IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
Copyright Licensing Requirements • Licensing of copyright must be in writing and must be signed by the licensor. There is no filing require - ment with the IPOI once the licence is executed. • Only economic copyright may be licensed. Moral rights may not be licensed. • Licensing of copyright may be full or partial. • There are no registration requirements for copyright licences as there is no copyright register in Ireland. • Irish copyright law is silent on perpetual licences and archival rights. 6.3 Registration or Recording of an Assignment or Licence Trade Marks Recordals • Assignments and licences relating to trade marks must be recorded with the IPOI. • Failure to record assignments and licences with the IPOI results in a number of disadvantages, particu - larly for the licensee: (a) the assignment/licence is ineffective against a person acquiring a conflicting interest; (b) licensees are unable to recover damages in an infringement action; and licensees are unable to bring an infringement action in their own name. Copyright Recordals As there is no copyright register in Ireland, there is therefore no filing or registration requirement for an assignment or licence of copyright. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits There is no temporal limitation period in the Trade Marks Act. Where a statute is silent, the general Stat - ute of Limitations 1957 applies, under which actions “founded on tort” must be brought within six years of the date on which the cause of action accrued. Irish courts treat trade mark infringement as a tort like civil wrong, so the six-year limitation period applies. How - ever, revocation/invalidity actions have no statutory time limit and may be brought by any person at any stage, subject only to acquiescence rules.
Like trade marks, the Copyright Act does not set a specific limitation period. Copyright infringement is also treated as a civil wrong, so the same six-year limi - tation period under the Statute of Limitations applies. There is no copyright registration system in Ireland, so no cancellation/revocation deadlines apply. Irish courts may refuse relief based on equitable prin - ciples, including undue delay. In addition to general equity, Irish trade mark law contains a statutory acqui - escence rule: if the owner of an earlier mark knowingly allows a later mark to be used/registered for five con - tinuous years, the owner may lose the right to invali - date or oppose the later mark. 7.2 Legal Claims for Infringement Lawsuits and Their Standards Legal Claims Available to a Trade Mark owner to Pursue Infringement The following claims are available to the owner of a registered trade mark under Section 14 of the Trade Marks Act: • if the same sign is used for the same goods or ser - vices, infringement is established without the need to prove confusion; • if the same or a similar sign is used for similar goods or services, infringement arises where there is a likelihood of confusion on the part of the pub - lic; and • if the registered mark has a reputation in Ireland and the use takes unfair advantage of, or is detri - mental to, its distinctive character or reputation. These claims are only available to owners of regis - tered trade marks. Under common law, passing off is an available claim for owners of unregistered rights (trade marks, get- up, etc). To succeed in an action for passing off, a claimant must provide evidence of all the elements of the three-part test, as detailed in 1.1 Governing Law . In addition to these direct infringement scenarios, the Trade Marks Act also provides that an owner can pro - hibit anyone from putting an identical or similar mark on packaging or related materials, and can also block
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