The Irish Department of Enterprise, Trade and Employment (DETE) has initiated a consultation process to consider whether the procedures for the examination of trade mark applications under Section 10 of the Trade Marks Act 1996, as amended (TMA), should be changed.

This consultation process is in response to changes in a number of other jurisdictions that have recently ceased using relative grounds examination as a bar to registration. For example, the UK Intellectual Property Office now objects to applications only on absolute grounds, (i.e. that the mark lacks distinctive character or is descriptive).

Relative Grounds Examination --The Current Irish Regime

Under the current Irish regime, the Irish Patents Office (IPO) is required, under Section 10 of the TMA, to raise objections against new trade mark applications on the grounds of a prior identical or confusingly similar Irish, Community or international mark (designating Ireland or the EU) (Prior Mark). This is commonly known as a "relative grounds objection". If it is the case that a Prior Mark exists, the IPO will inform the applicant in writing that the Prior Mark will form the basis of an objection to the registration of the mark. If the objection cannot be overcome by the applicant, registration of the later mark will be refused by the IPO.

The Future of Irish Trade Mark Examinations – Options

The DETE has highlighted some policy considerations and options and is inviting comments from interested parties.

Conclusion

Comments on the options set out above are invited by the IPO before 26 February 2010. For example, interested parties may wish to comment on the examination regime applicable in other jurisdictions, such as in the UK where an "opt-in" notification system applies. Proprietors may pay a fee to the UK Intellectual Property Office and be notified of national trade mark applications affecting them.