Trade marks act, 1996

• Act Number: 6
• Enactment Date: 16 March 1996

Number 6 of 1996
TRADE MARKS ACT, 1996
ARRANGEMENT OF SECTIONS
PART I
Preliminary and General
Section 1. Short title and commencement. 2. Interpretation. 3. Orders, regulations and rules. 4. Expenses. 5. Repeal.
PART II
Registered Trade Marks
6. Trade marks. 7. Registered trade marks. 8. Absolute grounds for refusal of registration. 9. Specially protected emblems. 10. Relative grounds for refusal of registration. 11. Meaning of “earlier trade mark”. 12. Raising of relative grounds in case of honest concurrent use. 13. Rights conferred by registered trade mark. 14. Infringement of registered trade mark. 15. Limits on effect of registered trade mark. 16. Exhaustion of rights conferred by registered trade mark. 17. Registration subject to disclaimer or limitation. 18. Action for infringement. 19. Order for erasure &c. of offending sign. 20. Order for delivery up of infringing goods, material or articles. 21. Meaning of “infringing goods, material or articles”. 22. Period after which remedy of delivery up not available. 23. Order as to disposal of infringing goods, material or articles. 24. Remedy for groundless threats of infringement proceedings. 25. Infringing goods, material or articles: powers of seizure and search. 26. Nature of registered trade mark. 27. Jointly owned trade marks. 28. Assignment &c. of registered trade mark. 29. Registration of transactions affecting registered trade mark. 30. Trusts and equities. 31. Application for registration of trade mark as an object of property. 32. Licensing of registered trade mark. 33. Exclusive licences. 34. General provisions as to rights of licensees in case of infringement. 35. Exclusive licensee having rights and remedies of assignee. 36. Exercise of concurrent rights. 37. Application for registration. 38. Date of filing. 39. Classification of goods and services. 40. Claim to priority of Convention application. 41. Claim to priority from other relevant overseas application. 42. Examination of application. 43. Publication, opposition proceedings and observations. 44. Withdrawal, restriction or amendment of application. 45. Registration. 46. Registration: supplementary provisions. 47. Duration of registration. 48. Renewal of registration. 49. Alteration of registered trade mark. 50. Surrender of registered trade mark. 51. Revocation of registration. 52. Grounds for invalidity of registration. 53. Effect of acquiescence. 54. Collective marks. 55. Certification marks.
PART III
Community Trade Marks and International Matters
56. Meaning of “Community trade mark” and “Community Trade Mark Regulation”. 57. Power to make provision in connection with Community Trade Mark Regulation. 58. The Madrid Protocol. 59. Power to make provision giving effect to Madrid Protocol. 60. The Paris Convention. 61. Protection of well-known trade marks: Article 6bis. 62. National emblems &c. of Convention countries: Article 6ter. 63. Emblems &c. of certain international organisations: Article 6ter. 64. Notification under Article 6ter of the Convention. 65. Acts of agent or representative: Article 6septies.
PART IV
Administrative Provisions
66. The register. 67. Rectification or correction of the register. 68. Adaptation of entries to new classification. 69. Power to require use of forms. 70. Information about applications and registered trade marks. 71. Exercise of discretionary powers by Controller. 72. Costs and security for costs. 73. Evidence before the Controller. 74. Exclusion of liability in respect of official acts. 75. Content of Controller's annual report. 76. Registration to be prima facie evidence of validity. 77. Certificate of validity of contested registration. 78. Controller's appearance in court proceedings. 79. Appeals from the Controller. 80. No award of costs to or against the Controller. 81. Power of Minister to make rules. 82. Fees.
PART V
Trade Mark Agents
83. Authorised agent may act. 84. Register of Trade Mark Agents. 85. Business to be carried on only by registered trade mark agents &c. 86. Entitlement to be registered as trade mark agent. 87. Removal from Register. 88. Suspension and erasure of registration of trade mark agent. 89. Notice of erasure or suspension: subsequent restoration. 90. Rules relating to trade mark agents. 91. Privileged communications.
PART VI
Offences
92. Fraudulent application or use of trade mark in relation to goods. 93. Falsification of register, &c. 94. Falsely representing trade mark as registered. 95. Offences committed by partnerships and bodies corporate.
