Trade Marks Act, 1963

• Jurisdiction: Ireland
• Citation: IR No. 9/1963

Number 9 of 1963.
TRADE MARKS ACT, 1963.
ARRANGEMENT OF SECTIONS
PART I
Preliminary and General
Section 1. Short title and commencement. 2. Interpretation. 3. Power of Minister to make rules. 4. Fees. 5. Exercise of powers of Minister. 6. Excluded days. 7. Expenses. 8. Repeal and savings.
PART II
Provisions Relating to Registration
9. The register of trade marks. 10. No action for infringement of unregistered trade mark. 11. Registration to be in respect of particular goods. 12. Right given by registration in Part A and infringement thereof. 13. Right given by registration in Part B and infringement thereof. 14. Infringement by breach of certain restrictions. 15. Saving for vested rights. 16. Saving for use of name, address or description of goods. 17. Distinctiveness requisite for registration in Part A. 18. Capability of distinguishing requisite for registration in Part B. 19. Prohibition of registration of deceptive and certain other matter. 20. Prohibition of registration of identical and resembling trade marks. 21. Registration in Part A to be conclusive as to validity after seven years. 22. Registration subject to disclaimer. 23. Word trade mark used as name of article or substance. 24. Effect of limitation as to colour and of absence thereof. 25. Application for registration. 26. Opposition to registration. 27. Registration. 28. Duration and renewal of registration. 29. Registration of parts of trade marks and of trade marks as a series. 30. Powers of and restrictions on assignment and transmission. 31. Certain trade marks to be associated so as to be assignable and transmissible as a whole only. 32. Power of registered proprietor to assign and give receipts. 33. Registration of assignments and transmissions. 34. Removal from the register and imposition of limitations on ground of non-use. 35. Defensive trade marks. 36. Registered users. 37. Proposed use of trade mark by corporation to be constituted. 38. Use of one of associated or substantially identical trade marks equivalent to use of another. 39. Use of trade mark for export trade. 40. General power to rectify entries in register. 41. Power to expunge or vary registration for breach of condition. 42. Correction of register. 43. Alteration of registered trade mark. 44. Adaptation of entries in register to amended or substituted classification of goods. 45. Certification trade marks. 46. Registration of marks by Ministers. 47. Misuse of trade marks indicative of Irish origin.
PART III
Provisions Relating to Powers and Duties of Controller and to Legal Proceedings
48. Preliminary advice by Controller as to distinctiveness. 49. Controller may consult Attorney General. 50. Hearing before exercise of Controller's discretion. 51. Power of Controller to award costs. 52. Registration to be prima facie evidence of validity. 53. Certificate of validity. 54. Costs of the Controller in Court proceedings. 55. Trade usage and other matters to be considered. 56. Controller's appearance in proceedings. 57. Appeal to the Court. 58. Court's power to review Controller's decision. 59. Procedure in cases of option to apply to Court or Controller. 60. Mode of giving evidence. 61. Evidence of entries in register. 62. Evidence of things done by Controller.
PART IV
Miscellaneous
63. Falsification of entries in register. 64. Fine for falsely representing a trade mark as registered. 65. Unauthorised user of State badges. 66. Change of form of trade connection not to be deemed to cause deception. 67. Jointly owned trade marks. 68. Trusts and equities. 69. Recognition and registration of trade mark agents. 70. International agreements. 71. Offences by bodies corporate or unincorporated bodies. 72. Transitional provisions.
FIRST SCHEDULE
SECOND SCHEDULE
Acts Referred to INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927 1927, No. 16 Partnership Act, 1890 1890, c. 39 Public Offices Fees Act, 1879 1879, c. 58 Irish Nationality and Citizenship Act, 1956 1956, No. 26 Solicitors Act, 1954 1954, No. 36 Petty Sessions (Ireland) Act, 1851 1851, c. 93
Number 9 of 1963.
TRADE MARKS ACT, 1963.
AN ACT TO MAKE NEW PROVISION IN RESPECT OF TRADE MARKS AND RELATED MATTERS, IN SUBSTITUTION FOR THE PROVISIONS OF PART IV AND (SO FAR AS IT RELATES TO TRADE MARKS) PART V OF THE INDUSTRIAL AND COMMERCIAL PROPERTY (PROTECTION) ACT, 1927 , AND OTHER ENACTMENTS RELATING THERETO, AND TO PROVIDE FOR OTHER MATTERS CONNECTED WITH THE MATTERS AFORESAID. [3rd April, 1963.]
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, 1963.
	(2) This Act shall come into operation on such date as the Minister may by order appoint.
	Interpretation.	2.—(1) In this Act, unless the context otherwise requires—
	“the Act of 1927” means the Industrial and Commercial Property (Protection) Act, 1927 ;
	“assignment” means assignment by act of the parties concerned;
	“the Controller” means the Controller of Industrial and Commercial Property appointed under the Act of 1927;
	“the Court” means the High Court;
	“the Journal” means the Official Journal of Industrial and Commercial Property;
	“limitations” means any limitations of the exclusive right to the use of a trade mark given by the registration of a person as proprietor thereof, including limitations of that right as to mode of use, as to use in relation to goods to be sold (or otherwise traded in) in any place within the State, or as to use in relation to goods to be exported to any market outside the State;
	“mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, or any combination thereof;
	“the Minister” means the Minister for Industry and Commerce;
	“the Office” means the Industrial and Commercial Property Registration Office established under the Act of 1927;
	“partnership” has the meaning assigned to it by section 1 of the Partnership Act, 1890 ;
	“permitted use” has the meaning assigned to it by paragraph (b) of subsection (1) of section 36 of this Act;
	“prescribed” means, in relation to proceedings before the Court, prescribed by rules of court, and, in other cases, prescribed by this Act or the rules;
	“the register” means the register of trade marks kept under this Act;
	“registered trade mark” means a trade mark that is actually on the register;
	“registered user” means a person who is for the time being registered as such under section 36 of this Act;
	“the rules” means rules made by the Minister under section 3 or section 44 of this Act;
	“trade mark” means, except in relation to a certification trade mark, a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person, and means, in relation to a certification trade mark, a mark registered or deemed to have been registered under section 45 of this Act;
	“transmission” means transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer not being assignment.
	(2) (a) In this Act references to the use of a mark shall be construed as references to the use of a printed or other visual representation of the mark, and references to the use of a mark in relation to goods shall be construed as references to the use thereof upon, or in physical or other relation to, goods.
	(b) In any other Act references to a trade mark shall be construed as references to a trade mark under this Act.
	Power of Minister to make rules.	3.—(1) The Minister may from time to time make such rules, prescribe such forms and generally do such things as he thinks expedient—
	(a) for regulating the practice under this Act, including the service of documents;
	(b) for classifying goods for the purposes of registration of trade marks;
	(c) for making or requiring duplicates of trade marks and other documents;
	(d) for securing and regulating the publishing and selling or distributing, in such manner as the Minister thinks fit, of copies of trade marks and other documents;
	(e) generally, for regulating the business of the Office in relation to trade marks and all things by this Act placed under the direction or control of the Controller or of the Minister;
	(f) for prescribing any matter referred to in this Act as prescribed or to be prescribed.
	(2) Rules made under this Act shall, while in force, be of the same effect as if they were contained in this Act.
	(3) Every rule made under this Act shall be advertised twice in the Journal, and shall be laid before each House of the Oireachtas as soon as may be after it is made and if a resolution annulling the rule is passed by either House within the next subsequent twenty-one days on which that House has sat after the rule is laid before it, the rule shall be annulled accordingly...