Intellectual Property Update: 2015 Review

Author:Mr Richard Woulfe, Gerard Kelly and Lucy O'Reilly
Profession:Mason Hayes & Curran

2015 has seen the heavily contested introduction of standardised packaging for tobacco products, the first ever court mandated graduated response scheme to copyright infringements, and brought clarification to the scope of injunctions in comparative advertising campaigns.

Ireland First EU Country to Introduce Legislation for Standardised Packaging of Tobacco Products

In early 2015, Ireland became the first EU Member State to introduce plain or standardised packaging for tobacco products. The Public Health (Standardised Packaging of Tobacco) Act 2015 was signed into law on 10 March 2015, grounded on measures contemplated, but not mandated, by the new EU Tobacco Products Directive (2014/40/EU). The measures mandated by the act will come into effect on a phased basis between May 2016 and May 2017.

This legislation and similar legislation enacted in the UK has been heavily criticised by commentators and, predictably, by the tobacco companies, as the effective invalidation of trade marks for tobacco products.

A preliminary reference challenging the validity of the new EU Directive was the subject of a preliminary opinion issued by Advocate General Juliane Kokott ("AG") of the Court of Justice of the European Union ("CJEU") on 23 December 2015. The AG concluded that the Directive of 2014 was lawfully adopted. While the AG's Opinion is not binding, the CJEU rarely departs from the underlying opinion of the AG in its decisions so it would seem standardised packaging is here to stay.

Commercial Court Grants Injunction Against ISP to Adopt Graduated Response Scheme

In the most significant Irish copyright decision of the year, the Commercial Court granted an injunction against an Internet service provider ("ISP") to adopt a graduated response scheme ("GRS").

In March 2015, Mr Justice Cregan held that an Irish Court could grant an injunction imposing a GRS against an innocent intermediary to prevent copyright infringement under Article 8(3) of the Copyright in the Information Society Directive (2001/29/EC). The action was brought by music companies Sony, Warner and Universal against one of Ireland's largest internet service providers UPC - now Virgin Media.

The Court held that the injunction, which ordered UPC to engage with its subscribers by issuing letters following complaints from rightsholders on a systematic basis, wasfair and equitable. It was also found to comply with the requirements for injunctions under various EU Directives including...

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