Region: Ireland

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

No likelihood of confusion between BUTLERS marks

In <i>The Butler’s Pantry (Manufacturing) Limited v The Irish Chocolate Company Limited</i>, the acting controller has dismissed an opposition filed by the owner of various BUTLERS marks against the registration of THE BUTLER’S PANTRY. Among other things, the acting controller held that the opponent had failed to show how use of the mark applied for might undermine its capacity to identify exclusively its goods.

12 July 2010

Supreme Court gives boost to tertiary brand strategies

In <i>Compagnie Gervais Danone v Glanbia Foods Society Limited</i>, in an important decision for European brand owners, the Irish Supreme Court has unanimously confirmed that the use of a tertiary brand for a constituent ingredient in a product may qualify as genuine trademark use in relation to that product.

16 June 2010

Patents Office takes strict line on extensions of time

The Irish Patents Office has issued guidelines on how it proposes to deal with applications for extensions of time in trademark matters from May 4 2010 onwards. The guidelines will require opponents, invalidity applicants and trademark owners defending revocation actions to gather the evidence to be included in their statutory declarations as quickly as possible.

28 April 2010

No likelihood of confusion between invented pharmaceutical marks

In <i>Pinewood Laboratories Limited v Novartis AG</i>, the acting controller has dismissed an opposition filed by Novartis AG, the owner of the mark PLEXTAM for pharmaceutical preparations, against the registration of the trademark LEXAM for identical goods. Among other things, the acting controller held that, as the marks consisted of invented words with no direct meaning or definition, they had a low level of conceptual similarity.

20 April 2010

COMPANYS held to be distinctive

In <i>IC Companys A/S v CBR Textile GmbH</i>, the acting controller has refused an application for a declaration of invalidity of the trademark COMPANYS. The acting controller found that COMPANYS was an invented word, which was thus capable of distinguishing the goods or services of one undertaking from those of another.

02 March 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.

26 February 2010

Philip Morris sues government over ban on display of cigarette branding

Philip Morris International has initiated legal action against the Irish government over its ban on the display of tobacco brands and products in shops, amid warnings that such restrictions, which are also being mooted in the United Kingdom, will encourage counterfeit trade.

07 October 2009

PLANET and PLANETFOOTWEAR held to be confusingly similar

In <i>Shoe City Limited v Planet Fashions Limited</i>, the acting controller has upheld an opposition filed by the owner of the mark PLANET for clothing against the registration of the mark PLANETFOOTWEAR for identical goods. Among other things, the acting controller found that the degree of similarity between the marks was very high because the overall impression given by the mark applied for was greatly influenced by the word 'planet'.

24 September 2009

Owner of IMIGRAN successfully opposes registration of IMITAG

In <i>Pinewood Laboratories Limited v Glaxo Group Limited</i>, the acting controller has upheld an opposition filed by the owner of the mark IMIGRAN for migraine drugs against the registration of the mark IMITAG for identical goods. Among other things, the acting controller held that long-time users of Imigran would believe that Imitag was a new form of Imigran.

20 March 2009

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