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GAZETTE
Trade Marks Act, 1996
An Overview
by Ruth Finlay*
Very significant changes have taken
place recently in the law of trade marks
with the introduction of the
Trade
Marks Act, 1996.
This long-awaited
legislation is, principally to give effect
to the EU harmonisation provisions and
to amend the existing national
legislation which is over 30 years old.
The Act became law on 16 March 1996
and subsequently came into force on
1 July 1996.
It has repealed the
Trade Marks Act,
1963.
The objectives of the new legislation
can be summarised as follows:
1. To make provision for registered
trade marks implementing Council
Directive No. 89/104/EEC on the
approximation of trade mark laws.
2. To make provision for the Council
Regulation No. 40/94 on the
Community trade mark.
3. To give effect to the protocol to the
Madrid Agreement concerning the
international registration of trade
marks and to certain provisions of the
Paris Convention for the protection
of industrial property.
4. To permit the registration of trade
marks in relation to services.
5. To effect a general updating of the
law on trade marks.
NEW DEFINITION OF A
TRADE MARK
One of the most fundamental
amendments introduced by the Act is
the greatly extended definition of a trade
mark.
Under the
Trade Marks Act, 1963
a
trade mark could only be registered in
respect of goods for:
"the purpose of indicating a
connection in the course of trade".
Ruth Finlay
However, the new definition introduced
under Section 6(1) of the 1996 Act
provides:
"A trade mark means any sign
capable of being represented
graphically which is capable of
distinguishing goods
or services
of one undertaking from those
of another".
This gives effect to the provisions of
Directive 89/104/EEC, providing a
registration for trade marks in respect of
services. In reality the Trade Marks
Office in Dublin has been accepting
applications for such registrations for
some time on the basis that they would
be dealt with only when the Directive
was implemented into Irish law. This
amendment is important for any
commercial entity in the service
industry in Ireland. Any company
which fails to register a trade mark in
respect of services may leave itself open
to a competitor registering the same
trade mark in Ireland or as a
Community trade mark which would
grant simultaneous protection in all
EU countries.
Section 6(2) also extends the terms for a
trade mark by providing that it may:
"consist of words (including
personal names) designs, letters,
numerals, or the shape of goods or
their packaging ".
This, therefore, now allows for the
registration of shapes (to include a
three dimensional object), sound, smell
or taste.
With regard to filing applications
regarding sound, smell or taste, it is
known that in other jurisdictions where
such applications are already
acceptable, there have been varying
difficulties in providing graphical
descriptions. For example, the
registration of sound of course is not
limited to music which is easily
graphically described, but can be the
sound of virtually anything. In the
United States there is currently pending
before the US Patent Office, an
application for the sound of the start of
a Harley Davidson motor cycle, and the
applicants have had to file numerous
revised applications providing a
description of this trade mark, so as to
satisfy the Patent Office. A graphical
description of smell is probably more
complex. There is an application
pending in the UK for the registration of
the scent of Chanel No 5.
The new provision for registering
the shape of a trade mark will allow
the introduction of distinctive shapes
such as the Coca Cola bottle which
again in other jurisdictions has quickly
obtained registration.
Also geographical names are not
directly prohibited from registration
which was the case under the former
Act. However, to obtain the registration
of a geographical name it will now be
necessary to produce evidence of the
distinctive character of the trade mark
through use.
Colours of a trade mark can now be
registered. However, as in other
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