Unofficial consolidated version
TRADE MARKS
RULES, 1996
(as amended)
Note to users: This is an unofficial consolidation of the Trade Marks Rules 1996 and amendments up to and including the 11 December 2019 and is produced here as a reference document only. This document has no legal force. The Trade Marks Rules, 1996 has been updated on a number of occasions since it came into force on 27th June 1996, but has not been officially consolidated into a single text. Whilst every effort has been made to ensure the accuracy of the information/material contained on this document, the State, the Department of Business, Enterprise and Innovation, its servants or agents assume no responsibility for and give no guarantees, undertakings or warranties concerning the accuracy, completeness or up to date nature of the information provided and do not accept any liability whatsoever arising nor for any errors or omissions in this document.
Amended by:
Patents, Trade Marks and Design
(Fees) (Amendment) Rules 2012
S.I. No. 229/2000- Trade Marks Act
(Community Trade Mark) Regulations,
2000
S.I. No. 621/2007 Trade Marks
(Amendment) Rules 2007
S.I. No. 410/2010 Trade Marks
(Amendment) Rules 2010
S.I. No. 482/2001 Patents,
Trade Marks and Design (Fees) Rules
2001
S.I. No. 533/2015 Trade
Marks (Amendment) Rules
2015
S.I. No.46/2016 Trade Marks
(Amendment) Rules 2016
S.I. No. 562/2018 Trade Marks
(Amendment) Rules 2018
S.I. No. 564/2018 Patents, Trade
Marks and Designs (Fees)
(Amendment) Rules 2018
S.I. No. 588 of 2019 Trade Marks
(Amendment) Rules 2019
S.I. No. 628 of 2019 Trade Marks
(Amendment) Rules 2019
Repealed or Deleted
Unofficial consolidated version
S.I. No. 199/1996
TRADE MARKS RULES, 1996
ARRANGEMENT OF RULES
Preliminary
Rule
1. Short title.
2. Interpretation.
3. Commencement.
4. Fees. (Amended by )
5. Certificates for use in registration abroad.
6. Classification of goods and services. (Amended by )
7. Signature of document.
8. Filing of documents. (Amended by )
9. Documents in a foreign language.
10. Address for service. (Amended by )
11. Revocation of previous rules.
Application for Registration
12. Form of application. (Amended by )
13. Claim to priority. (Amended by )
14. Application may be for more than one class.
15. Matters not registrable.
Procedures on Receipt of Application
16. Search.
17. Publication (Amended by ).
18. Notice of opposition to registration. (Amended by )
19. Counter - statement. (Amended by )
Unofficial consolidated version
20. Evidence in support of opposition. (Amended by )
21. Evidence in support of application.
22. Evidence in reply by opponent.
23. Further evidence.
24. Exhibits.
25. Hearing. (Amended by )
26. Amendment of application.
27. Notification of Controller's decision and grounds. (Amended by )
Division, Merger and Series of Marks
28. Division of application. (Amended by )
29. Merger of separate applications or registrations. (Amended by )
30. Registration of a series of trade marks. (Amended by )
Collective and Certification Marks
31. Application under section 54.
32. Amendment of regulations governing use of collective marks. (Amended by
)
33. Application under section 55.
34. Amendment of regulations governing use of certification marks.
Alteration or Surrender of Registered Trade Mark
35. Alteration of registered trade mark.
36. Surrender of registered trade mark.
Renewal and Restoration
37. Reminder of renewal of registration. (Amended by )
38. Renewal of registration.
39. Delayed renewal and removal of registration.
40. Restoration of registration.
Unofficial consolidated version
Revocation, Invalidation and Rectification
41. Procedure on application for revocation, declaration of invalidity and
rectification of the register. (Amended by )
The Register
42. Form of register.
43. Entry in register of particulars of registered trade marks.
44. Entry in register of particulars of registrable transactions. (Amended by )
45. Application to register transactions under section 29. (Amended by )
46. Notices under section 31.
47. Public inspection of register.
48. Supply of certified copies, etc..
49. Request for change of name or address in register.
50. Change of classification.
Registered Trade Mark Agents
51. Applications for registration. (Amended by )
52. Proof of authorisation of agent may be required.
53. Entry in the register of trade mark agents. (Amended by )
54. Publication of entries in register of trade mark agents.
55. Payment of annual registration fee.
56. Request for removal from register of trade mark agents.
57. Notice to Controller of application to the Court under subsection (3) of
section 88. (Amended by )
58. Application for restoration to register of trade mark agents.
59. Controller may refuse to deal with certain agents. (Amended by )
Powers and Duties of Controller, Evidence and Costs
60. Provision of information and inspection of documents (Amended by ) .
Unofficial consolidated version
61. Hearing. (Amended by )
62. Controller's power to require documents, information or evidence.
63. General power to enlarge time. (Amended by )
64. Costs. (Amended by )
65. Form of statutory declaration.
66. Statutory declaration made outside the State.
67 Notice of seal of officer making declaration to prove itself.
Application to and Orders of Court
68. Application to Court. (Amended by )
69. Order of Court. (Amended by )
Miscellaneous
70. Excluded days.
71. Searches.
72. Pending applications for registration.
73. Time limit for payment of fees required for registration.
74. Power to dispense with evidence, signature &c.
75. General power of amendment.
76. Partial assignments.
77. Non-exclusive licence.
78. Form for conversion of pending application.
79. Forms. (Amended by
Schedule 1
Fees payable. (Amended by )
Schedule 2
Forms:
Form No. 1: Application for registration of a trade mark.
(Amended by )
Form No. 2: Notice under paragraph 9(2) of the Third Schedule to the
Act.
Unofficial consolidated version
Schedule 3
Rules revoked.
S.I. No. 199 of 1996.
TRADE MARKS RULES 1996
I, Richard Bruton, Minister for Enterprise and Employment, in exercise of the powers
conferred on me by section 81 of the Trade Marks Act, 1996 (No. 6 of 1996), and in
exercise, with the sanction of the Minister for Finance, of the powers conferred on me
by section 82 of that Act, and in exercise of the powers conferred on me by section 92
(1) of the Patents Act, 1992 (No. 1 of 1992), as amended by section 73 of the Trade
Marks Act, 1996 , hereby make the following rules:
Preliminary
Short title.
1. These rules may be cited as the Trade Marks Rules, 1996.
Interpretation.
2. (1) In these Rules, unless the context otherwise requires—
"the Act" means the Trade Marks Act, 1996 (No. 6 of 1996);
"agent" means an agent duly authorised in accordance with these Rules and registered
in the Register of Trade Mark Agents;
"form" means a form set out in Schedule 2;
"Schedule" means one of the Schedules to these rules;
"section" means a section of the Act;
"specification" means the statement of goods or services in respect of which a trade
mark is registered or proposed to be registered.
(2) In these Rules a subsection of a section is indicated by a number enclosed in
brackets immediately following the number of the section.
Commencement.
3. These Rules shall come into operation on the first day of July, 1996.
Fees.
Unofficial consolidated version
4. (1) The fees to be paid in relation to any matter under the Act and these Rules shall
be those specified in Schedule I.
(2) Fees shall be paid in the currency of the State. Save as otherwise provided in this
Rule, payment of a fee or fees by any person shall be made by cheque payable to the
Minister for Enterprise and Employment and crossed "& Co.", guaranteed to the
satisfaction of the Controller, drawn on any bank carrying on business in the State and
presented at the Office with the application or the matter to which it relates.
(3) Payment of a fee or fees by a person who, at the date of payment, is outside the
State shall be made by banker's draft, or Post Office Money Order, payable to the
Minister for Enterprise and Employment and crossed "& Co.", and sent by post to the
Office.
(2) Fees shall be paid in the currency of the State.
(3) Payment of a fee or fees may be made by any method acceptable to the Controller.
(4) Any fee or fees paid at the Office not exceeding £200 may be paid in cash.*
(5) (a) A request for the remission of the whole or part of any fee properly paid
shall be made in writing.
(b) No appeal shall lie from any decision of the Controller in respect of such a
request.
Certificates for use in obtaining registration abroad.
5. (a) The Controller may issue certificates for use in connection with
applications for registration abroad of marks which are the subject of
applications pending before the Controller or which he or she has registered in
the register.
(b) A certificate shall contain such information about a pending application or
a registration as may be appropriate.
Classification of goods and services.
6. For the purposes of the registration of trade marks, goods and services shall be
classified as specified in the Nice Nice Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration of Marks
(1957), as revised at Stockholm (1967) and at Geneva (1977), and as amended Nice
Agreement Concerning the International Classification of Goods and Services
for the Purposes of the Registration of Marks of 15 June 1957.
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
Unofficial consolidated version
Signature of documents.
7. A document purporting to be signed by. or on behalf of, a partnership or body
corporate shall be signed, by any person who is duly authorised to sign the document.
Filing of documents.
8. (a) (i) Any application, notice or other document authorised or required
under the Act or these Rules to be delivered to the Controller or any
other person may be sent by post.
(ii) In proving the sending it shall be sufficient to prove that the letter
was properly addressed, prepaid (when requisite) and posted.
(b) The Controller may at his or her discretion allow submission of documents
submission of applications, notices or documents by other means subject to
such terms or conditions as may be specified by him or her and published in
the Journal.
(c) Where the Controller has specified that an application, notice or document
may be delivered in electronic form, any requirement in these Rules for a
duplicate copy to be filed shall not apply.*
Translations.
9. (1) Where a document or part thereof which is in a foreign language is sent to the
Controller in connection with any proceedings under the Act or these Rules, a
translation verified to the satisfaction of the Controller shall also be furnished to the
Controller.
(2) The Controller may refuse to accept any translation which is in his or her opinion
inaccurate and thereupon another translation verified as aforesaid shall be furnished,
together with the appropriate number of copies thereof.
Address for service.
10. (1) (a) Every applicant and any person concerned in any proceeding under the Act
or these Rules and every trade mark proprietor shall give to the Controller an
address for service in the State in the European Community† in a state which is
a contracting party to the Agreement on the European Economic Area signed
at Oporto on 2 May 1992, as amended for the time being,* and that address
may for all purposes under the Act and these Rules be treated as the actual
address of the person who has furnished it.
* S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010 † S.I. 621/2007 Trade Marks (Amendment) Rules 2007
Unofficial consolidated version
(b) A letter addressed to such applicant, person or proprietor to his or her
address for service shall be deemed to be properly addressed.
(2) For the purposes of this Rule, in a case where the person or proprietor concerned
desires that the address for service shall consist of the address of an agent who is
registered in the Register of Trade Mark Agents, the Controller may accept an address
for service comprising the name of the agent so registered followed by a statement in
the following terms: "at his or her address as recorded for the time being in the
Register of Trade Mark Agents".
