New rules came into force on 4 October 2010 that have made some substantive changes to procedures relating to Irish trade marks. They are the Trade Marks (Amendment) Rules 2010 (the 2010 Rules).
The key changes introduced by the 2010 Rules are discussed below.
Trade Mark Opposition
Parties to trade mark opposition proceedings may now elect to file written submissions instead of attending at an opposition hearing. Previously, parties did not have this option and only had the right to elect whether or not to attend at the hearing. No right existed to file a written submission unless the party attended the hearing. A practice developed of attending parities submitting written submissions to the Controller of Patents, Designs and Trade Marks. The new procedure, introduced by the 2010 Rules, gives any party who does not wish to attend a hearing the right to choose instead to file legal arguments and statements of opinion by means of statutory declaration. This should help to reduce costs and the hearing times of oppositions.
Series of Trade Marks
A "series of trade marks" is a number of marks which resemble each other in their material features, and which differ only in respect of non-distinctive elements that do not substantially affect their identity. The 2010 Rules introduced an upper limit of six trade marks that may now be registered as a series of trade marks in a single registration. Previously there was no limit on the number of marks that could be registered in a series. Also, where an application is made to register in excess of two trade marks in a series, an additional fee is payable for the third mark and each subsequent trade mark. This additional fee has yet to be prescribed.
Declaration of Invalidity
Parties to an application seeking a declaration of invalidity of a trade mark made after 4 October 2010 are now subject to substantially the same procedural rules as parties in opposition proceedings. Therefore a party seeking such an application must now file a Notice of Opposition, in response to which the trade mark proprietor may file a counter-statement defending its registration. Similarly, the usual rules applicable to opposition proceedings regarding the submission of evidence by each party substantiating their respective claims will apply. The amended procedure which gives parties the option of either attending a hearing or filing written submissions in lieu (as discussed at point 1 above) will also apply in invalidity proceedings.