Ireland

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.

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

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.

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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

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

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

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Enforcement and litigation

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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

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

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

Online

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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

Portfolio management

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30 Jun 2017

No healthy profit in nutritional supplements case

In Nutrimedical BV v Nualtra Ltd 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. Read more

20 Apr 2017

Evidence of genuine use in the spotlight

In Verweij Fashion BV v Walton International Limited, 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. Read more

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

4 Nov 2016

Opposition to Nike’s JUMPMAN upheld

An opposition to an application by Nike Innovate CV to register the mark JUMPMAN has been upheld. While the opponent was unable to prove use of its EU trademark registration for JUMP in Ireland and could show only very limited use in the European Union, the hearing officer held that this did not prevent a successful opposition to the mark. Read more

Trademark law

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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

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

3 May 2018

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

In Savanagh Securities Limited v Cumann Lúthchleas Gael, 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. Read more

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. Read more

Find an expert

Niall Tierney
IP Attorney
Galway City, Ireland
TIERNEY IP