(3) Where an address for service has not been given as required under paragraph (1),
the Controller shall send the person concerned notice to file an address for service
within two months of the date of the notice and if that person fails to do so—
(a) in the case of an applicant under section 37, 51, 52 or 67, the application
shall be treated as abandoned;
(b) in the case of a person referred to in section 43(2) or 43(3), the person shall
be deemed to have withdrawn from the proceedings; and
(c) in the case of a proprietor of a registered trade mark which is the subject of
an application under Rule 41 and Rule 41A*, the proprietor shall not be
permitted to take part in proceedings.
Revocation of existing rules &c.
11. (1) Subject to paragraph (2), the Rules specified in Schedule 3 are hereby revoked.
(2) The said Rules shall continue to apply to any matter to which by virtue of section
100 of, and the Third Schedule to the Act, the Act of 1963 continues to apply.
Application for Registration
Application for Registration
12. (1) The following documents are hereby prescribed for the purpose of section 38:
(a) a document indicating that registration of a trade mark is sought and
containing the name and address of the person requesting registration;
(b) a document containing a representation of the mark the registration of
which is sought;
(c) a document in which the goods or services in respect of which the mark is
to be registered are stated.
* S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
(2) (a) An application for registration of a trade mark shall be made in Form No. 1
and shall contain the information required by that Form.
(b) Where a right to priority is claimed, the information required by Form No.
1 concerning claims to priority shall be furnished in the Form.
(3) (a) A representation of a mark shall not exceed 8cm x 8cm in size unless the
Controller, in the case of a specific application, agrees to a greater size.
(b) The Controller may request an applicant to submit additional
representations of a mark.
(c) Where an application indicates that registration of a three-dimensional
mark is sought, the representation of the mark shall consist of a photographic
reproduction or a graphic representation of the mark. A number of
perspectives not exceeding 6 may be submitted. The representation which
most characteristically illustrates the mark shall be shown in the space
indicated in Form No. 1 and the additional perspectives shall be submitted on
separate sheets.
(d) The Controller may give directions either generally, or by reference to a
specific application for registration, as to the furnishing and form of
representation of marks for the purpose of applications for registration.
(4) If an applicant states that a mark, when used, will be in a particular colour (or
colours), this fact shall be published by the Controller when the application for
registration has been accepted and shall be entered in the register upon registration of
the mark.
(5) If the application fee was not submitted with the application and is not received
within a period of one month from the date of filing of an application for registration
as determined under section 38(1), the application shall be deemed to have been
abandoned at the end of that period.
12A. (1) For the purposes of section 37 of the Act, an application for registration of a
trade mark shall be made in accordance with paragraph (2)(a) to (k), as appropriate
and—
(a) shall include a representation of the mark in respect of which registration is
being sought, and
(b) may include a description of the representation concerned and, where such
a description is included, shall accord with the representation and shall not
extend the scope of that representation.*
(2) Where the application for the registration of a trade mark concerns any of the
trade mark types listed in subparagraphs (a) to (k), the type of the trade mark and its
representation shall accord with each other as follows:†
** * S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 † S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
Unofficial consolidated version
(a) in the case of a trade mark consisting exclusively of words or letters,
numerals, other standard typographic characters or a combination thereof (in
these Rules referred to as a “word mark”), the representation of the mark shall
consist of a reproduction of the mark in standard script and layout, without any
graphic feature or colour;
(b) in the case of a trade mark where non-standard characters, stylisation or
layout, or a graphic feature or a colour are used and consist exclusively of
figurative elements (in these Rules referred to as a “figurative mark”), the
representation of the mark shall consist of a reproduction of the mark showing
all its figurative elements and, where applicable, its colours;
(c) in the case of a trade mark consisting of a combination of elements of a
word mark as referred to in subparagraph (a) and elements of a figurative
mark as referred to in subparagraph (b), then the representation of the mark
shall consist of a reproduction of the mark showing both the word and
figurative elements and, where applicable, the colours (in these Rules referred
to as a “combined mark”);
(d) in the case of a trade mark consisting of, or extending to, a three-
dimensional shape, including the product itself, packaging, containers or their
appearance (in these Rules referred to as a “three-dimensional shape mark”),
the following applies:
(i) the representation of the mark shall consist of either a graphic
reproduction of the shape, including computer-generated imaging,
or a photographic reproduction;
(ii) the graphic or photographic reproduction may contain different
views;
(iii) where the representation is not provided electronically, it may
contain up to six different views;
(iv) the representation which most characteristically illustrates the
mark shall be shown in the space indicated in Form No. 1 and the
additional perspectives shall be submitted on different sheets;
(e) in the case of a trade mark consisting of the specific way in which the mark
is placed or affixed on the product (in these Rules referred to as a “position
mark”), the following applies:
(i) the representation of the mark shall consist of a reproduction
which
appropriately identifies the position of the mark and its size or
proportion with respect to the relevant goods;
Unofficial consolidated version
(ii) the elements which do not form part of the subject matter of the *
registration shall be visually disclaimed preferably by broken or
dotted lines;†
(iii) the representation may be accompanied by a description
detailing how the sign is affixed on the goods;‡
(f) in the case of a trade mark consisting exclusively of a set of elements which
are repeated regularly (in these Rules referred to as a “pattern mark”), the
representation of the mark shall consist of a reproduction showing the pattern
of repetition. The representation may be accompanied by a description
detailing how its elements are repeated regularly;
(g) in the case of a trade mark referred to in clause (i) or (ii) (in these Rules
referred to as a “colour mark”), where the trade mark consists exclusively of—
(i) a single colour without contours, the representation of the mark
shall consist of a reproduction of the colour and an indication of
that colour by reference to a generally recognised colour code, or
(ii) a combination of colours without contours, the representation
of the mark shall consist of a reproduction that shows the
systematic arrangement of the colour combination in a uniform and
predetermined manner and an indication of those colours by
reference to a generally recognised colour code and may include
a description detailing the systematic arrangement of the colours;
(h) in the case of a trade mark consisting exclusively of a sound or
combination of sounds (in these Rules referred to as “a sound mark”)—
(i) the representation of the mark shall consist of an audio file
reproducing the sound or by an accurate transcription
of the sound in musical notation, and
(ii) where the representation of the mark consists exclusively of
an audio file, the entire application shall be submitted in electronic
format;
(i) in the case of a trade mark consisting of, or extending to, a movement or a
change in the position of the elements of the mark (in these Rules referred to
as “a motion mark”)—
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 †
Unofficial consolidated version
(i) the representation of the mark shall consist of a video file or
by a series of sequential still images showing the movement or
change of position,
(ii) where still images are used, the images may be numbered or
accompanied by a description explaining the sequence, and
(iii) where the representation of the mark consists exclusively of a
video file, the entire application shall be submitted in electronic
format;
(j) in the case of a trade mark consisting of, or extending to, the combination
of image and sound (in these Rules referred to as “a multimedia mark”)—*
(i) the representation of the mark shall consist of an audio-visual
file containing the combination of the image and the sound, and
(ii) where the representation of the mark consists exclusively of an
audio-video file, the entire application shall be submitted in
electronic format;
(k) in the case of a trade mark consisting of elements with holographic
characteristics (in these Rules referred to as “a hologram mark”)—
(i) the representation of the mark shall consist of a video file or a
graphic of photographic reproduction containing the views which
are necessary to sufficiently identify the holographic effect in its
entirety, and
(ii) where the representation of the mark consists exclusively of a
video file, the entire application shall be submitted in electronic
format.
(3) Where the representation of the trade mark is required to be provided
electronically, the Controller shall determine the format and size of the
electronic file as well as any other technical specifications.
(4) Where the representation of the trade mark is not required to be provided
electronically, that representation shall be provided in accordance with Rule
12(3)(a).
Claim to priority.
13. Where a right to priority is claimed under section 40 or 41 there shall be filed,
with the application or within 3 months of the date of filing thereof, a certificate by
the competent national authority or such documentary evidence as the Controller may
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
Unofficial consolidated version
require*† verifying to the Controller's satisfaction the date and country of filing, the
representation of the mark, the goods or services covered by the earlier application
and its filing number.
Application may be for more than one class.
14. (1) A single application may be made for registration in respect of one or more
classes of the Nice Agreement.
(2) Every application shall specify the class or classes to which it relates and shall
specify the goods or services relating to that class in respect of which registration is
sought.
(3) The Controller may require the applicant to amend an application which specifies
goods or services by reference to a class in which they do not fall, and to pay any
additional class fee or fees which may be required.
Matters not registrable.
15. The Controller may refuse to accept any application for the registration of a mark
upon which any of the following appears in the representation of the mark:—
(a) the word "Patent", "Patented", "Registered", "Copyright", or any other
word or any symbol with a like signification;
(b) any badge, emblem, or device referred to in section 9(3) unless the written
consent of the appropriate public authority to the registration is furnished to
the Controller;
(c) words or initials precluded from registration by section 31 of the Industrial
Research and Standards Act, 1961 (No. 20 of 1961).
Procedure on Receipt of Application
Search.
16. (1) For the purposes of sections 10 and 11, the scope and methodology of the
search of earlier trade marks shall be as determined by the Controller.
(2) The Controller may at his or her discretion cause a search to be renewed at any
time before the acceptance of an application.
Publication.
* * S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
Unofficial consolidated version
17. An application for registration which has been accepted shall be published in the
Journal in such manner as the Controller may direct and the Controller shall inform
the applicant of the acceptance.
Observations
17A. (1) An observation made to the Controller under section 43(3) may include a
request that the application be amended or refused on the grounds that it was filed in
bad faith.
(2) Any such request shall be submitted in duplicate and shall contain a statement in
writing of the grounds on which bad faith is claimed and shall be accompanied by
evidence by way of statutory declaration.
(3) The Controller shall on receipt of a request made under paragraph (2) send a copy
of the request and accompanying statutory declaration to the applicant.
(4) Unless the Controller otherwise directs, where a request made under paragraph (2)
is not accompanied by evidence by way of a statutory declaration, the request shall be
deemed to have been abandoned and the Controller shall proceed with the application
accordingly.
(5) An applicant who wishes to contest the request shall, within 28 days of the issue
by the Controller of copies of the statement mentioned in paragraph (3), file a
counter-statement in duplicate with the Controller setting out the extent to which that
statement is admitted or disputed.
(6) Unless the Controller otherwise directs, where an applicant fails to furnish a
counter-statement within the period referred to in paragraph (5), the Controller shall
be entitled to presume that the applicant does not wish to contest the request and the
Controller shall proceed with the application accordingly.
(7) Persons and groups or bodies who make observations in accordance with
paragraph (1) shall not thereby become a party to the proceedings on the application.*
Notice of opposition to registration.
18. (1) Notice of opposition under section 43 shall be sent to the Controller within
three months of the date of publication of the application in the Journal.
(2) The notice of opposition shall be submitted in duplicate accompanied by the
prescribed fee or evidence of payment thereof, and shall include a statement of the
grounds of opposition.
