IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
5.4 Opposition or Revocation/Cancellation Procedure The trade mark opposition procedure in Ireland is a formal, paper-based adversarial process administered by the IPOI. A Notice of Opposition must include the opponent’s name and address, the grounds for oppo - sition, and details of any earlier marks, and it must be accompanied by the required fee. Once the Notice of Opposition has been filed, the IPOI sends it to the applicant, who must then submit a counter state - ment. If the applicant does not do so, the application is treated as withdrawn. After both parties have exchanged their pleadings, the matter proceeds to the evidence stage. The oppo - nent files evidence first, followed by the applicant’s responding evidence, and the opponent may then file optional further evidence. Evidence is usually pro - vided by way of statutory declarations, accompanied by materials such as sales data, advertising samples, market research or proof of use, depending on the grounds raised. The process is conducted entirely on the written record. There is no US-style discovery, and thus no depositions, interrogatories or similar disclo - sure procedures. Applications for revocation of a trade mark may be made to the Controller or the High Court. However, if proceedings concerning the trade mark in ques - tion are pending in the Court, the application must be made to the Court. Partial revocation of a trade mark is possible in Ire - land. It is most likely to arise where a registered mark is vulnerable – eg, for non-use or genericism – but only in relation to certain goods or services. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Decisions of the Controller of the IPOI may be appealed to the High Court as set out in Section 79 of the Trade Marks Act. An applicant has three months from the date of the Controller’s decision to appeal. This period commences from the date of receipt of the written statement of the grounds of the Controller’s decision, where one was requested. Rule 27 of the Trade Mark Rules 1996 (as amended) (“the Trade Mark Rules”) provides that a written statement of the grounds of a
• the existence of an earlier similar trade mark reg - istered for identical or similar goods or services where there is a likelihood of confusion; • earlier unregistered rights (actionable under the law of passing off); and • earlier well-known marks. The remedies for revocation of a trade mark in Ireland are: • full or partial removal from the national register; • retroactive revocation, as if the mark never existed (for invalidity actions only); • cessation of exclusive rights; and • costs order (in certain circumstances). There is no mechanism for revoking copyright in Ire - land. Ireland does not have US-style administrative “expungement” or “re‑examination” procedures where the IPOI re‑examines use‑based claims after registration. 5.3 Ability to File an Opposition or Revocation/Cancellation In Ireland, any person or legal entity who holds an earlier right may file a trade mark opposition, provided they do so within the three-month opposition window after the application is published in the IPOI Official Journal. The IPOI does not require opponents to instruct an Irish solicitor in order to file an opposition. Please see 4.4 Application Requirements regarding the IPOI filing fees. The key official fees for opposition and revocation in Ireland are as follows: • application fee to revoke a mark: EUR125; • application fee to invalidate a mark: EUR125; and • application for a hearing: EUR60. Attorney fees for filing an opposition or revocation vary. There are no fixed fee models and these fees will be charged on a competitive basis. There are no limits on who may initiate a trade mark revocation action. There is no need for the applicant to be the owner of an earlier mark.
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