Trademark proceedings to be modernised

The Trademarks (Amendment) Rules 2010, which come into effect on October 4 2010, will modernise trademark proceedings in several important aspects.

First, a new procedure has been introduced whereby parties to an opposition have the option to file written submissions in lieu of attending at a hearing. Previous to this, the parties had an 'all or nothing' choice to attend at the hearing and make legal arguments, or allow the matter to be decided on the basis of the factual evidence filed in the statutory declarations. In Ireland, legal arguments and statements of opinion are not appropriate for statutory declaration evidence and, until now, could be introduced only at the hearing. 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. If one party files written submissions and the other attends the hearing, the party attending the hearing will have a chance to comment on the written submissions at the hearing. The party which filed the written submissions will not have an opportunity to comment on anything said at the hearing and will have to try to anticipate and address the likely arguments in its submissions. This is a necessary trade-off: otherwise, the proceedings could drag on interminably.
This procedure also extends to invalidity and revocation actions. This change is particularly welcome, as it provides parties with a variety of options to pursue or defend their case. The new procedure will generally apply only to cases where the hearing date has not been set by  October 4 2010.
Second, the procedures for an application for a declaration of invalidity have been substantially amended to align them with opposition procedures, 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 (although this is not mandatory in an invalidity action, as it is in an opposition);
  • 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; and
  • further evidence with the leave of the Trademarks Office.
This clarifies the procedures for an invalidity action. Previously, it was not clear whether an applicant could file an application for invalidity and follow it at a later stage with the factual evidence to back up its claims, or whether all evidence had to be filed with the application. This put a heavy onus on invalidity applicants to ‘front-load’ their costs. The new procedure provides certainty and a better balance between the parties.
Moreover, a limit has been introduced on the number of marks which may appear in a series, with the maximum being six marks. Similar to the United Kingdom and Australia, in Ireland it is possible to file an application for a series of marks, provided that they do not differ from each other in material particulars. Common examples would be the same logo in black and white and in colour. Where a series application contains three or more marks, an additional fee will be required for the third mark and each subsequent mark. This fee has not yet been set, so the fee aspect cannot come into effect until that has been done.
Until 1996, Ireland had a single-class application system like the United Kingdom, which led to a proliferation of registrations for identical marks with the same effective date in different classes. It is possible to merge these registrations, which provides cost savings for renewal. However, until now it had not been possible to merge registrations where one of them had a transaction registered against it, for example a licence or a security interest. The amendments to the rules have made such mergers possible, provided that the proprietor certifies that any person having an interest in the registration was notified more than three months in advance and has not objected. The merged registration will carry a note clarifying the extent to which the registrable transaction applies to the merged registration, including the specific goods and services affected. This change is likely to affect only a small number of registrations, but it is welcomed nonetheless.
The amendments also cover several technical issues:
  • A merger of an applicant or proprietor company with a separate company will now be capable of being dealt with like an assignment, rather than as an amendment to the register. This requires an additional piece of legislation to be commenced, which is expected shortly.
  • An application to record an assignment now needs to be signed only by the assignor, and not by the assignee as well. This resolves a contradiction between the rules and the Trademarks Act 1996.
  • The deadline to request a hearing has been extended from 10 days to 21 days.
  • A new application form has been adopted, with some minor changes. For example, it now allows the applicant to simply declare that it is using the mark or has a good-faith intention to use it, rather than having to choose between the two options.
These amendments 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, although with some limitations which are not ideal, but are unlikely to be important in most cases. Lastly, several inconsistencies and technical measures have been addressed. There are other matters which trademark attorneys in Ireland would like to be introduced, for example the ability to divide series marks into several applications or registrations so that each application or registration contains one mark covering the same goods and services. Perhaps these issues will be considered the next time the Trademarks Act is being amended. In the meantime, the amendments make the procedures more flexible and predictable for parties, which is always to be welcomed.  
Niamh Hall, FRKelly, Dublin and Belfast

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