IRELAND Law and Practice Contributed by: Philip Tully, Emma Doherty, Geraldine Carr, Simon Shinkwin and Carlo Salizzo, Matheson LLP
Enforcement and Remedies An infringement will occur where a mark that is the same as or similar to a registered mark is used in the course of trade in relation to the same or similar goods or services as the regis - tered mark. Where the mark used by a third party is not identical to the registered trade mark, the proprietor needs to show that there is a likeli - hood of confusion on the part of the public. The reliefs available for trade mark infringement include damages, injunctions and orders for an account of profits, and the destruction or deliver - ing up of infringing goods. An unregistered trade mark can be enforced through the vehicle of “passing off”. To succeed in an action for passing off, the plaintiff must show (i) the trader has goodwill or reputation in the product, (ii) the defendant makes a misrep - resentation in the course of trade to prospective customers which leads to confusion between the goods of the trader and the defendant and (iii) such misrepresentation causes or is likely to cause the plaintiff damage. 7.3 Industrial Design Definition Under Irish law, a “design” is defined as the appearance of the whole or part of a product resulting from the features of a product or its ornamentation, including the lines, contours, colour, shape, texture or materials of the prod - uct itself or its ornamentation. In order to be registerable, a design must be ”new” and have “individual character”. Unregistered designs are also granted a level of protection under Irish law. An EU regulation entered into force in Novem - ber 2023 which requires member states to put in place a legal framework for geographical indica - tion (GI) protection for craft and industrial prod -
ucts. The Regulation will apply from 1 December 2025. Ireland is required to enact implementing legislation in advance of this date. Length of Protection The total term of protection for designs under Irish law is 25 years, renewable at five-year inter - vals. An unregistered design exists for three years from the date the design is first made available to the public within the EU, where the disclosure could reasonably have become known to those in the sector concerned, operating within the EU. Registration Designs are registered with the IPOI. An exam - iner will examine the application for compliance with the Designs Act and, if accepted, the design proceeds to registration and is published in the Office Journal. The examiner does not carry out novelty checks on the design applications and the onus is on the applicant to establish the novelty of the design. An application for a Registered Community Design is made with the EUIPO. As with the Irish system, the EUIPO does not carry out an examination into the novelty and individual character of the design. Enforcement and Remedies The reliefs available for industrial design infringe - ment include damages, injunctions and orders for an account of profits. An unregistered design does not confer a monopoly, unlike a registered design, and infringement can take place only if copying can be established.
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