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27 August 2010

Important Changes to Trade Mark Procedures in Ireland

Amendments to the Trade Marks Rules have been signed into law Ireland which come into effect on 4 October, 2010. The main changes are as follows:

A limit has been introduced on the number of marks which may appear in a series, with the maximum being 6 marks. Where a series application contains 3 or more marks, an additional fee is required for the 3rd mark and each subsequent mark (which has not been set yet).

A new procedure whereby parties to an opposition have the option to file written submissions in lieu of attending at a hearing. The purpose behind this change is to allow parties who do not wish to attend at a hearing an opportunity to file legal arguments and statements of opinion, which are not appropriate for statutory declaration evidence. If both parties elect to file written submissions, each party will have an opportunity to file submissions in reply to those of the other party.

The procedures for an application for a declaration of invalidity have been substantially amended to align the procedures to those of an opposition action, which an invalidity action closely resembles. This means that an invalidity action now involves filing the following materials:

• 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;
• Further evidence with the leave of the Controller.

The provisions relating to attendance at a hearing or filing written submissions in lieu thereof also apply to invalidity actions.

These amendments are generally welcome as they provide parties to opposition proceedings with a range of options to suit their particular circumstances. They also make the conduct of invalidity actions more predictable. The important ability to file an application for a series of marks is also retained, with some limitations.

Niamh Hall, FRKelly