How to prove use without invoices – lessons from BIG MAC decision

Any evidence of genuine use is likely to include invoices for products bearing the relevant mark, but what if there are no invoices? The recent BIG MAC case provides useful guidance on which alternative types of evidence are viewed most favourably by the courts and IP offices, and how best to present these.

How to prove use without invoices – lessons from BIG MAC decision
Plain packaging fireworks, Facebook fishing for phishers, and Irish Whiskey in Taiwan: news digest
1 Nov 2019

Plain packaging fireworks, Facebook fishing for phishers, and Irish Whiskey in Taiwan: news digest

In our latest round-up, we look at Mauritius considering introducing the international exhaustion of trademark rights, 6,000 counterfeit products seized in China, Conor McGregor’s latest trademark fight, and much more.

Brexit fraud, an uncertain future for GIs and law firm technology – takeaways from MARQUES 2019
20 Sep 2019

Brexit fraud, an uncertain future for GIs and law firm technology – takeaways from MARQUES 2019

As hundreds of trademark practitioners descend on Dublin this week to attend the 2019 MARQUES Annual Conference, we provide key learnings from one of the biggest trademark events of the year.


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25 Sep 2020

Owner of THERMACOTE mark fails to prevent registration of DULUX TRADE TERMACOAT+

Therma-Cote Inc, the owner of the EUTM THERMACOTE for paints and varnishes, has been unsuccessful in its attempt to oppose the registration of DULUX TRADE TERMACOAT+ for identical or similar goods. Read more

30 Mar 2020

Ireland Patent Firm of the Year: Whitney Moore

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2 Oct 2019

WESTLAKE trademark registration partly revoked

In revocation proceedings involving the mark WESTLAKE, the hearing officer in Ireland has referred to the discussion of the term ‘genuine use’ by the Court of Justice of the European Union in Ansul, La Mer, Silberquelle and Sunrider. Read more

20 Sep 2019

Sky’s opposition maintained against Skyworth Group Company Limited’s application to register SKYWORTH

The hearing officer has upheld an opposition by Sky International AG against Skyworth Group Company Limited’s application to register SKYWORTH for goods in Class 9 in Ireland. Read more


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8 Feb 2019

Irish Whiskey GI protection, no-deal Brexit anti-counterfeiting “travesty”, and Alibaba and eBay on fakes: news digest

In our latest round-up, we look at Brainbase raising money to bolster its licensing platform, the discovery of fake leukaemia drugs, the EUIPO turning to blockchain to fight counterfeiting, and much more. Read more

17 Jun 2005

Department of Finance publishes IP rights guide

The Department of Finance has published the European Communities (Customs
Action against goods suspected of infringing certain Intellectual Property Rights)
Regulations 2004 (SI 181/2005). These implement Council Regulation 1383/2003
and Commission Regulation 189/2004 and are designed to deal more effectively
with the prohibition of the marketing of counterfeit and pirated goods.

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Brand management

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29 Jul 2019

The top filers and a vision for the future: inside EUIPO operations

Less than a year into Christian Archambeau’s tenure as executive director, the EUIPO is laying the groundwork for future expansion. World Trademark Review’s annual focus on the office assesses current operations, reveals the most proactive filers and explores how the agency is taking a global view of trademarks. Read more

15 Feb 2019

Ireland’s strong domestic market and exports boost GDP, but are brands ready for Brexit?

We analyse the Irish trademark landscape to see if brands are prepared for the planned Brexit exit day in just over a month, and how this market has developed over the past decade. Read more

19 Jun 2014

Ireland is first EU country to introduce plain packaging bill for tobacco products

Ireland has become the first EU member state to publish legislation to introduce mandatory plain packaging for tobacco products. The Public Health (Standardised Packaging of Tobacco) Bill 2014 provides that cigarettes, roll-your-own tobacco and other tobacco products cannot bear any trademarks, except a brand name or trade name and a variant name, in certain regulated positions, fonts and colours.

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26 Feb 2010

IP-friendly tax regime is expanded

The Finance Bill 2010, which was published on February 4 2010, proposes a broadening of the tax relief available for IP income and expenditure. The bill follows the introduction in 2009 of a wide-ranging scheme of tax allowances for capital expenditure incurred on the acquisition of IP rights and, in particular, on "managing, developing or exploiting" those rights.

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Enforcement and Litigation

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7 Aug 2019

Return of the Supermac’s: Irish chain delivers another blow to McDonald’s

The EUIPO has partially invalidated McDonald’s EU trademarks for the ‘Mc’ prefix. As with the recent BIG MAC decision, McDonald’s was deemed to have submitted insufficient evidence to claim use for the disputed marks. Read more

4 Jul 2019

Mars successfully opposes Cadbury’s application for FINGERS in respect of chocolate, confectionery and biscuits

The Irish controller of patents, designs and trademarks has upheld that Mars’ opposition against Cadbury’s application for the registration of the mark FINGERS for chocolate, confectionery and biscuits in Class 30. Read more

23 Apr 2019

Last one to use is a rotten egg! Court of Appeal issues its decision in Galway Free Range Eggs Limited v O’Brien

A recent case which went all the way to the Irish Court of Appeal illustrates the difficulties faced by new market entrants when trying to come up with a safe name to avoid potential action from existing market leaders. Read more

26 Oct 2018

Diesel fumes: latest instalment in long-running proceedings between Diesel SpA and Montex Holdings Limited

In the most recent judgment in the long-running dispute between Italian fashion label Diesel and Irish clothing company Montex, the Court of Appeal has confirmed a strict test for admitting new evidence on appeal in trademark cases. Read more


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30 May 2013

Government announces intentions on plain packaging legislation

The Irish government has announced that it intends to introduce legislation requiring standardised packaging for tobacco products. The press release confirmed that the intention is to "remove all form of branding - trademarks, logos, colours and graphics. The brand name would be presented in a uniform typeface for all brands, and the packs would all be in one plain neutral colour".

