IRELAND Law and Practice Contributed by: Hannah McLoughlin, Jane Bourke, Karen Gallagher and Kevin Doyle, Pinsent Masons Ireland LLP
of infringing goods sold, damage to brand value, and whether a reasonable royalty should be assessed. There is no copyright registration system in Ireland. The Trade Marks Act prescribes statutory remedies such as damages, injunctions, an account of profits, and delivery up or destruction of infringing goods. These statutory remedies are not available to a plaintiff relying on passing off; however, the court retains wide discretion and may still grant any of these remedies. 10.3 Attorneys’ Fees and Costs In Ireland, the general rule is that costs follow the event (the term “fee shifting” is not commonly used for this practice in Ireland). As a result, the losing party must reimburse the prevailing party’s reasonable costs of the litigation, including court fees, expenses, expert witness fees, and solicitors’ and barristers’ profes - sional fees. The award of costs is subject to judicial discretion under the Legal Services Regulation Act 2015, Section 169 of which sets out conditions where costs may not be recoverable by the successful party, or where costs are only partially awarded. In exercising its discretion, the court may consider factors such as: • behaviour before and during proceedings; • whether it was reasonable to raise or contest issues; • the manner in which cases were conducted; • any exaggeration of claims; • payments into court; • offers to settle and their timing; and • whether parties acted unreasonably in refusing set - tlement discussions or mediation when invited by the court. 10.4 Ex Parte Relief It is possible to apply for ex parte relief in the form of an interlocutory injunction, but only in very limited and urgent circumstances. Courts generally require strong evidence of urgency and irreparable harm to grant ex parte relief, as it departs from the principle of audi alteram partem (the right to be heard). Such an application is typically made on a temporary (interim) basis to prevent irreparable harm until a full hearing can take place with the defendant present. An ex
parte application is therefore a short-term measure, and a substantive hearing will ultimately occur with the notice party involved. Under normal circumstances, when seeking interlocu - tory relief, notice to the infringing party is required. This may involve short notice of the application; how - ever, in most cases, a letter before action or a cease and desist letter will have been issued prior to seek - ing relief. Failure to issue such a letter may result in adverse costs consequences for the claimant. 10.5 Customs Seizures of Counterfeits or Parallel Imports The EU Union (Customs Enforcement of Intellectual Property Rights) Regulations 2013 (S.I. No. 562 of 2013), which implement Regulation (EU) 608/2013 of the European Parliament and Council, govern the pro - cedural steps for dealing with counterfeit goods in Ire - land. The Irish Revenue Commissioners (“Revenue”) are the designated statutory authority empowered to act under these Regulations. To obtain protection through customs enforcement (except in certain ex officio circumstances), trade mark and copyright owners must submit an Appli - cation for Action (AFA). When suspected counterfeit goods enter Ireland and an AFA is in place, the goods will be detained, and the rights holder (the “decision- holder”) will be notified. The decision-holder must also be informed of the detention on the same day or as soon as possible after the notice of detention is issued to the declarant or holder of the goods. The decision- holder then has ten working days to indicate: • whether it believes the goods infringe its intellec - tual property rights; • if infringement is suspected, whether it agrees to the destruction of the goods; and • where appropriate, whether it has initiated pro - ceedings to determine infringement. In addition to the AFA system, there is an ex officio procedure allowing Revenue customs officers to detain goods (excluding perishables) that they sus - pect infringe intellectual property rights.
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