IRELAND Law and Practice Contributed by: Philip Tully, Emma Doherty, Geraldine Carr, Simon Shinkwin and Carlo Salizzo, Matheson LLP
Length of Protection Registered trade marks (be they national Irish marks, Madrid Protocol marks or EU trade marks) are registered initially for ten years but, uniquely among intellectual property rights, this term can be renewed indefinitely for successive ten-year terms on payment of a renewal fee. A trade mark registration will only remain valid to the extent that the mark is used by the owner in respect of the goods/services for which it was registered. Registration There are three options open to trade mark pro - prietors carrying on business in Ireland. An application for an Irish trade mark at the IPOI An IPOI examiner scrutinises the application to ensure that it can be considered a trade mark under Irish law and generally examines the application to see if its use would infringe pre- existing Irish/EU trade marks or if it otherwise falls within a prohibited form of trade mark. If satisfied with the application, the IPOI publishes it in the Official Journal. Third parties then have three months to oppose the application by filing a notice of opposition. If there is no opposition, or if the opposition proceedings are unsuccessful, the application will proceed to registration on payment of the registration fee. An application for an EU trade mark at the European Union Intellectual Property Office (EUIPO) EU trade marks are filed with the EUIPO and undergo an examination, publication and oppo - sition procedure prior to registration, similar to that described for Irish trade marks above. How -
ever, unlike the IPOI, EUIPO do not investigate whether the trade mark would infringe pre-exist - ing EU trade marks. If the application is accept - ed, the EU trade mark is published in the EU Trade Mark Bulletin. This is followed by a three- month opposition period, during which time any third party can object to the trade mark’s regis - tration. EUIPO also carries out a European Union Search Report and, in the event that the appli - cation identifies any existing trade marks which are similar or identical to the trade mark being applied for, EUIPO notifies proprietors of those existing trade marks to give them an opportunity to oppose the application. If no objections were filed or if opposition proceedings were unsuc - cessful, the EU trade mark will proceed to be registered and the registration published. An EU trade mark is a unitary European-wide property right and protects the trade mark proprietor in all member states of the EU. An international application designating certain states, including Ireland, under the Madrid Protocol On request, the IPOI will forward a trade mark application or registration to the International Bureau of the WIPO in Geneva. The Irish or EU trade mark application or registration serves as a base on which the proprietor may designate the mark for registration in other Madrid Proto - col countries, eg, the UK and the US. The Inter - national Bureau notifies the trade mark offices designated in the international filing, which, in turn, decide whether to accept the application for registration in their territory. A Madrid Protocol filing can be a cost-effective and efficient way to obtain trade mark protection in multiple jurisdictions outside of the EU.
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