IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Assignment Procedures for Trade Marks • Assignments of trade marks must be in writing and recorded with the IPOI. • The assignor, assignee or any party to the instru - ment may notify the IPOI of the change of owner - ship of the trade mark. • Assignments of trade marks may be full or partial. • Trade marks are treated the same as other property rights in Ireland and are therefore transmissible by way of testamentary disposition. Assignment Procedures for Copyright • Assignments of copyright must be in writing and must be signed by the assignor. There is no filing requirement with the IPOI once the assignment is executed. • Only economic copyright may be assigned. Moral rights may not be assigned. • Assignments of copyright may be full or partial. • Copyright is treated the same as other property rights in Ireland and is therefore transmissible by way of testamentary disposition. 6.2 Licensing Requirements or Restrictions Trade Mark Licensing Requirements • Licensing of a trade mark may be general or limited (for some but not all of the goods and services for which the mark is registered, use in a particular locality, etc). • Exclusive, sole and non-exclusive licences may be granted. • A licence will not be effective unless it is in writ - ing and signed on behalf of the grantor. Where the assignor is a body corporate, this requirement is satisfied by affixing the company seal. • Irish trade mark law is silent on perpetual licences and archival rights. • Irish trade mark legislation stipulates that regis - tered trade marks may be assigned, as opposed to applications.
decision can be requested with the prescribed fee, by a party to the hearing within one month from the date of notification of the Controller’s decision. An appeal may be made to the Supreme Court on a point of law from a decision of the High Court. There is no prescribed time limit in the Trade Marks Act for lodging an appeal; however, as discussed in further detail in 11.1 Appellate Procedure , the applicant gen - erally has 21 days from the date of the High Court decision to lodge a complaint with the Supreme Court. While not prescribed in the Trade Marks Act, it is understood that the decision of the Controller must be final before it is appealed. 5.6 Amendment in Revocation/Cancellation Proceedings There is no statutory basis to amend goods or ser - vices in invalidity proceedings in Ireland. 5.7 Combining Revocation/Cancellation and Infringement Revocation/invalidity actions and infringement actions can be connected in Ireland, but they are not auto - matically heard together. Whether they proceed jointly depends on where each action is filed and whether a court is already seized of the dispute. Depending on the venue (IPOI or High Court), these proceedings can take between six months and one year at a minimum. 5.8 Measures to Address Fraud Ireland does not use the term fraudulent filing in its legislation but deals with such cases under the doc - trine of bad faith. A trade mark filed in bad faith can be stopped before registration or cancelled afterward. Irish law does not provide for automatic suspension of an application simply because an allegation of bad faith has been filed. When third-party observations alleging bad faith are filed, the Controller must con - sider them; this pauses the progression of the applica - tion. If a mark is refused/revoked on the basis of bad faith, it may be declared invalid and removed from the register with retroactive effect.
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