Trade Mark Law and Practice: Act and Rules
Scope of the domain
This domain tests the substantive law in the Trade Marks Act, 1996 and the procedural machinery in the Trade Mark Rules, 1996: what can be registered, how rights are obtained and kept, and how they are challenged.
Registrability
A trade mark is a sign capable of being represented on the register in a clear and precise manner so that the scope of protection is determined. It must distinguish the applicant's goods or services. Absolute grounds for refusal include signs that are devoid of distinctive character, descriptive, generic or customary, deceptive, contrary to public policy or accepted principles of morality, or excluded shapes (functional, aesthetic, etc.). Acquired distinctiveness through use can overcome distinctiveness objections.
Relative grounds and challenges
Registration may be refused or invalidated where there is an earlier identical or similar mark for identical or similar goods/services and a likelihood of confusion, or where an earlier well-known mark is unfairly diluted. Revocation lies for non-use (generally five years), and invalidity for absolute or relative grounds. The Rules govern opposition, evidence, fees and time limits.
Worked example
An application for DUBLIN ROAST for coffee in Class 30 is examined. DUBLIN is a geographical name and ROAST describes a characteristic of coffee, so the sign is prima facie descriptive and non-distinctive. The applicant can argue the combination is unusual, add a distinctive device, or file evidence of use. If an earlier mark DUBLIN ROAST for tea exists, relative grounds may also arise depending on similarity.
Traps
Do not import EUIPO or UK practice wholesale; the Irish Act and Rules govern. Do not assume graphical representation is still the test. Do not overlook proof of use in opposition or revocation. Watch series mark and colour claims.