(3) The Controller shall on receipt of the notice of opposition send a copy to the
applicant.
* S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
Stay in Opposition proceedings
(1) 18A. (1) For the purposes of section 43(2B), at any stage during opposition
proceedings, the Controller shall grant the parties, at their joint request, a stay
in the proceedings for a minimum period of 2 months and a maximum period
of one year from the date of the request, for the express purpose of allowing
for the possibility of a friendly settlement between the parties.
(2) A second joint request for a stay, limited in duration as set out in paragraph (1)
above, may be granted at the discretion of the Controller, but only if the
Controller is satisfied that meaningful progress to reach a friendly settlement
has been made.
(3) The Controller shall refuse all subsequent requests for a stay.
18A.18B (1) Save as otherwise provided by these Rules or the Act, the Controller
may give such directions as to the management of any opposition proceedings as he or
she thinks fit, and may in particular do any of the following:*
(a) require a document, information or evidence to be filed within such period
as the Controller may specify;
(b) require a translation of any document;
(c) elect to hold a hearing by video conference or any other method of direct
oral communication;
(d) consolidate proceedings;
(e) direct that part of any proceedings be dealt with as separate proceedings;
(f) subject to Rules 20, 21, 22 and 23, exclude any evidence which the
Controller considers to be inadmissible.
Counter-statement.
19. (1) Within three months of receipt by the applicant Within three months of the
issue by the Controller to the applicant† of a copy of the notice of opposition, the
applicant shall file a counter-statement in duplicate with the Controller, accompanied
by the prescribed fee or evidence of payment thereof.
(1A) Where the provisions of section 43A apply, the counter-statement filed by the
applicant pursuant to paragraph (1) shall explicitly require the opponent to furnish
proof of genuine use.‡
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 † S.I. 229/2000 Trade Marks Act, 1996 (Community Trade Mark) Regulations, 2000 S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
(2) The Controller shall on receipt of a counter-statement forthwith send a copy
thereof to the opponent and failing receipt of a counter-statement within the
prescribed period the application shall be deemed to have been withdrawn.
Evidence in support of opposition.
20. (1) Within three months of receipt by the opponent Within three months of the
issue by the Controller to the opponent* of the copy of the counter-statement under
Rule 19, the opponent shall file with the Controller such evidence by way of statutory
declaration as he or she desires to adduce in support of his or her opposition and shall
send to the applicant a copy thereof.
(2) Unless the Controller otherwise directs, an opponent who fails to file evidence
under this Rule shall be deemed to have abandoned his or her opposition and the
Controller shall proceed with the application accordingly.
(2) If the counter-statement filed in accordance with Rule 19 contains a request
pursuant to section 43A(1) that the opponent furnish proof that the earlier mark(s)
relied upon has been put to genuine use within the 5 year period allowed for doing so,
and where that 5 year period had expired at or before the filing date or date of priority
of the applicant’s mark, the Controller shall require the opponent to furnish such proof
by way of statutory declaration in its evidence under paragraph (1) and shall send to
the applicant a copy thereof.
(3) The Controller shall refuse to accept a request that an opponent furnish proof of
use which is received after the opponent has filed evidence under paragraphs (1) and
(2).
(4) Unless the Controller otherwise directs, an opponent who fails to file evidence,
including proof of genuine use pursuant to paragraph (2), shall be deemed to have
abandoned his or her opposition and the Controller shall proceed with the application
accordingly.
Evidence in support of application.
21. (1) If the person opposing the registration files evidence under Rule 20, the
applicant shall, the applicant may† within three months of receipt of a copy of such
evidence, file such evidence by way of statutory declaration as he or she desires to
adduce in support of the application with the Controller and shall send a copy thereof
to the opponent.
* S.I. 229/2000 Trade Marks Act, 1996 (Community Trade Mark) Regulations, 2000 S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019 † S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
Unofficial consolidated version
(2) If the applicant chooses not to file evidence under this Rule, the evidence filing
stage shall be deemed to be completed and proceedings shall progress in accordance
with the provisions of Rule 25.*†
Evidence in reply by opponent.
22. (1) The opponent may, within two months of receipt of a copy of the evidence
filed with the Controller under Rule 21, file evidence with the Controller by way of
statutory declaration and shall deliver to the applicant a copy thereof.
(2) Evidence filed by the opponent under this Rule shall be confined to matters strictly
in reply.
Further evidence
23. No further evidence may be filed unless, in any proceedings before the Controller,
the Controller gives leave to either the applicant or the opponent to file evidence upon
such terms as to costs or otherwise as the Controller may think fit.
Exhibits.
24. (1) (a) Where there are exhibits to declarations filed in an opposition, a copy or
impression of such exhibits shall be sent to the other party unless such copy or
impression cannot conveniently be furnished.
(b) If such copy or impression cannot conveniently be furnished, the originals
shall be left with the Controller for inspection by the party concerned, and any
dispute arising as to whether a copy or impression can conveniently be
furnished, shall be determined by the Controller.
(2) The original exhibits shall be produced at the hearing of an opposition unless the
Controller otherwise directs.
Hearing.
25. (1) Upon completion of the evidence the Controller shall give notice to the parties
of a date for a hearing, which shall be at least 21 days after the date of the notice
unless the parties consent to a shorter notice.
(2) Within seven days of receipt of the notice, a party who intends to appear at the
hearing shall so notify the Controller and shall pay the prescribed fee.
(3) A party who fails to notify the Controller in accordance with this Rule may be
treated as not desiring to be heard, and the Controller may act accordingly,
25. (1) Upon completion of the evidence the Controller shall request each of the
parties to elect whether they wish to—‡
† S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 ‡ ‡ S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Unofficial consolidated version
(a) attend at a hearing, or
(b) file written submissions in lieu of attending at a hearing.
(2) Each party shall indicate their election pursuant to paragraph (1) to the Controller
and the other party within 2 months from the date of the request. A party shall not file
written submissions and attend at a hearing unless the Controller gives leave to do so.
(2A) Subject to paragraph (6), a party who does not elect a preference pursuant to
paragraph (1) shall be deemed to have concluded their presentation of evidence and
arguments.
(3) A party who elects to file written submissions in lieu of attending at a hearing
shall file with the Controller such written submissions as he or she desires to adduce
in support of his or her case within 4 months from the date of the request in paragraph
(1) and shall send a copy of any submissions filed to the other party.
(3A) (a) If both parties elect to file written submissions, the Controller shall forward
to each party a copy of the written submissions of the other party.
(b) Within one month of the receipt of the written submissions of the other party
under paragraph (3), each party may file with the Controller written submissions
which shall be confined to matters strictly in reply to the other party’s submissions,
and, shall send a copy of any submissions so filed to the other party.*
(4) If neither party elects to attend at a hearing, each party may, within one month of
the receipt of the written submissions of the other party under paragraph (3), file with
the Controller written submissions which shall be confined to matters strictly in reply
to the other party's submissions. A party shall send a copy of any submissions so filed
to the other party.
(5) No further written submissions may be filed by either party unless the Controller
gives leave to do so upon such terms as to costs or otherwise as the Controller thinks
fit.
(6) If either party elects to attend at a hearing, the Controller shall, after the period set
out in paragraph (3) has expired, give notice to the parties of a date of a hearing,
which shall be at least 30 days after the date of the notice unless the parties consent to
a shorter notice period. A party who fails to elect to attend at a hearing in accordance
with this Rule shall not be heard at the hearing, unless the Controller gives leave to do
so.
(7) A party who intends to appear at a hearing shall notify the Controller and pay the
prescribed fee within 14 days of receipt of the notice under paragraph (6).†
‡
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 † S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010 ‡
Unofficial consolidated version
(8) A party who fails to notify the Controller and pay the prescribed fee *†in
accordance with paragraph (7) may be treated as not desiring to be heard, and the
Controller may act accordingly.
The amendment effected by Rule 5(1) of the Trade Marks (Amendment) Rules 2010
(namely the amendment to Rule 25) shall not apply where the Controller has given
notice of a date for a hearing before these Rules came into operation, except where—
(a) the date for the hearing was subsequently cancelled by the Controller, or
(b) the hearing has been held, and the Controller has been unable to issue a
decision or to issue written grounds for a decision, due to circumstances
beyond his or her control‡§
Amendment of Application.
26. (1) Where a notice under section 44(1) restricting the goods or services covered
by an application is received after publication of the application in response to a
notice of opposition under Rule 18(1) or in the course of opposition proceedings the
following provisions shall apply:
(i) the Controller shall, following publication of the restriction, inform the
opponent of the restriction;
(ii) an opponent who has been informed by the Controller in accordance with
subparagraph (i) shall, within one month of the date of the communication
from the Controller inform the Controller whether he or she wishes to abandon
his or her opposition, to amend the notice of opposition filed under Rule 18 or
to pursue the opposition on the basis of the notice of opposition given;
(iii) an opponent who does not respond to a communication from the
Controller under subparagraph (i) within the time allowed shall be deemed to
have expressed a wish to proceed with the notice of opposition as given.
(iv) where an opponent decides, in response to a communication under
subparagraph (i), to amend the notice of opposition he or she shall inform the
Controller accordingly and shall, at the same time, furnish to the Controller an
amended notice of opposition in duplicate. A copy of the amended notice shall
be sent by the Controller to the applicant. The amended notice shall be deemed
to be the notice of opposition under Rule 18 and Rules 18 to 25 shall apply
accordingly;
(v) where no notice of opposition had been given to the Controller under
section 43(2) before the publication of the notice restricting the goods or
services covered by an application, any notice of opposition under section
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 † S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
§
Unofficial consolidated version
43(2) shall relate to the published application as restricted by the notice under
section
44(1); and the prescribed period for filing of notice of opposition shall, in such case,
be deemed to commence on the date on which the notice restricting the goods or
services was published by the Controller.
(2) Where a request under section 44(3) to amend an application which has been
published is filed in response to a notice of opposition under Rule 18(1) or in the
course of opposition proceedings, and the proposed amendment affects the
representation of the mark or the goods or services covered by the application, the
Controller shall publish the proposed amendment and the provisions of subparagraphs
(i) to (v) of paragraph (1) shall, subject to the appropriate modifications, apply;
(3) Where a request under section 44(3) to amend an application is filed prior to the
date of publication of the application and the proposed amendment affects the
representation of the mark or the goods or services covered by the application, the
Controller shall, if he or she accepts the application, cause the application as amended
to be published under section 43(1); and the provisions of Rules 18 to 25 shall
thereupon apply.
Notification of Controller's decision and grounds.
27. (1) The decision of the Controller in the exercise of any discretionary power
following a hearing before him or her shall be notified to the party or parties
concerned.
(1) The decision of the Controller in the exercise of any discretionary power
following a hearing before him or her or the filing of any written submissions under
Rule 25 shall be notified to the party or parties concerned*
(2) A written statement of the grounds of a decision under paragraph (1) shall be
furnished if application, accompanied by the prescribed fee, is made to the Controller
by a party to the hearing within one month from the date of notification of the
decision.
