IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
the sale, storage, import or export of packaging or materials that already have the mark on them. Whilst there are no statutory provisions for vicarious infringement in the Trade Marks Act, vicarious liability applies in trade mark cases in the same way as for other civil wrongs, pursuant to the Civil Liability Act, 1961. Legal Claims Available to a Copyright Owner to Pursue Infringement Copyright owners can claim for infringement where restricted acts are carried out without consent. Sec - tion 37 of the Copyright Act lists restricted acts as follows: • copying; • making the work available to the public; and • making an adaptation of the work, or copying or making available an adaptation. Section 43 of the Copyright Act provides more detail on infringement by adaptation, including form (record - ed in writing or otherwise) and a list of works that could be adapted. Copyright occurs automatically in Ireland and is not registrable. Therefore, there is no separate claim avail - able for unregistered copyright. The following forms of infringement are provided for under the Copyright Act: • direct infringement as outlined above and in Sec - tion 37 of the Copyright Act; • indirect infringement; and • secondary infringement, as outlined in Sections 44 and 45 of the Copyright Act. A person is liable for secondary infringement where he or she – without a licence from the copyright owner – does the fol - lowing with a copy of the work which is, and which he or she knows or has reason to believe is, an infringing copy of the work: (a) sells, rents or lends, or offers or exposes for sale, rental or loan; (b) imports into the State, otherwise than for his or her private and domestic use; (c) in the course of a business, trade or profes -
sion, has in his or her possession, custody or control, or makes available to the public; or (d) otherwise than in the course of a business, trade or profession, makes available to the public to such an extent as to prejudice the interests of the owner of the copyright. As mentioned above, a claimant could seek to claim vicarious liability, as set out in the Civil Liability Act 1961. What Constitutes Trade Mark Infringement As outlined above, the Trade Marks Act specifies three scenarios that constitute trade mark infringement. The Trade Marks Act also prescribes what constitutes use of a sign, including: • affixing it to goods or packaging; • offering, exposing for sale, marketing or stocking goods under the sign; • importing or exporting goods under the sign; • using the sign on business papers or in advertising; • using it as a trade or company name or part thereof; and • using it in comparative advertising. Any such use must be in accordance with honest practices in industrial or commercial matters. There - fore, the elements to prove trade mark infringement are that: • the alleged infringer’s conduct amounts to use of a sign, as defined above; and • such use falls within one of the infringement sce - narios. What Constitutes Copyright Infringement As noted above, the Copyright Act differentiates between direct, indirect and secondary infringement. To prove direct or indirect infringement, the claimant needs to show that: • the work qualifies for copyright protection, as outlined in 3.2 Essential Elements of Copyright Protection (fixed in tangible form and originality); • it owns the copyright work;
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