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6 1996

TRADE MARKS ACT, 1996

PART III

Community Trade Marks and International Matters

Community Trade Marks

Meaning of “Community trade mark” and “Community Trade Mark Regulation”.

56. —In this Act—

(a) “Community trade mark” has the meaning given by Article 1 (1) of the Community Trade Mark Regulation; and

(b) “the Community Trade Mark Regulation” means Council Regulation (EC) No. 40/94 of 20 December, 1993 on the Community trade mark.

Power to make provision in connection with Community Trade Mark Regulation.

57. —(1) The Minister may by regulations make such provision as he considers appropriate in connection with the operation of the Community Trade Mark Regulation.

(2) Provision may, in particular, be made with respect to—

(a) the filing of applications for Community trade marks through the Patents Office;

(b) the procedures for determining a posteriori the invalidity, or liability to revocation, of the registration of a trade mark from which a Community trade mark claims seniority;

(c) the conversion of a Community trade mark or an application

for a Community trade mark into an application for registration under this Act; and

(d) the designation of Courts in the State having jurisdiction over proceedings arising out of the Community Trade Mark Regulation.

(3) Without prejudice to the generality of subsection (1), provision may be made by regulations under this section making in relation to the list of professional representatives maintained in pursuance of Article 89 of the Community Trade Mark Regulation, and persons on that list, provision corresponding to that made by, or capable of being made under, sections 84 to 90 in relation to the register of trade mark agents and registered trade mark agents.

(4) Section 24 (remedy for groundless threats of infringement proceedings) and Part VI (offences) shall apply in relation to a Community trade mark as they apply in relation to a registered trade mark.

The Madrid Protocol: International Registration

The Madrid Protocol.

58. —In this Act—

the Madrid Protocol” means the Protocol relating to the Madrid Agreement concerning the International Registration of Marks, adopted at Madrid on 27th June, 1989;

the International Bureau” has the meaning given by Article 2 (1) of that Protocol; and

international trade mark” means a trade mark which is entitled to protection in the State under that Protocol.

Power to make provision giving effect to Madrid Protocol.

59. —(1) The Minister may by regulations make such provision as he considers appropriate for giving effect in the State to the provisions of the Madrid Protocol.

(2) Provision may, in particular, be made with respect to—

(a) the filing of applications for international registrations through the Patents Office as office of origin;

(b) the procedures to be followed where the basic application or registration in the State fails or ceases to be in force;

(c) the procedures to be followed where the Patents Office receives from the International Bureau a request for extension of protection to the State;

(d) the effects of a successful request for extension of protection to the State;

(e) the transformation of an international registration or an application for an international registration into a national application for registration;

(f) the communication of information to the International Bureau;

(g) the payment of fees and amounts prescribed in respect of applications for international registrations, extensions of protection and renewals.

(3) Section 24 (remedy for groundless threats of infringement proceedings); and Part VI (offences) shall apply in relation to an international trade mark as they apply in relation to a registered trade mark.

The Paris Convention: Supplementary Provisions

The Paris Convention.

60. —(1) In this Act—

(a) “the Paris Convention” means the Paris Convention for the Protection of Industrial Property of March 20th, 1883, as amended or supplemented by any protocol to that Convention which is for the time being in force in the State; and

(b) a “Convention country” means a country, other than the State, which is a party to that Convention.

(2) The Minister may by order make such amendments of this Act and rules made under this Act as appear to the Minister appropriate in consequence of any revision or amendment of the Paris Convention after the passing of this Act.

Protection of well-known trade marks: Article 6bis.

61. —(1) References in this Act to a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark are to a mark which is well known in the State as being the mark of—

(a) a national of a Convention country, or

(b) a person who is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention country,

whether or not that person carries on business, or has any goodwill, in the State; and references to the proprietor of such a mark shall be construed accordingly.

(2) Subject to section 53 , the proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark shall be entitled to restrain by injunction the use in the State of a trade mark which, or the essential part of which, is identical or similar to the proprietor's mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.

(3) Nothing in subsection (2) shall affect the continuation of any bona fide use of a trade mark begun before the commencement of this section.

National emblems &c. of Convention countries: Article 6ter.

62. —(1) A trade mark which consists of or contains the flag of a Convention country shall not be registered without the authorisation of the competent authorities of that country, unless it appears to the Controller that use of the flag in the manner proposed is permitted without such authorisation.

