In the latest Class 46 blog post on the transposition of the EU Trade Mark Directive, David Flynn and Niamh Hall summarise the reforms in Ireland – including the surprising decision to remove absolute grounds from opposition proceedings:

Important changes to Irish trade mark law came into effect on 14 January 2019. The European Union (Trade Marks) Regulations 2018 have implemented Directive (EU) 2015/2436 into Irish law.

In an extraordinary development, the Irish government took the unprecedented step of removing absolute grounds from Irish opposition proceedings. This was because of an unusual interpretation of Article 43 of the Directive from the European Commission as limiting the grounds for opposition (Member States shall provide for an efficient and expeditious administrative procedure before their offices for opposing the registration of a trade mark application on relative grounds).

Despite submissions by the Association of Patent and Trade Mark Attorneys arguing against the interpretation of this as an exhaustive list, with support from other EU sister organisations as well as a learned written opinion from an EU law expert, the Irish government has now removed the possibility of absolute grounds as a basis for opposition in Ireland.

In addition to the above, there are a further number of key changes of which trade mark owners and attorneys should be aware:

Abolition of absolute grounds from opposition proceedings

Oppositions can now only be based on relative grounds; not on absolute grounds. Therefore, it will no longer be possible to oppose an application on the grounds that the mark is non-distinctive, descriptive, generic, deceptive, contrary to law or public policy, or that the application has been filed in bad faith. Furthermore, the shape exclusions will also no longer be available as a ground of opposition.

However, it will be possible to base an invalidity action on any of these absolute grounds. The downside is that anybody who wants to bring an action based on absolute grounds will have to wait until the mark is registered. The possibility of filing unilateral observations against a pending application on absolute grounds still exists but this is not generally as effective as an invalidity action or formerly an opposition.

Proof of use/non-use as a defence in opposition, invalidity and infringement proceedings

If an earlier trade mark which forms the basis of an opposition, invalidity action or infringement action is over five years old, the owner can now be put on proof of use as part of those proceedings. If genuine use of the earlier mark cannot be shown within the relevant five year period, the opposition/invalidity/infringement action will fail (unless there are proper reasons for non-use).

This means that non-use can now be used as a defence in opposition, invalidity or infringement proceedings. Furthermore, for an infringement action, if an earlier trade mark is vulnerable to revocation based on non-use, a defendant does not have to initiate separate revocation proceedings or counterclaim for revocation to successfully defend the infringement action.

Own name defence

This is now limited only to persons who use their own name and address. It no longer applies to company names. In addition, use of a sign as a trade or company name can now be considered infringement without recourse to this defence.

Removal of graphical representation requirement

It is no longer a requirement that a trade mark be graphically represented for it to be eligible for protection. This means that it will now be possible to register non-traditional trade marks such as sounds, multimedia marks and holograms by uploading digital files such as MP3 and MP4. However, the trade mark must still be represented in a manner that enables the Controller and the public to determine the “clear and precise subject matter of the protection afforded to the proprietor”.

Brand owners should be aware that the Madrid System still requires graphic representation of a trade mark, so unless a trade mark application filed with the Irish Patents Office includes a graphic representation, it cannot be used as a base application for an international application.

Additional absolute grounds

The list of signs excluded from registration has been extended. Signs consisting exclusively of shapes or “another characteristic" will be refused registration if the shape or other characteristic results from the nature of the goods, or is necessary to obtain a technical result, or gives substantial value to the goods.

Furthermore, trade marks will be refused registration if their use is prohibited by any enactment or provision that safeguards Protected designations of Origin (PDOs), Protected Geographical Indications (PGIs), traditional terms for wine and traditional specialties guaranteed, and prior plant varieties. Therefore, from now on trade mark applications will be examined having regard to these additional absolute grounds.

Additional relative grounds

Going forward, PDOs and PGIs can be used as a basis to oppose or invalidate a mark on relative grounds.

Goods in transit

Infringing/counterfeit goods which are “in transit” but not intended for free circulation in Ireland can be detained by Customs with the burden of proof shifting to the importer or holder of the goods, who must show that the trade mark proprietor is not entitled to prohibit the placing of the goods on the market in the country of final destination.

Expansion of anti-counterfeiting measures including preparatory acts

A wider range of counterfeiting activities will now be considered to be acts of trade mark infringement. These include affixing a trade mark to packaging, security, authenticity features or devices, labels, and/or selling, stocking or offering such items for sale, or importing/exporting them.

Comparative advertising

The use of a mark by competitors in comparative advertising may now be prevented by the mark’s proprietor as being a trade mark infringement if it breaches the EU Comparative Advertising Directive (2006/114/EC).

Assignment of trade mark

While it has been always possible to transfer ownership of a trade mark under the Trade Marks Act 1996, there is a new provision whereby the transfer of a whole business shall include the transfer of the trade mark, except where there is agreement to the contrary, or circumstances clearly dictate otherwise.

Therefore, if a trade mark is not included in the transaction documents relating to the sale of a business, the seller will be automatically obliged to assign the mark to the buyer, unless there is an agreement to the contrary or the circumstances say otherwise.

Licensing

There are new provisions whereby, subject to the provisions of the licence, a non-exclusive licensee may bring proceedings for infringement of the trade mark only with the consent of the proprietor. However, the holder of an exclusive licence may bring infringement proceedings if the proprietor of the trade mark, after formal notice, does not bring infringement proceedings within an appropriate period.

Furthermore, a licensee will now have a right to intervene in infringement proceedings brought by the proprietor of the trade mark in order to seek compensation/damages.

Division of registrations

It will now be possible for the proprietor of a registered trade mark to divide the registration into two or more separate registrations.

Reproduction of trade marks in dictionaries, encyclopedias and similar reference works

If the reproduction of a trade mark in a dictionary, encyclopedia or similar reference work gives the impression that it is a generic term for the goods or services which the trade mark is registered for, the publisher of the reference work must now ensure that the mark, at the request of the trade mark proprietor, is accompanied by an indication that the mark is a registered trade mark.

Conclusion

The transposition of the Directive brings important modernizing changes to Irish trade mark law. We consider trade mark owners and attorneys will welcome these changes for the most part.

By David Flynn and Niamh Hall, FRKelly, Dublin & Belfast