PART VII
Miscellaneous and General
96. Jurisdiction of the Circuit Court. 97. Unauthorised use of State emblems of Ireland. 98. Misuse of trade marks indicative of Irish origin. 99. Burden of proving use of trade mark. 100. Transitional provisions. 101. Territorial waters and continental shelf. 102. Amendment and adaptation of existing statutes.
FIRST SCHEDULE
Collective Marks
SECOND SCHEDULE
Certification Marks
THIRD SCHEDULE
Transitional Provisions
Number 6 of 1996
TRADE MARKS ACT, 1996
AN ACT TO MAKE NEW PROVISION FOR REGISTERED TRADE MARKS, IMPLEMENTING COUNCIL DIRECTIVE NO. 89/104/EEC OF 21st DECEMBER, 1988, TO APPROXIMATE THE LAWS OF THE MEMBER STATES RELATING TO TRADE MARKS(1) ; TO MAKE PROVISION IN CONNECTION WITH COUNCIL REGULATION (EC) NO. 40/94 OF 20 DECEMBER, 1993, ON THE COMMUNITY TRADE MARK(2) ; TO GIVE EFFECT TO THE MADRID PROTOCOL RELATING TO THE INTERNATIONAL REGISTRATION OF MARKS OF 27th JUNE, 1989, AND TO CERTAIN PROVISIONS OF THE PARIS CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY OF 20th MARCH, 1883, AS REVISED AND AMENDED; TO PERMIT THE REGISTRATION OF TRADE MARKS IN RELATION TO SERVICES AND FOR CONNECTED PURPOSES. [16th March, 1996]
BE IT ENACTED BY THE OIREACHTAS AS FOLLOWS:
PART I Preliminary and General
	Short title and commencement.	1.—(1) This Act may be cited as the Trade Marks Act, 1996.
	(2) The provisions of the Act shall come into operation on such day as the Minister may by order fix.
	(3) Different days may be so fixed for different provisions and different purposes.
	Interpretation.	2.—(1) In this Act, except where the context otherwise requires—
	“the Act of 1963”means the Trade Marks Act, 1963 ;
	“assignment” means assignment by act of the parties concerned;
	“business” includes a trade or profession;
	“Community trade mark”, and “Community Trade Mark Regulation” have the meanings assigned by section 56 ;
	“the Controller” means the Controller of Patents, Designs and Trade Marks;
	“Convention country” has the meaning assigned by section 60 ;
	“the Court” means the High Court;
	“director”, in relation to a body corporate whose affairs are managed by its members, means any member of the body;
	“earlier trade mark” has the meaning assigned by section 11 ;
	“exclusive licence” and “exclusive licensee” have the meanings assigned by section 33 ;
	“infringement proceedings”, in relation to a registered trade mark, include proceedings under section 20 ;
	“the Journal” means the Patents Office Journal;
	“the Minister” means the Minister for Enterprise and Employment;
	“the Office” means the Patents Office;
	“the Paris Convention” has the meaning assigned by section 60 ;
	“partnership” has the meaning assigned by section 1 of the Partnership Act, 1890 ;
	“prescribed” means, in relation to proceedings before the Court, prescribed by rules of court and, in any other case, prescribed by this Act or orders, rules or regulations made hereunder;
	“publish” means make available to the public, and references to publication—
	(a) in relation to an application for registration, are to publication under section 43 (1), and
	(b) in relation to registration, are to publication under section 45 (4);
	“the register”, except in Part V , means the Register of Trade Marks kept under this Act;
	“rules”, except in relation to rules of court, mean rules made by the Minister under section 81 ;
	“State emblem of Ireland” means any emblem notified as such under Article 6ter of the Paris Convention;
	“trade” includes any business or profession;
	“trade mark” has the meaning assigned by section 6 .
	(2) References in this Act to use (or any particular description of use) of a trade mark, or of a sign identical with, similar to, or likely to be mistaken for a trade mark, include use (or that description of use) otherwise than by means of a graphic representation.
	(3) Any reference in this Act to a Community instrument includes a reference to any instrument amending or replacing that instrument.
	(4) In this Act—
	(a) a reference to a Part or section is to a Part or section of this Act, unless it is indicated that reference to some other enactment is intended; and
	(b) a reference to a subsection or paragraph is to the subsection or paragraph of...