(3) Where, following inter partes proceedings, a written statement of grounds is
furnished to one of the parties the Controller shall furnish every other party with a
copy of the statement.
Division, Merger and Series of Marks
Division of application.
28. (1) (a) At any time before a notification of acceptance by the Controller of an
application has been issued, the applicant may send to the Controller a request
for a division of the application ("the original application") into two or more
separate applications ("divisional applications"), indicating for each divisional
* S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Unofficial consolidated version
application those goods or services of the original application which are to be
covered by it. A request for a division of an application shall be accompanied
by the prescribed fee.
(b) A divisional application shall comply with the provisions of Rule 12(2)
and (3) and shall be treated as a separate application for the purposes of the
Act and these Rules save that the fee prescribed for the purpose of section
37(3) shall not be payable upon the filing of a divisional application. A
divisional application shall have the same date of filing and priority date (if
any) as the original application.
(c) A request under subparagraph (a) shall, in relation to the original
application, have the effect that the goods or services which are to be covered
by any divisional application shall be excluded from the original application.
(2) Upon division of an original application in respect of which notice had been given
to the Controller of particulars relating to the grant of a licence, or a security interest
or any right in or under the mark, the notice and the particulars shall be deemed to
apply in relation to each of the divisional applications.
(3) An applicant may, after publication of an application, submit a request for a
division of the application in response to a notice of opposition under Rule 18 or in
the course of opposition proceedings; and where the applicant does so, the Controller
shall inform the opponent and the provisions of Rule 26 (1), (ii), (iii) and (iv) shall
apply to the opposition proceedings.
28A. (1) (a) At any time after the registration by the Controller of an application, the
proprietor may send to the Controller a request for a division of the registration (“the
original registration”) into 2 or more separate registrations (“divisional registrations”),
indicating for each divisional registration those goods or services of the original
registration which are to be covered by it.
(b) A request for a division of a registration shall be accompanied by the prescribed
fee.*
(2) A divisional registration shall be treated as a separate registration for the purposes
of the Act and these Rules. A divisional registration shall have the same date of filing
and priority date (if any) as the original registration.†
(3) A request under paragraph (1)(a) shall, in relation to the original registration, have
the effect that the goods or services which are to be covered by any divisional
registration shall be excluded from the original registration.‡
(4) Upon division of an original registration in respect of which notice had been given
to the Controller of particulars relating to the grant of a licence, or a security interest
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 †
Unofficial consolidated version
or any right in or under the mark, the notice and the particulars shall, where
appropriate, be deemed to apply in relation to each of the divisional registrations.*†
Merger of separate applications or registrations.
29. (1) An applicant who has made separate applications for registration of the same
mark may, at any time before a notification of acceptance of any of the applications
has issued to the applicant, request the Controller to merge the separate applications
into a single application.
(2) The Controller shall merge the applications into a single application if satisfied
that they all —
(a) are in respect of the same trade mark, and
(b) bear the same date of filing and priority date (if any),
(3) Subject to the conditions in paragraph (4), a person who is the registered
proprietor of two or more marks separately registered in his or her name may request
the Controller to merge the separate registrations into one single registration.
(4) The conditions referred to in paragraph 3 are:
(i) each of the separate registrations shall relate to the same mark and have the
same date of registration (as defined in section 45(3)) and priority date, if any,
pursuant to section 40 or 41;
(ii) where a registrable transaction is recorded in the register, in respect of any
of the marks to be merged, the Controller shall not merge the registrations
unless the same transaction is recorded in respect of each of the other marks;
(ii) where a registrable transaction is recorded in the register in respect of any
of the registrations to be merged—
(I) the Controller shall not merge the registrations unless the proprietor
certifies that any person having an interest in that registration by virtue
of the registrable transaction has been notified of the proposed merger
at least 3 months prior to the date of the request and has not objected to
it, and
(II) the Controller shall enter in the register, in relation to the merged
registration, the relevant particulars of the registrable transaction,
specifying the extent to which the registrable transaction affects the
merged registration, including the details of the specific goods or
services of the merged registration to which it relates.‡
*
S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 ‡ S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Unofficial consolidated version
(iii) any of the marks shall not have been registered subject to any disclaimer
or limitation or, if so registered, the nature of the disclaimer or limitation must
be the same in respect of each mark.
(5) The Controller shall, if satisfied that the separate registrations may be merged
following consideration of a request under paragraph (3), determine the entry to be
made in the register in relation to the single registration.
(6) Following the entry in the register referred to in paragraph (5), the separate
registrations shall be deemed to have been removed from the register as of the date of
the entry; and the entry shall be deemed to be a registered trade mark for the purpose
of the Act and these Rules.
(7) The provisions of paragraphs (3) to (6) shall not apply in relation to marks which
are collective or certification marks.
Registration of a series of trade marks.
30. (1) (a) The proprietor of a series of trade marks may apply to the Controller for
their registration as a series in a single registration and there shall be included
in such application a representation of each mark claimed to be in the series.
(b) The Controller may, if satisfied that the marks constitute a series, register
them in a single registration.
(2) Where the proprietor of a registered series of trade marks requests the Controller
to delete a mark in that series, the Controller shall record such deletion in the register.
(1) (a) The proprietor of a series of trade marks may apply to the Controller for
their registration as a series in a single registration provided that the series
comprises no more than 6 trade marks and there shall be included in such
application a representation of each mark claimed to be in the series.
(b) Where an application for the registration of a series of trade marks
comprises 3 or more trade marks, the application shall be subject to the
payment of the prescribed fee for each trade mark in excess of 2 trade marks.
(c) The Controller may, if satisfied that the marks constitute a series, register
them in a single registration.*
Collective and Certification Marks
Application under section 54.
* S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Unofficial consolidated version
31. (1) The applicant shall file regulations governing the use of the mark with the
Controller within six months of the date of application for registration of a collective
mark. The regulations shall be accompanied by the prescribed fee.
(2) For the purpose of paragraphs 7(2) and 7(3) of the First Schedule to the Act, a
period of 3 months from the date the specified conditions referred to in these
subparagraphs are notified to the applicant, is hereby prescribed.
(3) For the purpose of paragraph 8(1) of the First Schedule to the Act, the regulations
governing the use of the mark shall be open to public inspection on and from the date
of publication of the application in the Journal and the period during which opposition
to the regulations may be given, or observations made thereon, shall be 3 months from
the said date of publication.
(4) A notice of opposition under paragraph 8(1) of the First Schedule to the Act shall
contain a statement of the grounds of opposition and shall be accompanied by the
prescribed fee.
(5) The Controller shall send a copy of a notice of opposition to the applicant and
shall, thereafter, determine the procedure to be followed before deciding the issue.
Amendment of regulations governing use of collective marks.
32. (1) Where regulations governing the use of a collective mark are amended, the
regulations, as amended, shall be submitted to the Controller in accordance with
paragraph 10 of the First Schedule to the Act.
(2) Following acceptance of amended regulations, the Controller shall publish a notice
in the Journal indicating that copies of the amended regulations are available for
public inspection at the Office.
(2) Following acceptance of amended regulations, the Controller shall publish notice
in the register and in the Journal to that effect and any such notice shall state the date
of acceptance and that copies of the amended regulations are available for public
inspection at the Office.*
Application under section 55.
33. (1) The applicant shall file the regulations governing the use of the mark and pay
the fee prescribed for this purpose within six months of the date of authorisation to
proceed under paragraph 7(3) of the Second Schedule to the Act. At the option of the
applicant the regulations, accompanied by the prescribed fee, may be filed with the
Controller at an earlier date.
(2) Where the Controller authorises an application to proceed, a report shall be
furnished by him or her to the Minister thereon if the applicant files the regulations
referred to in paragraph (1) of this Rule. The Minister may, if necessary, hear the
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
Unofficial consolidated version
applicant before giving a direction under paragraph 8 of the Second Schedule to the
Act.
(3) For the purposes of paragraphs 8(2) and 8(3) of the Second Schedule to the Act a
period of 4 months from the date of the notification of any conditions imposed by the
Minister is hereby prescribed.
(4) (a) For the purpose of paragraph 9 of the Second Schedule to the Act, the
regulations governing the use of the mark shall be open to public inspection on
and from the date of publication of the application in the Journal in accordance
with section 43(1) and the period during which opposition may be given, or
observations made, under the provisions of that Paragraph shall be 3 months
from the said date of publication.
(b) A notice of opposition under paragraph 9 of the Second Schedule to the
Act shall contain a statement of the grounds of opposition and shall be
accompanied by the prescribed fee.
(c) A notice of opposition shall be filed with the Minister and the opponent
shall, simultaneously, furnish the Controller with a copy. On receipt of a
notice of opposition the Minister shall send a copy of the notice to the
applicant and shall, thereafter, determine the procedure to be followed before
he or she decides the issue.
Amendment of regulations governing use of certification marks.
34. (1) Where the proprietor of a registered certification mark requests that the
regulations governing the use of the mark be amended, a draft of the regulations
showing desired amendments thereon shall be submitted to the Controller.
(2) Where it appears expedient to do so, the Minister shall cause a request to amend
regulations under paragraph (1) of this Rule to be published.
(3) (a) Any person may, within three months of the date of the publication under
paragraph (2) of this Rule, give notice to the Minister of opposition to the
amended regulations on the grounds that they do not satisfy paragraph 7(1)(a)
of the Second Schedule to the Act or that the proprietor of the mark is not
competent to certify the goods or services for which the mark is registered.
(b) The notice of opposition shall be accompanied by a statement setting out
fully the grounds upon which the amended regulations are opposed.
(4) A copy of any notice and statement under paragraph (3) of this Rule shall be sent
by the Minister to the proprietor.
(5) The Minister shall not decide the matter without giving the parties an opportunity
to be heard.
Unofficial consolidated version
(6) Following the consent of the Minister to amended regulations the Controller shall
publish a notice in the Journal that copies of the amended regulations are available for
public inspection at the Office.
Alterations and Surrender of Registered Trade Mark.
Alteration of registered trade mark.
35. (1) An application under section 49(1) shall state the reasons therefor and the
Controller may require the submission by the proprietor of evidence in support of the
application.
(2) Where an application under section 49(1) is advertised in the Journal by the
Controller, any notice of opposition under section 49(3) shall be filed with the
Controller within 3 months of the date of the advertisement of the application. A
notice of opposition shall state fully the grounds upon which the application is
opposed and shall be accompanied by the prescribed fee. Upon receipt of a notice, the
Controller shall send a copy thereof to the proprietor and shall hear the parties, if so
required, before he or she decides the matter.
Surrender of registered trade mark.
36. (1) A notification of surrender of a registered trademark shall be submitted to the
Controller and shall specify the goods or services covered by the registration in
respect of which the mark is being surrendered.
