IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings In addition to the specific procedural provisions out - lined in the Trade Marks Act, the Trade Mark Rules 1996 (as amended) and the Copyright Act, intellectual property proceedings in Ireland are primarily governed by the Rules of the Superior Courts (the RSC). The RSC concerning intellectual property matters were updated in 2021, when a new Order 63A and a new Order 94 were introduced by virtue of S.I. No. 530/2021 Rules of the Superior Courts (Intellectual property proceedings) 2021. These Orders provide for a framework for all intellectual property proceedings in Ireland, and should be consulted for procedural mat - ters relating to trade mark or copyright infringement proceedings. Certain decisions relating to trade marks and copy - right may be determined by the Controller. The pro - cedural rules relating to any appeals from decisions of the Controller of the IPOI to the High Court are also outlined in Orders 63A and 94 of the RSC. Specialist Intellectual Property Court for Copyright and Trade Mark Cases Order 63A of the RSC established an Intellectual Prop - erty and Technology division of the Commercial High Court. Intellectual property proceedings are defined in the rules as including any proceedings instituted, application made or appeal lodged under the Trade Marks Act 1996 or the Copyright and Related Rights Act 2000, and proceedings instituted for relief in respect of unregistered intellectual property rights or in respect of the right to prevent passing off. An Intellectual Property and Technology List Judge is appointed by the President of the High Court to hear and determine proceedings listed in the Intellec - tual Property and Technology List. This judge will be appointed by the President of the High Court. Juries do not hear intellectual property cases in Ireland. The parties have no influence on who the decision-maker is.
8.2 Effect of Registration Litigation Benefits of Trade Mark or Copyright Registration For trade mark proprietors, legislative benefits arise from the Trade Marks Act registration system. There is no statutory registration for copyright, so no equiva - lent benefits apply. Under Sections 13 and 14 of the Trade Marks Act, the owner of a registered trade mark has the right to prevent infringement. Ownership of the mark is suffi - cient to establish such a right. Section 76 of the Trade Mark Act provides that registration is prima facie evi - dence of validity, and therefore enjoys legal effect until revoked or declared invalid. Extent of Use Required to Establish Trade Mark Infringement As noted in 7.2 Legal Claims for Infringement Law- suits and Their Standards , the Trade Marks Act specifies three scenarios that constitute trade mark infringement; what constitutes use of a sign is also listed therein. Therefore, it only needs to be shown that the alleged infringer’s conduct amounts to use of a sign as defined above, and that such use falls within one of the infringement scenarios. 8.3 Costs of Litigating Infringement Actions There is no typical costs model or fixed costs model for bringing a trade mark or copyright infringement action in Ireland. A multitude of factors may impact costs, including the type of case and the strategy pro - posed. Costs for bringing a trade mark or copyright infringe - ment action will vary depending on the court in which proceedings are issued. In Ireland, proceedings may be brought in the District Court, the Circuit Court or the High Court. The value of claims in the District and Circuit Courts is capped by legislation. While it is technically possible to issue proceedings in these lower courts, the Commercial Court is a more attrac - tive forum as matters are case managed, streamlined and fast tracked. It is more likely that such actions will be initiated in the Intellectual Property and Tech - nology division of the Commercial High Court. Costs awarded in the lower courts are generally lower than those awarded in the specialist division.
226 CHAMBERS.COM
Powered by FlippingBook