Region: Ireland

Change of ownership of trademark cannot be proper reason for non-use

In <i>McNeill v Colthurst</i>, the hearing officer has revoked the registration of the trademark BLARNEY under Section 51(1)(a) of the Trademarks Act 1996. Among other things, the hearing officer noted that the marketplace must be protected by not allowing trademarks to change hands as a defensive mechanism or justifiable reason for staving off potential attacks.

13 December 2011

Patents Office rejigs honest concurrent use

A change of practice regarding honest concurrent use has come into effect. The Irish Patents Office will now accept applications based on honest concurrent use, notify the owner of the earlier right and deal with any oppositions under the normal rules. This is a major departure from the previous practice, whereby an opposition would immediately and automatically result in the acceptance of the mark being withdrawn and the objection reinstated.

05 December 2011

Discretion to allow filing of further evidence must be exercised only in exceptional cases

In <i>CheapFlights International Limited v Cheapflights Limited</i>, the controller has refused to grant CheapFlights International Limited leave to file further evidence under Rule 23 of the Trademarks Rules. Among other things, the controller held that the applicant had been afforded more than a minimum level of protection to defend its good name.

22 November 2011

CTM statistics for 2010 show small increase

OHIM has released the statistics for Ireland for the year 2010. One of the key points was that there were 833 CTM applications from Irish-based applicants in 2010, which is an increase of approximately 3.5% over the 2009 figure and 5% over the 2008 figure. Moreover, there were 54 international registrations filed through OHIM by Irish-based applicants - a small number, but an increase of 35% over the 2009 figure.

07 April 2011

Advertising services are not similar to printed matter

In <i>Metro Cash & Carry GmbH v Metro International Limited</i>, the acting controller has dismissed an opposition by Metro International SA, the publisher of a free daily newspaper, against the registration of METRO for, among other things, "radio and television advertising". Among other things, the acting controller found that the applicant’s Class 35 services were sound and/or vision based, while the opponent’s goods were all printed-matter based.

02 March 2011

Case raises interesting questions on brand selection

In <i>Smullen v Gourmet Burger Kitchen Limited</i>, a hearing officer at the Irish Patents Office has held that there was no likelihood of confusion between GOURMET BURGER KITCHEN and GOURMET BURGER KOMPANY, which are both registered for services in Class 43. The case raises questions as to whether trademark advisers and in-house counsel have a tendency to be overly cautious in brand choice.

25 February 2011

Ireland adopts harmonised list of goods and services

The Irish Patents Office has decided to adopt the harmonised list of goods and services, as drawn up by the UK Intellectual Property Office and OHIM. This is a welcome development, which will assist practitioners in determining what terms are acceptable, and the correct classification for these terms, when filing Irish or Community trademark applications.

27 January 2011

Device marks containing same female name held to be dissimilar

In <i>Kilgallon v St Leger t/a Flair Confectionary</i>, the acting controller has refused an application for the invalidation of the device mark EVE filed by the owner of a device mark containing the words 'Eve' and 'a little temptation'. Among other things, the acting controller found that the applicant's mark conveyed immediately and instinctively the notion of the garden of Eden and of 'original sin', while the other mark did not.

29 September 2010

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. Among other things, the amendments provide parties to opposition proceedings with a range of options to suit their particular circumstances.

17 September 2010

Relative grounds of examination maintained

The Irish Patents Office has decided to continue to examine trademark applications on relative grounds. The office believes that, if it moves to a 'search and notify' system, 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.

15 July 2010

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