(2) A trade mark which consists of or contains the armorial bearings or any other state emblem of a Convention country which is protected under the Paris Convention shall not be registered without the authorisation of the competent authorities of that country.

(3) A trade mark which consists of or contains an official sign or hallmark adopted by a Convention country and indicating control and warranty shall not, where the sign or hallmark is protected under the Paris Convention, be registered in relation to goods or services of the same or a similar kind as those in relation to which it indicates control and warranty, without the authorisation of the competent authorities of the country concerned.

(4) The provisions of this section as to national flags and other state emblems and official signs or hallmarks apply equally to anything which, from a heraldic point of view, imitates any such flag or other emblem, sign or hallmark.

(5) Nothing in this section prevents the registration of a trade mark on the application of a national of a country who is authorised to make use of a state emblem or official sign or hallmark of that country, notwithstanding that it is similar to that of another country.

(6) Where, by virtue of this section, the authorisation of the competent authorities of a Convention country is or would be required for the registration of a trade mark, those authorities shall be entitled to restrain by injunction any use of the mark in the State without their authorisation.

Emblems &c. of certain international organisations: Article 6ter.

63. —(1) This section applies to—

(a) the armorial bearings, flags or other emblems, and

(b) the abbreviations and names,

of international intergovernmental organisations of which one or more Convention countries are members.

(2) A trade mark which consists of or contains any such emblem, abbreviation or name which is protected under the Paris Convention shall not be registered without the authorisation of the international organisation concerned, unless it appears to the Controller that the use of the emblem, abbreviation or name in the manner proposed—

(a) is not such as to suggest to the public that a connection exists between the organisation and the trade mark; or

(b) is not likely to mislead the public as to the existence of a connection between the user and the organisation.

(3) The provisions of this section as to emblems of an international organisation apply equally to anything which, from a heraldic point of view, imitates any such emblem.

(4) Where, by virtue of this section, the authorisation of an international organisation is or would be required for the registration of a trade mark, that organisation shall be entitled to restrain by injunction any use of the mark in the State without its authorisation.

(5) Nothing in this section affects the right of a person whose bona fide use of the trade mark in question began before 9th June, 1967 (when the relevant provisions of the Paris Convention entered into force in relation to the State).

Notification under Article 6ter of the Convention.

64. —(1) For the purposes of section 62 state emblems of a Convention country (other than the national flag) and official signs or hallmarks shall be regarded as protected under the Paris Convention only if, or to the extent that—

(a) the country in question has notified the State in accordance with Article 6ter (3) of the Convention that it desires to protect the emblem, sign or hallmark;

(b) the notification remains in force; and

(c) the State has not objected to it in accordance with Article 6ter (4) or any such objection has been withdrawn.

(2) For the purposes of section 63 , the emblems, abbreviations and names of an international organisation shall be regarded as protected under the Paris Convention only if, or to the extent that—

(a) the organisation in question has notified the State in accordance with Article 6ter (3) of the Convention that it desires to protect that emblem, abbreviation or name;

(b) the notification remains in force; and

(c) the State has not objected to it in accordance with Article 6ter (4) or any such objection has been withdrawn.

(3) Notification under Article 6ter (3) of the Paris Convention shall have effect only in relation to applications for registration made more than two months after the receipt of the notification.

(4) The Controller shall keep and make available for public inspection by any person, at all reasonable hours and free of charge, a list of—

(a) the state emblems and official signs or hallmarks, and

(b) the emblems, abbreviations and names of international organisations,

which are for the time being protected under the Paris Convention by virtue of notification under Article 6ter (3).

Acts of agent or representative: Article 6septies.

65. —(1) The following provisions apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Convention country and the application is made without the proprietor's authorisation.

(2) Where the proprietor opposes the application, registration shall be refused.

(3) Where the application (not being so opposed) is granted, the proprietor may—

(a) apply for a declaration of the invalidity of the registration; or

(b) apply for the rectification of the register so as to substitute the proprietor's name as the proprietor of the registered trade mark.

(4) The proprietor may (notwithstanding the rights conferred by this Act in relation to a registered trade mark) apply to the Court to restrain by injunction any use of the trade mark in the State which is not authorised by the proprietor.

(5) Subsections (2), (3) and (4) shall not apply if, or to the extent that, the agent or representative justifies his action.

(6) An application under subsection (3) (a) or (b) must be made within three years of the proprietor becoming aware of the registration; and no injunction shall be granted under subsection (4) in respect of a use in which the proprietor has acquiesced for a continuous period of three years or more.