(2) The Controller shall not act upon a notice of surrender under paragraph (1) unless
the proprietor, in that notice —
(a) certifies that he or she is not precluded by contract or other agreement or
arrangement from surrendering the mark,
(b) specifies the name and address of each person entered in the register as
having an interest in the mark, and
(c) certifies that each of the persons named under (b) has been notified of the
proprietor's intention to surrender the mark at least 3 months prior to the date
of the notice to the Controller and that none of the persons has objected to the
surrender.
(3) If it appears to the Controller from the register that a person other than the
proprietor has an interest in the mark and that person's name is not included in the list
referred to in paragraph (2)(b), the Controller may require the proprietor to notify that
person of the proposed surrender and shall not act on the notice to surrender the mark
until he or she is satisfied that the person notified under this paragraph has not
objected to the surrender within the period specified in paragraph (2).
(4) Where the proprietor has complied with the requirements of this Rule, the
Controller shall enter the surrender of a trade mark in the register and notice of the
surrender shall be published in the Journal.
Unofficial consolidated version
(5) As from the date of publication in the Journal of the notice referred to in paragraph
(4), the effects of registration shall, to the extent that the mark has been surrendered,
cease to apply; but no action for infringement shall lie in respect of any act done
before that date.
Renewal and Restoration
Reminder of renewal of registration.
37. At any time not earlier than six months nor later than one month not later than six
months before the expiration of the registration of a trade mark or any renewal
thereof, the Controller shall (except where renewal has already been effected under
Rule 38) send to the registered proprietor notice that the registration may be renewed
as prescribed in that Rule and of the date of expiry expiry however, the Controller
shall not be held liable if he or she fails to give such information.*
Renewal of registration.
38. An application for the renewal of the registration of a trade mark shall be effected
by filing a request for renewal under section 48 at any time not earlier than six months
before the expiration of the registration or any renewal thereof as the case may be,
accompanied by the prescribed fee or evidence of payment thereof.
Delayed renewal and removal of registration.
39. (1) If, on the expiration of the registration of a trade mark or renewal thereof, the
renewal fee has not been paid the Controller shall publish that fact; and if, within six
months from the date of the expiration of the registration or renewal thereof, a request
for renewal is filed accompanied by the renewal fee and the prescribed additional fee,
the Controller shall renew the registration and shall inform the proprietor thereof.
(2) Where a request for renewal is not so filed together with the prescribed renewal
and additional fees, the Controller shall, subject to Rule 40, remove the mark from the
register.
(3) Where the date of issue of a certificate of registration of a mark is later than two
months prior to expiry of the period of 10 years specified in section 47, the following
provisions shall apply:
(i) the period within which a request for renewal of registration shall be filed
under Rule 38 and the prescribed fee paid shall be the unexpired term of the
10 year period or 6 weeks from the date of issue of the certificate of
registration, whichever is the later.
(ii) the Controller shall not publish a notice of non-payment under paragraph
(1) until after the expiry of the appropriate period provided for in
subparagraph (i).
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
Unofficial consolidated version
(iii) the other provisions of this Rule shall apply subject to the modifications in
subparagraphs (i) and (ii).
Restoration of registration.
40. (1) Where a mark has been removed from the register for failure to renew its
registration the Controller may, upon a request filed within six months of the date of
publication of the removal of the mark accompanied by the appropriate renewal fee
and appropriate restoration fee, restore the mark to the register and renew its
registration if, having regard to the circumstances of the failure to renew, the
Controller is satisfied that it is just to do so.
(2) The restoration of the registration shall be published in the Journal.
Revocation, Invalidation and Rectification
Procedure on application for revocation, declaration of invalidity and
rectification of the register.
Procedure on application for revocation, and rectification of the register.*
41. (1) An application to the Controller for revocation under section 51 or for a
declaration of invalidity under section 52 or for the rectification of an error or
omission in the register under section 67 shall contain a statement of the grounds on
which the application is made and shall be accompanied by the prescribed fee.
(2) Where any application is made under paragraph (1) of this Rule by a person other
than the proprietor of the registered trade mark, the Controller shall send a copy of the
application and the statement to the proprietor.
(3) Within three months of receipt by the proprietor Within three months of the issue
by the Controller to the proprietor† of the copy of the application and the statement
the proprietor may file a notice of opposition with the Controller and the Controller
shall send a copy thereof to the applicant:
Provided that where an application for revocation under section 51(4) is based on a
ground of non-use specified in section 5l(1)(a) or (b), the proprietor shall file with the
notice of opposition evidence of the use by him or her of the mark; and upon failure to
do so, the Controller may dismiss the opposition and grant the application.
(4) The Controller may require the submission to him or her of any further evidence,
statement or counter-statement within such time as he or she may decide. Subject to
the proviso in paragraph (3) above, the Controller shall hear the parties, if so required,
before deciding upon an application.
* S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019 † S.I. 229/2000 Trade Marks Act, 1996 (Community Trade Mark) Regulations, 2000
Unofficial consolidated version
(3) (a) Within 3 months of the issue by the Controller to the proprietor of the copy
of the application and the statement in the case of applications to the Controller for
revocation under section 51 or for the rectification of an error or omission in the
register under section 67, the proprietor may file a notice of opposition with the
Controller and the Controller shall send a copy thereof to the applicant. shall send a
copy thereof to the applicant *
(b) Where an application for revocation under section 51(4) is based on a
ground of non-use specified in section 51(1)(a) or (b), the proprietor shall
file with the notice of opposition evidence of the use by him or her of the
mark, and upon failure to do so, the Controller may dismiss the opposition
and grant the application.
(ba) where the proprietor has filed the notice of opposition, accompanied
by evidence of use, the proprietor shall send a copy thereof to the
applicant.†
(c) In the case of applications to the Controller for a declaration of invalidity
under section 52, the provisions of Rules 19 to 25 shall apply mutatis
mutandis.
(d) Notwithstanding paragraph (c) the Controller shall not declare a trade mark
to be invalid merely because the proprietor fails to file a counter-statement.
(4) In the case of an application to the Controller for revocation under section 51 or
for the rectification of an error or omission in the register under section 67,The
Controller may require the submission to him or her of any further evidence,
statement or counter-statement within such time as he or she may decide.
(5) Subject to paragraph (3)(b), the Controller shall hear the parties, if so required,
before deciding upon an application.
The amendment to Rule 41(3)(c) effected by paragraph (1) of the Trade Marks
Amendment Rules 2010 shall not apply where an application for invalidity under
section 52 was made before these Rules came into operation.‡
Procedure on application for declaration of invalidity
41A. (1) An application to the Controller for a declaration of invalidity under section
52 shall contain a statement of the grounds on which the application is made and shall
be accompanied by the prescribed fee.
(2) Where any application is made under paragraph (1) of this Rule, the Controller
shall send a copy of the application and the statement to the proprietor.§
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
‡ S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010 S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
Counter-statement
41B. (1)Within three months of the issue by the Controller of the application for a
declaration of invalidity to the proprietor, the proprietor may file a counter-statement
in duplicate with the Controller.
(2)Subject to paragraph (1), should the proprietor of the later trade mark wish to
invoke the provisions of section 52A(1), the proprietor must put the applicant for a
declaration of invalidity to such notice in its counter-statement, failing which the
Controller shall reject any subsequent attempts by the proprietor to put the applicant
for a declaration of invalidity to such notice.
(3)The Controller shall not declare a trade mark to be invalid merely because the
proprietor fails to file a counter-statement.
Evidence in support of application for declaration of invalidity
41C. (1)Within three months of the issue by the Controller to the applicant of a copy
of the counter-statement under Rule 41B, the applicant shall file with the Controller
such evidence by way of statutory declaration as he or she desires to adduce in
support of his or her application for a declaration of invalidity and shall send to the
other party a copy thereof.
(2)If the proprietor’s counter-statement contains a request pursuant to section 52A
that the applicant furnish proof that the earlier trade mark(s) relied upon have been put
to genuine use within the 5 year period allowed for doing so, and where that 5 year
period had expired at the filing date or date of priority of the proprietor’s later trade
mark, the applicant shall file such proof of use, (as required by section 52A(2)), by
way of statutory declaration and shall send to the proprietor a copy thereof.
(3)Thereafter, the provisions of Rules 21 to 25 shall apply mutatis mutandis.
(4)An applicant for a declaration of invalidity who fails to file evidence under
paragraph (1) shall be deemed to have abandoned his or her application for a
declaration of invalidity.
(5)In the event of failure to file proof under paragraph (2) if so requested, the
application for a declaration of invalidity on the basis of an earlier trade mark shall be
rejected pursuant to section 52A(3).*
The Register
Form of register.
42. The register required to be kept by the Controller under section 66(1) may be kept
in such form as the Controller may determine.
* S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
Entry in register of particulars of registered trade marks.
43. Upon registration, there shall be entered in the register in respect of each trade
mark the following particulars —
(a) the date of registration as determined in accordance with section 45(3) (that
is to say, the date of the filing of the application for registration);
(b) the date of publication of the registration as provided for in section 45(5);
(c) the priority date (if any) claimed pursuant to section 40 or 41;
(d) the name and address of the proprietor;
(e) the address for service furnished pursuant to Rule 10 above;
(f) any disclaimer or limitation subject to which the mark is registered;
(g) the goods or services in respect of which the mark is registered and their
class or classes;
(h) where the mark is a collective or certification mark, that fact; and
(i) any consent pursuant to section 10(6) by the proprietor of an earlier trade
mark or other earlier right to which that section relates.
Entry in register of particulars of registrable transactions.
44. For the purpose of section 29 the following are the particulars to be entered in the
register in relation to registrable transactions;
(a) in the case of an assignment of a registered trade mark or any right in it —
(i) the name and address of the assignee,
(ii) the nature and date of the document upon which the interest of the
assignee is based, and
(iii) where the assignment is in respect of any right in the mark, a
description of the right assigned;
(b) in the case of the grant or assignment of a licence under a registered trade
mark —
(i) the name and address of the licensee,
(ii) whether or not the licence is an exclusive or non-exclusive licence,
(iii) where the licence is limited, a description of the limitation, and
Unofficial consolidated version
(iv) the duration of the licence if the same is, or is ascertainable as, a
definite period;
(c) in the case of the grant of any security interest over a registered trade mark
or any right in or under it —
(i) the name and address of the grantee,
(ii) the nature of the interest (whether fixed or floating), and
(iii) the extent of the security and the right in or under the mark
secured;
(d) in the case of the making by a personal representative of a vesting assent in
relation to a registered trade mark or any right in or under it —
(i) the name and address of the person in whom the mark or any right
in or under it vests by virtue of the assent,
(ii) the date of the assent; and
(iii) the nature of the vesting assent;
(e) in the case of an order of a court or other competent authority transferring a
registered trade mark or any right in or under it —
(i) the name and address of the transferee,
(ii) the date and particulars of the order, and
(iii) where the transfer is in respect of a right in the mark, a description
of the right transferred;
and in each case, there shall be entered the date on which the entry is made
(f) In the case of matters arising from the operation of law which affect the
proprietorship of a registered trade mark or any right in it—
(i) the name and address of the new proprietor,
and
(ii) the nature and date of the document or instrument establishing the
interest, right or title of the new proprietor.*
Application to register transactions under section 29.
