IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
• the whole of the work or a substantial part of the work was copied (Section 37 (3) of the Copyright Act); or • the copying was done without consent. For secondary infringement, the claimant also needs to show that: • one of the acts restricted under Section 45 of the Copyright Act listed above was carried out; and • the infringer knew or had reason to believe they Dilution by blurring or tarnishment is not expressly mentioned in the Trade Marks Act, but Section 14 (3) implies that blurring would occur by use of a sign that takes unfair advantage of, or is detrimental to, the dis - tinctive character or reputation of the registered trade mark. As noted, there is no requirement to prove that the goods or services are identical or similar. The trade mark needs to have a reputation in Ireland. A passing off claim could address dilution of a brand or get-up, particularly where there is damage to the goodwill attaching to the brand. Cyber-Squatting There is no statutory claim for cyber-squatting in Irish law. A claimant would instead rely on traditional tools: infringement under the Trade Marks Act 1996 and/or a passing off claim. In parallel, administrative remedies may be available through relevant domain name dis - pute resolution procedures, but these sit outside the statutory framework. Technical Protection Measures were dealing with an infringing copy. Dilution by Blurring or Tarnishment In Ireland, the equivalent provision for copyright management information is technological protection measures (TPMs), which are governed by Sections 370 to 377 of the Copyright Act. The Act provides for infringement of a work to which a TPM has been applied. Remedies are available against a person who: • makes, sells, rents or lends, or offers, or exposes for sale, rental or loan, imports to the state, or has in their possession, custody or control a protec -
tion-defeating device, having reason to believe it has been used to circumvent a TPM; • provides information, or offers or performs any service, intended to enable or assist persons to circumvent rights protection measures; or • circumvents rights protection measures in a work otherwise than with the agreement of the rights- owner or pursuant to permitted acts under the Copyright Act. The same civil remedies apply as in cases of copyright infringement. 7.3 Factors in Determining Infringement Irish trade mark infringement is determined entirely by statute. The following factors (discussed in more detail in 7.2 Legal Claims for Infringement Lawsuits and Their Standards ) are assessed: • identity/similarity of marks; • identity/similarity of goods or services; • likelihood of confusion; • reputation and dilution; and • commercial use. Copyright infringement is governed by the Copyright Act. The following factors are assessed: • whether the alleged infringer carried out a “restrict - ed act” (copying the work, distributing copies, communicating the work to the public, renting/ lending, making the work available online, etc); • whether a “substantial part” of the work was used; • whether the use falls within permitted exceptions; and • whether the use was commercial or non-commer - cial. 7.4 Prerequisites and Restrictions to Filing a Lawsuit There are no legal prerequisites to filing trade mark or copyright infringement proceedings. However, sending a warning letter is the standard, highly rec - ommended first step in Irish proceedings, as it often resolves issues quickly and cost-effectively by for - mally warning the infringer and demanding they stop, threatening legal proceedings if they do not.
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