect information relates to the name or address of the applicant, errors of wording or copy - ing, or obvious mistakes, an applicant may make an application for amendment. Classes included in error may also be removed. Any changes beyond this, and in particular those that substantially affect the identity of the trade mark, are not permitted. 4.10 Refusal of Registration Section 8 of the Trade Marks Act sets out the absolute grounds for refusal of a trade mark, as follows: • marks that do not meet the criteria to qualify as a trade mark; • marks devoid of any distinctive character; • descriptive marks; • marks that have become generic; • shape marks where: (a) the shape results from the nature of the goods themselves; (b) the shape is necessary to obtain a technical result; or (c) the shape gives substantial value to the goods; • marks contrary to public policy or morality; • deceptive marks; • marks prohibited by law; and • applications for marks made in bad faith. If a trade mark examiner raises an objection on either absolute or relative grounds, an examination report
will be issued to the applicant, who will be given three months within which to respond. 4.11 The Madrid System Ireland participates in the Madrid Protocol, which requires that an international application must be based on a national trade mark application or regis - tration filed through the IPOI, which is known as the “Office of Origin”. Only a person who is a national of Ireland, or is domiciled or has a real and effective industrial or commercial establishment in Ireland, has the right to file an international application using the IPOI as the Office of Origin. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Third parties may oppose a trade mark registration within three months of publication of an accepted trade mark in the Official Journal. At any stage dur - ing the opposition proceedings, if the parties jointly request it, the Controller will grant a stay in the pro - ceedings for a minimum period of two months and a maximum period of one year from the date of the request, for the express purpose of allowing for the possibility of an amicable resolution. There is no statutory limitation on the time limit within which to file a revocation action for a trade mark. Non- use arguments in a trade mark revocation action may only be used five years after publication. As there is no copyright register in Ireland, it is not possible to file a revocation action. 5.2 Legal Grounds for Filing an Opposition or Cancellation A trade mark application may be opposed on relative grounds. These grounds are based on the existence of earlier conflicting rights and are as follows: • the existence of an earlier identical trade mark registered for identical goods or services;
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