45. (1) An application under section 29(1) shall —
* S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Unofficial consolidated version
(a) where the transaction is an assignment, be signed by or on behalf of the
parties to the assignment;
(b) where the transaction falls into any of the other categories specified in
section 29(2) (b) to (d), be signed by or on behalf of the grantor of the right.
(2) An application under section 29(1) shall be accompanied by the prescribed fee and
by a certified copy of the instrument or document upon which the claim of the person
whose title or interest is to be entered in the register is based.
(3) Where a transaction is effected by an instrument chargeable with duty, the
applicant shall satisfy the Controller that the instrument has been duly stamped.
45. (1) An application under section 29(1) shall be in writing and accompanied by the
prescribed fee and by a certified copy of the instrument or document upon which the
claim of the person whose title or interest is to be entered in the register is based.
(2) The Controller shall not enter particulars of a transaction in the register unless he
or she is satisfied that the instrument or document furnished in accordance with
paragraph (1) authenticates the claim of the person whose title or interest is to be
entered in the register.
(3) Where a transaction is effected by an instrument chargeable with duty, the
applicant shall satisfy the Controller that the instrument has been duly stamped*.
Notices under section 31.
46. (1) Notices given to the Controller in pursuance of section 31 shall comply with
the requirements specified in Rule 45 in respect of applications under section 29(1).
(2) If a notice pursuant to section 31 relates to an assignment and it appears to the
Controller from the notice and accompanying documents that the assignee should be
recorded in the register as the proprietor of the trade mark in question, if registered,
the entry to be made in the register in pursuance of Rule 43(d) shall be construed
accordingly.
(3) If a notice pursuant to section 31 relates to a licence, a security interest, a vesting
assent or an order of a court and it appears to the Controller in the case of any such
transaction that it applies to the trade mark, if and when registered, the Controller
shall, upon registration, enter the relevant particulars in the register.
Public inspection of register.
47. The register shall, on payment of the prescribed fee, be open to public inspection
at the Office during the hours each day that the Office itself is open to the public.
Supply of certified copies, &c.
* S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Unofficial consolidated version
48. The Controller shall on request accompanied by the prescribed fee supply a
certified copy or extract or uncertified copy or extract of any entry in the register.
Request for change of name or address in register.
49. (1) The Controller shall, on request accompanied by the prescribed fee, by the
proprietor of a registered trade mark or a licensee, enter any change in the name or
address of the person making the request as recorded in the register and the person
concerned shall be informed when the change is made in the register.
(2) The Controller may at any time, on request by any person who has furnished an
address for service under Rule 10, if the address is recorded in the register, change it
and the person concerned shall be informed when the change is made in the register.
Change of classification.
50. (1) Where, in pursuance of section 68(1), the Controller proposes to amend
existing entries in the register, the Controller shall give the proprietor of the mark
written notice of his or her proposals and shall publish the proposals in the Journal.
(2) Notice of opposition to the proposals may be filed within three months of the date
of publication of the proposals. A notice shall state the grounds of opposition and
shall include in particular, any grounds based on matters to which section 68(3)
relates.
(3) The Controller may require or admit any evidence which he or she considers
relevant to the questions at issue and, if so requested by any opponent, give that
opponent an opportunity to be heard thereon before deciding the matter.
(4) If no notice of opposition under paragraph (2) of this Rule is filed within the time
specified, the Controller shall amend the register in accordance with the proposals
published under paragraph (1).
Registered Trade Mark Agents
Application for registration.
51. (1) An application under section 86 for registration in the Register of Trade Mark
Agents shall be made in writing to the Controller, shall be accompanied by the
prescribed fee and shall contain:—
(1) An application under section 86 for entry in the Register of Trade Mark Agents
shall be in writing in a form approved by the Controller and shall in the case of an
individual, state—*
(a) in case the applicant is an individual, the first names, surname, date of
birth, nationality and private address of the individual, the name or style under
* S.I. 46/2016 Trade Marks (Amendment) Rules 2016
Unofficial consolidated version
which he or she carries on or proposes to carry on business as a registered
trade mark agent (if other than his or her full name), and a statement of his or
her educational and professional qualifications,
(b) in case the applicant is a partnership, the first names, surname, date of birth
and nationality of each of the partners, the name or style under which the
partnership carries on or proposes to carry on business as a registered trade
mark agent, and a statement that all the partners are registered in the Register
of Trade Mark Agents,
(a) in case the applicant is an individual, the full name, date of birth,
nationality and private address of the individual and the name or style under
which he or she proposes to carry on business as a registered trademark agent
(if other than his or her full name),
(b) in case the applicant is a partnership, the full name, date of birth and
nationality of each of the partners, the name or style under which the
partnership proposes to carry on business as a registered trade mark agent, and
a statement that all the partners are registered in the Register of Trade Mark
Agents,
(c) the address at which the applicant carries on or applicant proposes to carry
on business as a registered trade mark agent,
(d) in case the applicant is an individual who proposes to become a member of
a partnership, the full name or style under which and the address at which the
partnership carries on, or proposes to carry on, business as a registered trade
mark agent.
(d) full particulars of the educational and professional qualifications of the
person.
(a) the full name and home address of the person making the application and
the name or style under which the person proposes to carry on business as a
trade mark agent (if other than his or her full name),
(b) the address at which the person proposes to carry on business as a trade
mark agent,
*(c) the date of birth and the nationality of the person,
(d) full particulars of the education and professional qualifications of the
person
*S.I. 46/2016 Trade Marks (Amendment) Rules 2016
Unofficial consolidated version
and shall be accompanied by the prescribed fee as set out in item 33 of Schedule 1 of
the Trade Marks Rules, 1996.
(2) Applications for registration in the Register of Trade Mark Agents shall be
considered by a Board consisting of the Controller and other persons nominated for
the purpose by the Minister.
(2) A body corporate, unincorporated body or partnership may be eligible to be
entered in the Register of Trade Mark Agents if the Board established under Rule
51(5)(a) is satisfied that
(a) the body or partnership undertakes, inter alia, the provision of trade mark
agent services including, but not limited to, the business of acting as agent for
others for the purpose of:
(i) applying for or obtaining trade marks in the State or elsewhere; and/or
(ii) conducting proceedings before the Controller or the Court the appropriate
court **relating to applications for, or otherwise in connection with trade
marks described above;
and
(b) at least one of its directors, partners, managers or employees is registered
as a trade mark agent in the State.
(3) For the purposes of section 86 a person shall possess such educational and
professional qualifications and be of such personal character as to satisfy the Board,
after such inquiries, including such oral or written examination in the law and practice
of trade marks, as the Board deems necessary, that such person is fit to practise as a
registered trade mark agent.
(3) An application by a body corporate, unincorporated body or partnership for entry
in the Register of Trade Mark Agents shall be in writing in a form approved by the
Controller and shall state—
(a) the name of each director, manager, partner and employee of the body
corporate, unincorporated body or partnership who is registered as a trade
mark agent in the State,
(b) the date of birth and nationality of each director, manager, partner and
employee who is registered as a trade mark agent in the State,
(c) the name or style under which the body corporate, unincorporated body or
partnership proposes to carry on business as a trade mark agent,
** S.I. 588/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
(d) the address at which the body proposes to carry on business as a trade
mark agent,*
(e) full particulars of the education and professional qualifications of each
director, manager, partner and employee who is registered as a trade mark
agent in the State,
†and shall be accompanied by:
(f) the prescribed fee as set out in item 33 of Schedule 1 of the Trade Marks
Rules 1996,
(g) a copy of a certificate of incorporation, an entry in a relevant register or
other proof of legal personality,
(4) The Board shall—
(a) fix the time and place for the conducting of any examination referred to in
paragraph (3),
(b) appoint one or more examiners to conduct any such examination, and
(c) make such other arrangements as may be necessary in relation to any such
examination.
(4) Subject to paragraph (7), a person shall not be entered in the Register of Trade
Mark Agents unless—
(a) (i) he or she has sat a Leaving Certificate Examination conducted by the
State Examinations Commission and attained, on the basis of the standards
applied by that Commission at the time of the conducting thereof, results that
constituted, at least, a pass at ordinary level in that examination, or
(ii) he or she has attained a qualification which, in the opinion of the Board, is
of equivalent standing, and
(b) he or she has a satisfactory knowledge of the law and practice of trade
marks.
(5) The consideration of applications for registration shall be carried out, and any
necessary examination for that purpose shall be conducted, as expeditiously as is
* *S.I. 46/2016 Trade Marks (Amendment) Rules 2016
*S.I. 46/2016 Trade Marks (Amendment) Rules 2016
Unofficial consolidated version
practicable having regard to the number of applications received in the period
concerned.*
(5) (a) An application for registration in the Register of Trade Mark Agents, in
accordance with paragraphs (1) and (3) of Rule 51, shall be considered by a
Board consisting of the person who is the Controller for the time being, and
such other persons as may be nominated for the purpose by the Minister.
(b) The Board shall,
(i) consider the personal character and the fitness of the applicant to
perform the professional duties of a trade mark agent in the light of
the educational and professional qualifications set out in paragraph
(4) of Rule 51, which the applicant possesses. If the Board is in
doubt as to the fitness of the person making the application, it may
require the person to undergo such written or oral examinations or
tests in such subjects as it considers necessary;
(ii) fix the time and place for the holding of any examination, shall
appoint one or more examiners to conduct examinations or tests and
shall make such other arrangements as may be necessary in relation
to such tests or examinations;
(iii) consider applications and hold any necessary tests or
examinations
as expeditiously as is practicable having regard to the number of
applications received;
(iv) in the case of an application by a body corporate, unincorporated
body or partnership, consider the fitness of the body or partnership
to carry on the business of a trade mark agent having regard to the
educational and professional qualifications of the directors,
managers, partners and employees, as set out in Rule 51(4),
intending to provide trade mark agent services in the State. If the
Board is in doubt as to the fitness of the body or partnership making
the application to carry on the business of a trade mark agent, it
may require some or all of the persons intending to provide trade
mark agent services in the State to undergo such written or oral
examinations or tests in such subjects as it considers necessary.
(6) Subject to paragraph (7), a person shall not be entered in the Register of Trade
Mark Agents unless he or she has—
(a) (i) sat a Leaving Certificate Examination conducted by the State
Examinations Commission and attained, on the basis of the standards
applied by that Commission at the time of the conducting thereof,
Unofficial consolidated version
results that constituted, at least, a pass at ordinary level in that
examination, or *
(ii) attained a qualification which, in the opinion of the Board, is of
equivalent standing, and
(b) a satisfactory knowledge of the law and practice of trade marks.
