IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
In Ireland, groundless threat provisions apply to trade marks, but not copyright. 7.5 Lawsuit Procedure Trade mark and copyright infringement proceedings are initiated in the High Court. The IPOI does not have jurisdiction to hear infringement matters. Costs may vary depending on the complexity of the case. Parties to trade mark or copyright infringement proceedings before the Irish High Court must be rep - resented by an Irish lawyer. Foreign rights-holders may bring trade mark pro - ceedings in Ireland. For trade mark infringement, the right-holder must be the registered owner of a national trade mark, a European trade mark or a mark registered under the Madrid System that designates Ireland. Because there is no registration requirement, a foreign copyright owner may sue in Ireland if the copyright is valid under Irish law. This is usually based on the nationality of author, the place of first publica - tion, or international treaty protections. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants An alleged trade mark or copyright infringer can seek a declaration of non-infringement in Ireland. This typi - cally occurs where a threat of infringement proceed - ings has been made by the right-holder, such as a cease and desist letter. There is no provision to file protective briefs in the Irish courts. 7.7 Small Claims In Ireland, the Small Claims Court (part of the District Court) helps to resolve disputes involving claims of EUR2,000 or less between consumers and business - es, offering a cheaper, solicitor-free way to a resolu - tion. IP disputes are not typically resolved by way of the Small Claims Court, given the level of technical knowledge and evidence involved. 7.8 Effect of Trade Mark and Copyright Office Decisions In Ireland, decisions of the IPOI – including decisions in opposition, revocation and invalidity proceedings –
do affect infringement actions, but civil courts are not bound by IPOI decisions. For example, if the IPOI revokes or cancels a trade mark (eg, for non use or invalidity), the proprietor loses the ability to bring or maintain an infringement action based on that mark. 7.9 Counterfeiting and Bootlegging Trade Marks • Counterfeit goods are goods bearing a trade mark that is identical or indistinguishable in its essential aspects from a trade mark validly registered for those goods, used without authorisation. • Under the Trade Marks Act, courts can order eras - ure, destruction, seizure and other statutory rem - edies for infringing (including counterfeit) goods. • A party can be subject to criminal liability for trade mark counterfeiting. Copyright • Irish law uses the terminology “pirated goods” (rather than counterfeit) for copyright-protected works. Pirated goods are typically understood as unauthorised reproductions of copyrighted works (eg, music, films, software, books), made without consent of the copyright owner, for commercial scale distribution. • A party can be subject to criminal liability for copy - right counterfeiting. • Ireland implements EU Customs Regulation (EU) No 608/2013 and related national regulations. Cus - toms may detain and seize counterfeit trade mark goods and pirated copyright goods. • The term “bootlegging” is not expressly used in Irish copyright legislation. However, it is covered by prohibitions on unauthorised recordings of perfor - mances, sound recordings, films and broadcasts. The types of remedies available for bootlegging include injunctions, damages or account of profits, delivery-up and destruction of infringing copies and search and seizure orders. Bootlegging can lead to criminal liability in Ireland.
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