ANALYSIS: Changes made to trade mark laws in Ireland give businesses greater scope to protect innovative brands, but put greater onus on those businesses to proactively preserve their trade mark rights.

The reforms, introduced into law on 14 January, implement changes to EU law on trade marks that were finalised in 2015. Other EU countries, including the UK, have also implemented those EU reforms.

The new Irish regulations are aimed at delivering lower costs and greater efficiency for businesses wishing to protect their brand rights in Ireland. They should provide increased legal certainty for companies operating across the EU single market.

There are a number of aspects of the reforms that businesses should take note of in particular.

Modernising Irish trade mark law

There are a number of provisions in the new regulations which will modernise Irish trade mark law. For example, the removal of the requirement for Irish trade marks to be graphically represented provides businesses with greater flexibility in registering non-traditional marks.

It will now be possible to register marks by submitting an application in any format, for example as .mp3, .mp4 or .jpg files, once the clear and precise subject matter of the protection afforded to the owner can be determined.

However, businesses intending to use their Irish trade mark application as the basis for an international application will still need to include a graphic representation of the mark in their Irish application.

Genuine use of trade marks

While the ability to apply for revocation of a trade mark due to non-use is well established, the new regulations, and underlying EU directive, take this one step further by providing that alleged trade mark infringers can now require trade mark rights holders that are suing them to prove their use of their trade mark in Ireland in trade mark infringement proceedings.

If use within the previous five years cannot be shown, and if there are no proper reasons for such non-use, the alleged infringer can use the proprietor’s non-use as a defence to infringement. Non-use can also be used as a defence in opposition and invalidity proceedings.

These new provisions serve to highlight the importance of trade mark owners putting their trade marks to genuine use, in order to ensure that they do not lose trade mark protection.

New rights for licensees

Under the regulations, non-exclusive licensees will now be able to intervene in infringement actions brought by the trade mark owner in order to claim their own damages. Non-exclusive licensees may only bring proceedings for infringement with the consent of the trade mark owner. Exclusive licensees will be able to bring infringement proceedings if the trade mark owner does not, after formal notice, bring proceedings within an appropriate period.

Businesses should take note of the new provisions when drafting trade mark licences, and be careful to exclude any optional provisions under the Trade Marks Act 1996 which are not agreed between the parties.

Automatic transfer of trade mark on the transfer of a business

Transfers in the ownership of a whole business from 14 January 2019 will include the transfer of the trade mark, except where there is an agreement to the contrary or the circumstances clearly dictate otherwise. Businesses who wish to avoid this provision should make the position clear in the transaction documentation.

Aoibheann Duffy is a Dublin-based intellectual property law expert at Pinsent Masons, the law firm behind

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