(6) The Board may, for the purpose of establishing that an applicant possesses the
required educational qualifications specified in paragraph (4), require that the
applicant submit evidence to that effect.
(7) However, if it is otherwise satisfied, in light of the educational and professional
qualifications which the applicant possesses, that the applicant is fit to perform the
professional duties of a registered trade mark agent, the Board may waive the
requirement in paragraph (6)(a) for the purpose of the consideration by it of any
application.
(7) The Board may, however, waive or vary any of the requirements specified in
subparagraphs (a) or (b) of paragraph (4) of Rule 51, if it is otherwise satisfied in the
light of the educational and professional qualifications which the applicant possesses,
that the applicant is fit to perform the professional duties of a trade mark agent.*
51A. The following are prescribed for the purposes of paragraphs (a), (b) and (c),
respectively, of section 85(4B)—
(a) evidence indicating that the person referred to in section 85(4B) is
established in the Member State concerned for the purpose of pursuing the
activities concerned,
(b) evidence of the applicable qualifications (within the meaning of
section 85) being—
(i) evidence such as a copy of a diploma or certificate, or
(ii) other evidence of formal qualifications, awarded by the competent
authority of the Member State concerned which indicates that the
person referred to in section 85(4B) is qualified to act as a trade mark
agent in that state, and
(c) in a case falling—
(i) within paragraph (c)(i), a copy of a passport, national identity card
or other proof of nationality, or
*S.I. 46/2016 Trade Marks (Amendment) Rules 2016
Unofficial consolidated version
(ii) within paragraph (c)(ii), to the extent that proof of the matters
referred to in the following clauses is not provided by the evidence
referred to in paragraph (a)— *
(I) a copy of a certificate of incorporation, an entry in a relevant
register or other proof of the possession of the required legal
personality,
(II) a copy of a certificate or an entry in a relevant register
specifying the location of the person’s registered office, central
administration or principal place of business or other proof of
its location.
Evidence of qualifications, etc.
51A. The following are prescribed for the purposes of paragraphs (a), (b) and (c),
respectively, of section 85(4B)—
(a) evidence indicating that the person referred to in section 85(4B) is
established in an EEA state for the purpose of pursuing the activities
concerned,
(b) evidence of the applicable qualifications (within the meaning
of section 85) being—
(i) evidence such as a copy of a diploma or certificate, or
(ii) other evidence of formal qualifications, awarded by the
competent authority of the EEA state concerned which
indicates that the person referred to in section 85(4B) is
qualified to act as a trade mark agent in that state, and
(c) in a case falling—
(i) within paragraph (c)(i), a copy of a passport, national
identity card or other proof of nationality, or
(ii) within paragraph (c)(ii), to the extent that proof of the
matters referred to in the following clauses is not provided
by the evidence referred to in paragraph (a)-
(I) a copy of a certificate of incorporation, an entry in a
relevant register or other proof of the possession of the
required legal personality,
*S.I. 46/2016 Trade Marks (Amendment) Rules 2016
*S.I. 46/2016 Trade Marks (Amendment) Rules 2016
Unofficial consolidated version
(II) a copy of a certificate or an entry in a relevant
register specifying the location of the person’s
registered office, central administration or principal
place of business or other proof of its location.”
Controller to be informed of certain change of circumstances.
51B. If, subsequent to the provision by a person to the Controller of such evidence as
is referred to in section 85(4B), there is any material change of circumstances
affecting the person’s continuing to be qualified to act as a trade mark agent in the
Member State concerned, the person shall, forthwith, notify the Controller in writing
of that change of circumstances.*
“Controller to be informed of certain change of circumstances.
51B. If, subsequent to the provision by a person to the Controller of such evidence as
is referred to in section 85(4B), there is any material change of circumstances
affecting the person’s continuing to be qualified to act as a trade mark agent in, an
EEA state, the person shall, forthwith, notify the Controller in writing of that change
of circumstances.”
Proof of authorisation of agent may be required
52. The Controller may by notice in writing sent to an agent require the agent to
produce evidence of the agent's authority.
Entry in the Register of Trade Mark Agents.
53. (a) Subject to the provisions of section 86 and these Rules, an applicant shall,
upon payment of the prescribed fee, be registered by the Controller in the
Register of Trade Mark Agents.
(b) The entry in that register shall include the date of registration and, in case †the applicant is a partnership, the business name and address thereof and the
full name and private address and particulars of the qualifications for entry of
each of the partners or, in any other case, the full name, business name (if
any), private and business address of the applicant together with particulars of
the applicant's qualifications for entry, and such other particulars as the
Controller considers desirable.
(c) Where the address of an applicant who has been entered in the register
changes, the Controller shall record the new address on receipt of a written
request from the person concerned.
“Entry in the Register of Trade Mark Agents
*S.I. 46/2016 Trade Marks (Amendment) Rules 2016
Unofficial consolidated version
53. (a) Subject to the provisions of section 86 and these Rules, a person shall, upon
payment of the prescribed fee, be registered by the Controller in the Register of Trade
Mark Agents.
(b) The entry in that register shall include the date of registration and, in the case
of a partnership, body corporate or unincorporated body, the business name and
address thereof and the full name and home address of each director, manager,
partner or employee registered as a trade mark agent in the State and in the case of an
individual, the full name, the business name (if any), nationality and home and
business address of the applicant together with such particulars of the applicant’s
qualifications for entry, and such other particulars as the Controller may require.
(c) Where the address of a person who has been entered in the register changes,
the Controller shall record the new address on receipt of a written request from the
person concerned.”**
Publication of entries in Register of Trade Mark Agents.
54. The Controller shall publish in the Journal particulars of entries in the Register of
Trade Mark Agents, and shall so publish before the end of March in each year a list in
alphabetical order of the names entered in that register.
Payment of annual registration fee.
55. The prescribed annual fee in respect of each registration shall be payable before
the 1st day of December in each year in respect of the following year, and in case it is
not paid within one month from that date the Controller shall send to the registered
trade mark agent at such agent's registered business address a notice in writing
requiring such agent to pay the fee on or before a date to be mentioned in the notice,
and in the case of failure to pay the fee within the time specified in the notice the
Controller may cause the name of such agent to be erased from the Register of Trade
Mark Agents.
Request for removal from Register of Trade Mark Agents.
56. Any person registered in the Register of Trade Mark Agents desiring to be
removed therefrom shall make a request to that effect in writing to the Controller,
who shall thereupon amend that Register accordingly.
Notice to Controller of application to the Court the High Court ** under
subsection (3) of section 88.
57. Where a person applies to the Court the High Court** under section 88(3) for
cancellation of a decision by the Controller, the notice to the Controller of such
application shall be in writing and shall be given at the time when the person so
applies to the Court the High Court. The notice shall be accompanied by a copy of the
application.
* *S.I. 46/2016 Trade Marks (Amendment) Rules 2016
** S.I. 588/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
Application for restoration to Register of Trade Marks Agents.
58. (1) A person desiring to be restored to the Register of Trade Mark Agents under
section 89(3) shall make an application to that effect in writing to the Controller.
(2) An application under section 89(4) shall be in writing.
Controller may refuse to deal with certain agents.
59. The Controller may refuse to recognise in respect of any business under the Act
—
(a) an individual whose name has been erased from and not restored to, or
who is suspended from, the Register of Trade Mark Agents;
(b) a person who is found by the Minister to have been guilty of such conduct
as would, in the case of an individual registered in that register, render such
person liable to have his or her name erased from it on the ground of
misconduct;
(c) a partnership or body corporate of which one of the partners or directors is
a person whom the Controller could refuse to recognise under paragraph (a) or
(b) of this Rule;
(d) any solicitor whose name has been struck off the role of solicitors
maintained under the Solicitors Acts, 1954 to 1994, and has not since been
restored. restored;
(e) any person who no longer satisfies the requirements of section 85(4A);
(f) a person referred to in section 85(4B) who does not comply with Rule 51A or
51B.*
“Controller may refuse to deal with certain agents
59. The Controller may refuse to recognise in respect of any business under the Act
(a) a person whose name has been erased from and not restored to, or who is
suspended from, the Register of Trade Mark Agents;
(b) a person who is found by the Minister to have been guilty of such conduct
as would, in the case of an individual registered in that register, render such
person liable to have his or her name erased from it on the grounds of
misconduct;
(c) any solicitor whose name has been struck off the roll of solicitors
*S.I. 46/2016 Trade Marks (Amendment) Rules 2016
** S.I. 588/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
maintained under the Solicitors Acts, 1954 to 2011, and has not since been
restored.
(d) any person who no longer satisfies the requirements of section 85(4A);
(e) a person referred to in section 85(4B) who does not comply with Rule 51A
or 51B.*
Powers and Duties of Controller, Evidence and Costs
Provision of information and inspection of documents.
60. (1) In addition to any other information or documents which the Controller is
under the Act or these Rules authorised or obliged to provide or to make available for
inspection, the following provisions of this Rule shall apply in relation to information
or documents relating to applications for registration of trademarks and registered
trademarks.
(2) Following the filing of applications for registration, the Controller shall permit the
inspection of copies of the applications as made in accordance with Rule 12(2) and of
certificates filed under Rule 13.
(3) For the purpose of section 70(1), the following documents and information are
hereby prescribed —
(a) the documents in paragraph (2);
(b) any written statements of the grounds of decisions of the Controller which
have been prepared in respect of inter partes proceedings;
(c) notices of opposition submitted under Rule 18;
(d) applications under Rule 35(1);
(e) notifications of surrender under Rule 36(1);
(f) applications under Rule 41(1) and Rule 41A(1);*
(g) in relation to an application for registration, information as to whether,
prior to its publication, a notice was given or a request made under section 44
and the outcome of any such notice or request;
(h) any instrument or document submitted to the Controller under Rule 45(2)
which is retained in the Office and which the person who submitted it agrees
may be inspected;
* S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
(4) A request under section 70(1) shall be in writing. If the request is for the provision
of information, it shall be accompanied by the prescribed fee.
(5) Where a request is for the inspection of documents, the Controller shall inform the
person making it of the time, or times, at which the documents specified in the request
may be inspected at the Office. The prescribed fee for inspection of documents at the
Office shall be paid at the time the inspection takes place.
Hearing
61. (1) For the purposes of section 71 the Controller shall give the applicant,
proprietor or party concerned notice that he or she may be heard.
(2) Save as otherwise provided by these Rules, an application for a hearing shall be
made within ten days from the date of notice by the Controller under paragraph (1)
and shall be accompanied by the prescribed fee.
