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GAZETTE
NOVEMBER 1996
Anti-counterfeiting
Sections 92 to 95 of the Act provides
expressly that fraudulent use or
fraudulent application of a trademark is
a criminal offence, and such criminal
proceedings are within the jurisdiction
of the Circuit Court.
COMMUNITY TRADE MARK
Sections 56 and 57 have given effect to
the Council Regulation 40/94 in
relation to the establishment of a
Community trade mark system. Since 1
January 1996 it has been possible to
file applications for a single EU-wide
trade mark with the Community Trade
Marks Office recently established in
Alicante. This provides an alternative
to the national filing system rather than
a replacement. It operates under a
unitary system. A trade mark will be
refused registration generally only if
opposed by the proprietor of an
earlier national registration. For that
reason it is crucial for national
proprietors to monitor the Community
trade mark applications. The
advantages of a Community trade mark
are principally the substantial cost
saving by acquiring registration in 15
countries with a single application, and
the considerable administrative
advantages in processing only one
application rather than 15 national
applications. Also, the use required
for a Community trade mark
application, may be use in only one of
the Member States, which would
also assist any prospective applicant.
It is understood that more than 40,000
community applications have been
lodged since 1 January 1996 which is
three times more than expected. It is
possible to file a Community trade
mark application through the national
office in Dublin and it is then passed
on to Alicante.
MADRID PROTOCOL
Sections 58 and 59 of the Act
incorporate the Madrid Protocol into
Irish law. This protocol allows for an
application designating a number of
countries with which registration for a
trade mark is sought to be filed with
WIPO (the World Intellectual Property
Organisation). Once an application for
a trademark is made in the applicant's
home country, an application for
protocol protection can also be made
in that country. If a claimed country
does not issue a refusal to register
within 18 months of the entry of
the mark on the international
register, the mark is deemed to be
automatically registered.
CONCLUSION
Although it has not been possible to
comment on all the extensive changes
which have been brought about the
new Act, it would appear that for any
practitioner involved in advising a
prospective or existing trade mark
proprietor, the important new
provisions are:
1. The introduction of a service mark
for the first time in this
jurisdiction.
2. The extension of the type of trade
mark which can be registered in
Ireland to include shapes, smell,
taste, sound, colour etc.
3. The widening of the protection
granted to a trade mark proprietor
against infringement.
4. The introduction of an alternative
form of registration, being a
Community trade mark system.
*Ruth Finlay is a solicitor with Eugene
F. Collins.
•
Cr iminal law
advisory group
Justice Minister Nora Owen has set up
a new advisory group to review
criminal law and procedure and to
'identify any perceived deficiencies
or possible improvements in this
critical area of the law'. The
11-strong committee will be
chaired by barrister George
Birmingham and includes solicitors
Anne Fitzgerald and Brendan
Heneghan, Robert Sheehan of the
Chief State Solicitor's Office and 'a
garda with court experience'.
•
Deduct ions
f rom awards in
personal
injuries cases:
addendum
Under the heading 'The employer's
right to deduct' the author cited a
reserved judgment of Morris J,
McGuinness
v
Reilly
(unreported) (30
November 1992) wherein he held that
an agreement between the ESB and the
plaintiff requiring her to refund
monies received during an absence
from work due to a road traffic accident
was not binding and that therefore she
could not claim those monies as
special damages.
Two
ex tempore
decisions of the High
Court have been brought to the author's
attention which come to a different
conclusion.
In
Boyce v Cawley
(Costello J) (Sligo)
(13 November 1991) the plaintiff was
injured in a road traffic accident in
January 1988 and was out of work as a
result for a considerable period. He was
employed as a linesman with the ESB
and as a result of a comprehensive
agreement negotiated between the ESB
and trade unions in 1975 was entitled to
receive advance payments during his
period of absence from work. As a
result he claimed special damages in the
sum of £46,465 so as to refund his
employer under the terms of the
agreement. Costello J held:
"Quite clearly the employee has a
contractual obligation to repay these
sums out of the damages, if he
recovers damages, as he has in this
case. That being the case it seems to
me that once such an obligation
exists the plaintiff has shown that he
has a recoverable loss and has
established, in my judgment, his
entitlements to the claim for full
damages".
A similar view was taken by Johnson J
in
ESB v McManus
(17 July 1995). The
author is grateful to Ann Hughes,
Solicitor, for her assistance.
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