Relative grounds of examination maintained
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The Irish Patents Office has decided to continue to examine trademark applications on relative grounds.
In December 2009 the Intellectual Property Unit of the Department of Enterprise, Trade and Innovation published a consultation paper addressing the issue of whether the examination of Irish trademarks on relative grounds should be abolished. Interested parties were invited to make submissions and there were several responses - some in favour of, and some against, the abolition of this examination basis. The majority of responses received were in support of retaining this basis and the department has now published a paper summarizing the outcome of the consultation process.
The following points were made in support of the abolition of examination on relative grounds:
- Many other national offices have abolished this ground.
- Irish trademark applicants are at a disadvantage compared to Community or international trademark applicants.
- Community trademarks (CTMs) cover Ireland and, as such, can prevent the registration of an Irish application, even though the CTM may never be used in Ireland. The same is true for international trademarks designating Ireland.
- If an Irish application is refused on relative grounds, it may still be possible to obtain a CTM, which will be effective in Ireland.
In contrast, the following points were made against the abolition of examination on relative grounds and in favour of maintaining the current system:
- It ensures that the register is clean insofar as is possible.
- It provides certainty as to who has the right to exclusive use of a mark.
- Several other EU member states still conduct examination on relative grounds.
- It is more beneficial for proprietors who are not in a financial position to police and enforce their rights.
- If it were removed, trademarks could be obtained more easily. Given that ownership of an Irish trademark registration is a defence to trademark infringement in Ireland, the defence of infringement would be more widely available and, as such, less effective.
- There is no evidence to show that the retention of the relative grounds examination has caused a decrease in the number of Irish trademark applications filed, or that people are opting to file CTMs as an alternative to filing Irish applications.
Taking the above points into consideration, the department decided to continue to examine Irish trademark applications on relative grounds. The Patents Office believes that, if it moves to a 'search and notify' system, similar to that of the Office for Harmonization in the Internal Market or the UK Intellectual Property Office, marks that are not capable of distinguishing the goods and services of one undertaking from those of another would end up being registered, and this would compromise the integrity of the register. However, the Patents Office has indicated that it will continue to monitor this matter - and, in particular, observe developments in other jurisdictions. As such, a further review of this matter is possible in the future.
Nicole Gernon, FRKelly, Dublin
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