|
Trade Marks in Ireland: Should the Irish Patents
Office Continue to Examine Applications on Relative Grounds?
The Irish Department of Enterprise, Trade and Employment (DETE)
has initiated a consultation process to consider whether the procedures
for the examination of trade mark applications under Section 10
of the Trade Marks Act 1996, as amended (TMA), should be changed.
This consultation process is in response to changes in a number
of other jurisdictions that have recently ceased using relative
grounds examination as a bar to registration. For example, the UK
Intellectual Property Office now objects to applications only on
absolute grounds, (i.e. that the mark lacks distinctive character
or is descriptive).
Relative Grounds Examination --The Current
Irish Regime
Under the current Irish regime, the Irish Patents Office (IPO)
is required, under Section 10 of the TMA, to raise objections against
new trade mark applications on the grounds of a prior identical
or confusingly similar Irish, Community or international mark (designating
Ireland or the EU) (Prior Mark). This is commonly known as a "relative
grounds objection". If it is the case that a Prior Mark exists,
the IPO will inform the applicant in writing that the Prior Mark
will form the basis of an objection to the registration of the mark.
If the objection cannot be overcome by the applicant, registration
of the later mark will be refused by the IPO.
The Future of Irish Trade Mark Examinations
– Options
The DETE has highlighted some policy considerations and options
and is inviting comments from interested parties:
| OPTION |
PROS |
CONS |
Option One:
Maintain the status quo, as set out above.
|
Has worked well to date and guarantees the purity of the Register
of Trade Marks.
|
Increasing volumes of trade mark applications means difficulty
for applicants in overcoming relative grounds objections. |
Option Two:
Establish a “search and notify” system notifying search results
for Prior Marks to applicant only. |
Applicant has notice of Prior Marks; can decide on basis of
results whether to proceed with trade mark application.
|
Proprietors bear the cost and burden of monitoring trade mark
applications. Requires amendments to TMA and Trade Mark Rules
1996 (“TMR”). |
Option Three:
Establish a “search and notify” system notifying search results
for Prior Marks to applicant and proprietor. |
Parties have the opportunity to participate in
negotiations regarding the conflicting marks.
|
Could potentially lead to increased number of
opposition proceedings. Potential difficulty in notifying proprietors
of Prior Marks based outside Ireland. Requires amendments to
TMA and TMR. |
Conclusion
Comments on the options set out above are invited by the IPO before
26 February 2010. For example, interested parties may wish to comment
on the examination regime applicable in other jurisdictions, such
as in the UK where an "opt-in" notification system applies. Proprietors
may pay a fee to the UK Intellectual Property Office and be notified
of national trade mark applications affecting them.
Postscript
On 28 June 2010 the IPO published the results of the consultation
process. The IPO reports great support for retaining the status
quo, as opposed to changing the current examination system.
Some reasons given in support of the current regime include the
following:
- the current system ensures, insofar as is possible, that the
Register of Trade Marks is kept clean and devoid of potentially
conflicting trade marks;
- the current system ensures certainty as to who has the exclusive
right to use a particular mark;
- the current system is more beneficial to trade mark proprietors
who may not have the financial resources to vigilantly police
and enforce their rights; and
- Ireland is not out of step with other EU countries in retaining
the relative grounds examination procedure, as twelve other EU
member states also continue to examine trade mark applications
on relative grounds.
For further information please contact Aine
Matthews.
August 2010.
© 2003-2011 LK Shields Solicitors.
All rights reserved.
|
