Irish law undergoes major changes

Ireland

The Consumer Protection Act 2007, which replaces the Merchandise Marks Acts and the Consumer Information Act 1978, came into force on May 1 2007.

The Consumer Protection Act 2007 prohibits misleading practices such as marketing or advertising that are likely to cause the average consumer:

  • to confuse a competitor's product with another party's product, or a competitor's trade name, trademark or some other distinguishing feature or mark with that of the trader (Section 42(1)); and

  • to make a transactional decision that he or she would not otherwise make (Section 44).

Any person can seek a court order prohibiting such practices under Sections 67 and 71, while an aggrieved consumer may seek an action for damages, including exemplary damages. An aggrieved consumer's action for damages is particularly far-reaching as it can be directed against any director, manager, secretary or other officer of the trader who authorized or consented to the practice. There is a presumption under the act that directors and employees whose duties include making decisions that, to a significant extent, could have affected the management and operation of the trader consented to the practice (Section 71(5)).

These changes follow major amendments to the Trademarks Act 1996 brought in by the implementation on December 11 2006 of the Patents (Amendment) Act 2006. The amendment act deals with the following aspects:

  • The appeal period from decisions of the Irish Patents Office - there was an ambiguity as to the appeal period because of a conflict between the wording of Section 79 of the Trademarks Act 1996 and the general rules of courts. This had been clarified by case law, but it is also now clarified in the legislation. The appeal deadline is three months from the date of the decision or, where a written statement of the grounds of the decision has been sought, the appeal period will be three months from the date on which the written statement is furnished.

  • Trademarks that have a reputation - Section 10(3) of the Trademarks Act, which deals with relative grounds for refusal of an application on the basis of an earlier mark which has a reputation in Ireland, has been amended to remove any reference to the type of goods or services. Before the amendment, the law limited this ground to situations where the goods and services of the application were dissimilar to those of the earlier mark. In Davidoff v Gofkid (Case C-292/00), the European Court of Justice held that the provision of the First Trademarks Directive on which the Irish act is based must be interpreted to include identical or similar goods. The reasoning was that marks that have a reputation should not have less protection where identical or similar goods or services are concerned than where dissimilar goods or services are in issue. The Trademarks Act is now in line with this ruling as this provision now applies to all types of goods/services, whether identical, similar or dissimilar. This section can be invoked by the Irish Patents Office in an objection to an application or by a third party in an opposition.

    Section 14 dealing with infringements of registered trademarks where the earlier trademark has a reputation in Ireland has also been amended in line with the Davidoff decision to delete any reference to the dissimilarity of the goods or services.

  • The powers of search and seizure regarding infringing goods - Section 25 dealing with the powers of entry and seizure of the Garda Síochána (the Irish police force) has been amended to bring it into line with the powers available under the Copyright and Related Rights Act 2000. The power has been widened from any 'premises' to any 'place' to cover open-air markets for instance. Any member of the police can now obtain a warrant under the section, while formerly only those of the rank of inspector or above could obtain such a warrant. A term of 28 days has now been imposed on these warrants and the powers of entry and seizure have been supplemented by a power of search. The amount of force that can be used has been defined as 'reasonable force where necessary'. The powers have been extended from mere seizure of goods, materials or articles, to making an inventory or preparing other evidence of infringement or potential infringement, seizure of anything which the Garda believes on reasonable grounds may be required to be used in evidence and requiring any person found there to give his or name and address. The registered proprietor of the trademark or a designated representative may be included in the warrant and may be entitled to accompany and assist the Garda. One point that may require further clarification in the future is the obligation on any person found in such a search to give his or her name and address. There does not appear to be any specific offence relating to a failure to comply with this requirement.

  • Registration of mergers - mergers (which have been dealt with in recent years as a change of name of the proprietor) have been included in the definition of 'registrable transactions' by the addition of a new Subsection (2)(ca) to the existing Section 29 (this provision will come into force after a commencement order has been made).

  • Priority for successors in title - the extension of the right of priority to successors in title of the original applicant has been effected by an amendment to Section 41(2).

  • The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) of the World Trade Organization (WTO) - various amendments have been made to implement parts of the TRIPS Agreement. Trademarks that are protected under the TRIPS Agreement as well-known marks (which include trademarks for services and in respect of dissimilar goods or services which were not covered by the Paris Convention for the Protection of Industrial Property) are now included with those protected by the Paris Convention in the relevant sections of the Trademarks Act. The same is true of emblems, abbreviations and names of international organizations. The protection provided to flags, armorial bearings, other state emblems and official signs and hallmarks indicating control or quality now extends to member states of the WTO as well as those of the Paris Convention.

By Niamh Hall, FR Kelly & Co, Dublin

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