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Law Firms

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7 Sep 2018

The fall of the own-name defence

The ability to raise the own-name defence in Europe is about to come to an end. This article examines the consequences of recent own-name legislative changes for businesses in Europe. Read more

IP Offices

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19 Feb 2013

Patents Office publishes notice on IP TRANSLATOR and unacceptable class heading terms

The Irish Patents Office is the latest national IP office to publish a notice on its interpretation of the decision of the ECJ in <i>IP TRANSLATOR</i>. The office considers that the answer to the first question in the decision - namely, the goods and services must be identified with sufficient clarity and precision to enable the competent authorities and traders to determine the extent of protection of the mark - must take precedence over the answers to the second and third questions.

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20 Feb 2017

Sale and purchase of new gTLD registries continue in 2017 as Donuts acquires '.irish'

The past couple of years have seen the emergence of an aftermarket for the purchase of new gTLD registries, with registry operators seeking to cut their losses following a disappointing number of registrations across the new gTLD name space overall. This trend has continued in 2017 with the acquisition of ‘.irish’ by Donuts, which oversees a portfolio of approximately 200 gTLDs. However, quite why the ‘.irish’ gTLD failed to take off is unclear. Read more

7 Jan 2016

One and two-letter '.ie' domain names launched

IEDR, the Irish domain name registry, has begun to release one and two-character ‘.ie’ domain names for registration. Once the sunrise period and any associated auctions have been completed, any one and two-letter ‘.ie’ domain names which have not been registered will be released for registration to any party that can satisfy the standard registration requirements during the landrush phase. IEDR expects this phase to commence on February 21 2016. Read more

7 Jul 2015

One and two-character '.ie' domain names coming soon

IEDR, the Irish domain name registry, has announced that it is proposing to allow for the registration of one and two-character ‘.ie’ domain names. IEDR proposes to release one and two-character domain names for registration in three phases: the sunrise period, the landrush period and general availability. It is running a public consultation period for 30 days, ending on July 9 2015.

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16 Jan 2015

IEDR launches DNSSEC in '.ie' domain name space

IEDR has announced that it will enable registrars and registrants to submit Domain Name System Security Extensions data, via IEDR's online systems, in the ‘.ie’ domain name space in early 2015. IEDR first deployed DNSSEC in November 2014. The implementation of DNSSEC offers ‘.ie’ domain name holders, their customers and general internet users an additional level of security.

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Portfolio Management

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18 Jan 2019

Important changes to Irish trademark law – what you should know

Important changes to Irish trademark law came into effect on 14 January 2019. This update highlights a number of key changes that trademark owners and attorneys should be aware of. Read more

11 Sep 2018

AUTOKEY marks found to have acquired secondary meaning as badge of origin

The Irish controller for patents, designs and trademarks has found that, although two AUTOKEY marks were liable to be refused under two different sections of the Trademarks Act, the marks had acquired distinctiveness through use. Read more

3 May 2018

Can a mark be invalidated based on a lack of legal entitlement to own property?

In <em>Savanagh Securities Limited v Cumann Lúthchleas Gael</em>, the applicant claimed that the registration of the mark GAA offended Section 7 of the Irish Trademarks Act because its proprietor is an unincorporated association which cannot own property in its own name.

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30 Jun 2017

No healthy profit in nutritional supplements case

In <i>Nutrimedical BV v Nualtra Ltd</i> the High Court highlighted the costs and risks of litigation, particularly where the decision has limited commercial effect as the contested trademark is no longer in use and where even in victory the plaintiff can be deprived of the election for an account of profits.

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Trademark law

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17 Oct 2017

ALLENKEYGUARD mark refused

A hearing officer has refused Allenkey Fittings Limited's application to register ALLENKEYGUARD as a trademark, despite the fact that the level of disputed similarity did not reach the threshold for a likelihood of confusion, on the grounds that the mark violates Sections 8(4)(b), 10(3) and 10(4)(a) of the Trademarks Act for bad faith, unfair advantage and passing off.

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12 May 2017

Back on track: comparative advertising in Ireland is on agenda again

In 2013 the Irish High Court issued a decision which made comparative advertising a game of Russian roulette. It had significant consequences for Irish and UK advertisers running campaigns across both markets and was out of step with both European decisions and the policy goals underlying comparative advertising law. However, the Court of Appeal recently overturned the decision on almost all counts.

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20 Apr 2017

Evidence of genuine use in the spotlight

In <i>Verweij Fashion BV v Walton International Limited</i>, the registration of the trademark GIORDANO was revoked in respect of all the goods for which it was registered. The case provides helpful guidance when considering acceptable evidence of genuine trademark use, especially in the context of online sales.

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19 Jan 2017

TITANIC QUARTER revoked due to "clear absence of evidence of use"

In Property Renaissance Limited v Titanic Trademark Limited, Property Renaissance Limited has obtained the revocation of the word mark TITANIC QUARTER, registered in the name of Titanic Trademark Limited in Classes 36, 41 and 42, on the basis that the mark had not been put to genuine use in Ireland. Read more