IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
Other factors that can significantly impact costs include the complexity of the case, whether discov - ery is required, whether expert witnesses need to be called, the duration of the trial, and administrative expenses such as stamp duty. It is worth noting that a stamp duty (court fee) of EUR5,000 (tax payable to the court for issuing documents) is required to initi - ate proceedings in the specialist Intellectual Property Court. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement There are a number of statutory defences to trade mark infringement and a number of defences that arise as a matter of common law and equitable prin - ciples, which are discussed below. Legislative defences to a trade mark infringement claim include the following. • The existence of an Irish trade mark registration (Section 15 (1) of the Trade Marks Act). • Own name or address (Section 15 (2)(a) of the Trade Marks Act). • The use of a sign that is not distinctive or is descriptive (Section 15 (2)(b) of the Trade Marks Act). • The use of a sign for the purpose of identifying or referring to goods or services of a registered trade mark (Section 15 (2)(c) of the Trade Marks Act). This defence is predominantly to allow merchants in the spare parts or refurbishment industry to refer to registered trade marks. The act specifies that this use is limited to use in the course of trade and in accordance with honest practices in industrial and commercial matters. • The use of an earlier right in a particular locality (Section 15 (3) of the Trade Marks Act). Subsection 4 prescribes that an earlier right includes an unreg - istered right. This defence is location-specific, and such use would be protected by any rule of law, including that of passing off. • Exhaustion of rights conferred by registered trade mark (Section 16 (1) of the Trade Marks Act). How - ever, exhaustion may be challenged where there
are legitimate reasons for the proprietor of the trade mark to oppose further dealings in the goods, in particular where the condition of the goods has been changed or impaired after they have been put on the market. • Non-use of a trade mark within the first five years of registration (Section 51 of the Trade Marks Act). Where a registered trade mark has not been put to genuine use within the first five years of its registra - tion and there are no proper reasons for genuine use, the mark may be challenged. The proprietor of a trade mark shall be entitled to prohibit the use of a sign only to the extent that the proprietor’s rights are not liable to be revoked pursuant to Section 51 at the time the action for infringement is brought. • Comparative advertising is permitted if it is in accordance with honest practices in industrial or commercial matters (Section 14 (6) of the Trade Marks Act). Permitted use must comply with the conditions set out in the European Communities (Misleading and Comparative Marketing) Regula - tions 2007. • Acquiescence (Section 53 (1) of the Trade Marks Act) – where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continu - ous period of five years in the use of a registered trade mark in the State, while being aware of that use, the proprietor shall no longer be entitled, on the basis of that earlier trade mark or other right, to apply for a declaration that the registration of the later trade mark is invalid, nor to oppose the use of the later trade mark in relation to the goods or services in connection with which it has been so used, unless the registration of the later trade mark was applied for in bad faith. There are a number of common law equitable defenc - es that may be relied on, such as laches, estoppel and acquiescence. Laches is where undue delay in enforc - ing rights causes prejudice to the defendant. Estoppel prevents a proprietor from asserting rights where their conduct has led the defendant to reasonably rely on representations. Acquiescence is where the proprietor knowingly tolerates the use of a mark for a significant period, typically five years, without objection. Not all of these defences are a total bar to liability. A number of the defences outlined in Section 15
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