TUESDAY, 21 SEPTEMBER 2010
Ireland's new Trade Marks (Amendment) Rules 2010 come into effect on 4 October 2010. They will modernise trade mark proceedings before the Patents Office in several ways. In particular,
* a new procedure gives parties to an opposition the option to file written submissions in lieu of attending a hearing.
* procedures for an application for a declaration of invalidity have been substantially amended, to align them with opposition procedures. Accordingly an invalidity action will involves filing a notice of opposition/counter-statement by way of defence;
evidence in support of the action by the applicant for invalidity;
evidence by the proprietor of the contested mark;
evidence in reply by the applicant for invalidity; and
further evidence, with the leave of the Office.
* the number of marks which may appear in a series is to be limited to a maximum of six marks.
* the merger of an applicant or proprietor company with a separate company will now be capable of being dealt with like an assignment, rather than as an amendment to the register.
* the deadline to request a hearing has been extended from 10 days to 21 days.
* a new application form now allows the applicant to declare that it is using the mark or has a good-faith intention to use it, rather than having to choose between the two options.
Source: "Trademark proceedings to be modernised" by Niamh Hall (RKelly, Dublin), published in World Trademark Review, 17 September 2010.