(3) Upon receiving an application for a hearing the Controller shall notify any other
party to the proceedings and if such a party desires to attend and be heard he or she
shall inform the Controller accordingly within 10 days of notification and pay the
prescribed fee. The Controller shall give the party or parties concerned not less than
ten days' notice of the time of the hearing unless the parties consent to shorter notice.
(2) Save as otherwise provided by these Rules, an application for a hearing shall be
made within 21 days from the date of notice by the Controller under paragraph (1)
and shall be accompanied by the prescribed fee.
(3) Upon receiving an application for a hearing the Controller shall notify any other
party to the proceedings and if such a party desires to attend and be heard he or she
shall inform the Controller accordingly within 21 days of notification and pay the
prescribed fee.* The Controller shall give the party or parties concerned not less than
10 days notice of the time of the hearing unless the parties consent to shorter notice.†
(4) A party who fails to attend a hearing appointed in accordance with this Rule may
be treated as not desiring to be heard and the Controller may act accordingly.
(5) If in inter partes proceedings either party intends to refer at the hearing to any
document not already mentioned in the proceedings, he or she shall give to the other
party and to the Controller at least 7 days' notice of his or her intention, together with
details of each document to which he or she intends to refer.
Controller's power to require documents, information or evidence.
62. The Controller may, at any stage of any proceedings before him or her, direct that
such documents, information or evidence as he or she may require shall be filed
within such period as he or she may specify.
* S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018 † S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Unofficial consolidated version
General power to enlarge time.
63. (1) The time or periods:
(a) prescribed by these Rules, other than the times or periods prescribed by the
rules mentioned in paragraph (2) below, or
(b) specified by the Controller for doing any act or taking any proceedings,
may, at the request of the person or party concerned, be extended by the
Controller if he or she thinks fit, upon such notice to any other person or party
affected and upon such terms as he or she may direct.
63. (1) Subject to paragraphs (3) and (4), the time or periods:
(a) prescribed by these Rules, other than the time or periods prescribed by the
Rules mentioned in paragraph (2) below, or
(b) specified by the Controller for doing any act or taking any proceedings,*
may if he or she thinks fit, be extended by the Controller*
(2) The Rules excepted from paragraph (1) of this Rule are Rule 10(3) (failure to file
address for service), Rule 12(5) (time limit for payment of application fee), Rule
18(1) (time for filing opposition to registration), Rule 19(1) (time for filing counter-
statement), Rule 39 (delayed renewal) and Rule 40 (restoration of registration).
(2) The Rules excepted from paragraph (1) of the Rules are Rule 10(3) (failure to file
address for service), Rule 12(5) (time limit for payment of application fee), Rule
18(1) (time for filing opposition to registration), Rule 19(1) (time for filing counter-
statement), Rule 25(3) (election by party to file written submissions in lieu of
attending at a hearing), Rule 39 (delayed renewal) and Rule 40 (restoration of
registration).
(2) The Rules excepted from paragraph (1) of the Rules are Rule 10(3) (failure to file
address for service), Rule 12(5) (time limit for payment of application fee), Rule
18(1) (time for filing opposition to registration), Rule 19(1) (time for filing counter-
statement), Rule 25(3) (election by party to file written submissions in lieu of
attending at a hearing), Rule 39 (delayed renewal), Rule 40 (restoration of
registration) and Rule 41B(1) (time for filing counter-statement in response to an
application for a declaration of invalidity).*
(3) Subject to paragraph (4) below, a request for extension under paragraph (1) above
shall be made before the time or period in question has expired.
(3) A request for extension under paragraph (1) above shall be made before the time
or period in question has expired and shall not be subject to the payment of a fee.†
* S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019 † † S.I No. 533/2015 Trade Marks (Amendment) Rules 2015
Unofficial consolidated version
(4) If the request under paragraph (1) is made not later than two months after the
expiry of the time or period in question the Controller may, at his or her discretion,
extend the period or time if he or she is satisfied with the explanation for the delay in
requesting the extension and it appears to him or her that any extension would not
disadvantage any other person or party affected by it. A person availing of the
provisions of this paragraph shall pay the prescribed fee at the time the request for
extension is made. *
(4) If the request for extension under paragraph (1) is made –
(a) not later than two months after the expiry of the time or period in question;
and
(b) no previous request has been made under this paragraph, the Controller shall
extend the period or time for such period or time as he or she may direct. A
person availing of the provisions of this paragraph shall pay the prescribed fee at
the time the request for extension is made.
(5) Where the period within which any party to proceedings before the Controller may
file evidence under these Rules is to begin upon the expiry of any period in which any
other party may file evidence and that other party notifies the Controller that he or she
does not wish to file any, or any further, evidence the Controller may direct that the
period within which the first mentioned party may file evidence shall begin on such
date as may be specified in the direction and shall notify all parties to the dispute of
that date.
(6) Where any period of time specified in the Act or these Rules for the giving,
making or filing of any notice, application or other document application, payment or
other document expires on a day certified by the Controller as being one on which
there is a general interruption or subsequent dislocation in the postal service of the
State or in the service of the Patents Office†, the period shall be extended to the first
day following the end of the period of interruption or dislocation.
(6) (a) Where any period of time specified in the Act or these Rules or in rules made
under any other enactment for the administration of which the Controller is
responsible, for the giving, making or filing of any notice, application, payment,
or other document expires on a day certified by the Controller as being one on
which there is an interruption, failure or delay in the communication service,
the period shall be extended to the first day following the end of the said period
of interruption, failure or delay.
(b) In this Rule “communication service” means a service by which documents
may be sent and delivered, and includes post and electronic communications.*
* S.I No. 533/2015 Trade Marks (Amendment) Rules 2015
Unofficial consolidated version
Costs.
64. (1) In the event of an opposition to the registration of a mark being uncontested by
the applicant the Controller, in deciding whether costs should be awarded to the
opponent shall consider whether proceedings might have been avoided if reasonable
notice had been given by the opponent to the applicant before the notice of opposition
was lodged.
(2) The States prescribed for the purposes of section 72(2) are the other Member
States of the European Communities any state which is a contracting party to the
agreement on the European Economic Area signed at Oporto on 2 May 1992, as
amended for the time being*.†
Statutory Declarations
Form of statutory declaration.
65. (a) A statutory declaration required by the Act or these Rules or used in any
proceedings before the Controller thereunder shall be headed in the matter to
which it relates and shall be drawn up in the first person, and shall be divided
into paragraphs consecutively numbered, and each paragraph shall so far as is
possible be confined to one subject.
(b) Every statutory declaration shall state the description and true place of
abode of the person making the declaration, and shall bear the name and
address of the person leaving it and shall state on whose behalf it is left.
Statutory declaration made outside the State.
66. A statutory declaration required by the Act or these Rules or used in any
proceedings before the Controller thereunder shall, if made and subscribed outside the
State, be made and subscribed before a person authorised by law to administer an oath
in the country in which it is made.
Notice of seal of officer taking declaration to prove itself.
67. Any document purporting to have affixed, impressed, or subscribed thereto or
thereon the seal or signature of any person authorised to take a declaration, in
testimony that the declaration was made and subscribed before such person, may be
admitted by the Controller without proof of the genuineness of the seal or signature,
or of the official character of the person or such person's authority to take the
declaration.
Applications to and Orders of Court court**
Application to Court court **
† † S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010 **S.I. 588/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
68. Every application to the Court the appropriate court** under the Act in relation to
any matter which is a function of the Controller shall be notified forthwith to the
Controller by the applicant.
Order of Court court **.
69. (a) Where an order has been made by the Court the appropriate court ** in any
matter under the Act relating to a function of the Controller, the person in
whose favour the order has been made, or such one of them if there is more
than one, as the Controller may direct, shall forthwith leave at the Office an
attested copy thereof.
(b) The register shall, if necessary, thereupon be rectified or altered by the
Controller.
Miscellaneous
Excluded days.
70. Whenever the last day fixed by the Act, or by these Rules, for doing any act or
thing at the Office falls on any of the days on which the Office is not open (which
days shall be excluded days for the purposes of the Act and these Rules), it shall be
lawful to do any such act or thing on the first day which is not an excluded day next
following such excluded day, or days, if two or more of them occur consecutively.
Searches.
71. On application, accompanied by payment of the prescribed fee, the Controller
may cause a search to be made in respect of specified goods or services to ascertain
whether or not at the date of the search any mark is on record which resembles a trade
mark of which duplicate representations accompany the application, and shall cause
the person making such request to be notified of the result of the search.
Pending applications for registration.
72. (1) Where an application which was pending at the commencement of the Act is
to be dealt with in accordance with the old law, the provisions of Rule 73 as regards
the issue by the Controller of a request for payment of the fee for registration and the
time within which such fee shall be paid shall apply to such application if the fee for
registration had not been paid at commencement.
(2) (i) Where, in relation to an application to which paragraph (1) applies, the date
of issue of the certificate of registration of the mark concerned is later than 2
months prior to the expiry of a period of seven years from the date of filing of
that application, the period within which an application shall be made for
renewal of the registration of the mark shall be the unexpired term of the seven
**S.I. 588/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
year period or six weeks from the date of issue of the certificate of
registration, whichever is the later.
(ii) In relation to an application to which subparagraph (i) applies, a notice of
non-payment of a registration renewal fee shall be published by the Controller
upon expiry of the appropriate period provided for in that subparagraph if the
fee remains unpaid at the expiry of that period.
(iii) Subject to paragraph (ii), paragraphs (1) and (2) of Rule 39 shall apply.
Time limit for payment of fees required for registration.
73. The prescribed period for the purposes of section 45(2) shall be two months from
the date of issue by the Controller of a request for payment of the fee prescribed for
registration.
Power to dispense with evidence, signature, &c.
74. Where, under these Rules, any person is required to do any act or to sign any
document, or to make any declaration on behalf of himself or of any body corporate,
or any document or evidence is required to be produced to or left with the Controller
or at the Office, and it is shown to the satisfaction of the Controller that from any
reasonable cause such person is unable to do such act or thing or to sign such
document or to make such declaration or that such document or evidence cannot be
produced or left as aforesaid, it shall be lawful for the Controller, upon the production
of such evidence and subject to such terms as he or she thinks fit, to dispense with any
such act or thing, signature, declaration, document or evidence.
General power of amendment.
75. Any document for the amending of which no special provision is made by the Act
or these Rules may be amended, and any irregularity in procedure which in the
opinion of the Controller may be obviated without detriment to the interests of any
person may be corrected, if and on such terms and in such manner as the Controller
thinks fit; provided that, without prejudice to the Controller's power to extend any
time or periods under Rule 63 and except where such irregularity is attributable
wholly or in part to an error, default or omission on the part of the Office, the
Controller shall not direct that any period of time specified in the Act or Rules shall
be altered.
Partial assignments.
76. (1) Where an assignment of a registered trade mark is limited so that it applies in
relation to some only of the goods or services for which the mark is registered, Rule
45 shall apply in respect of an application to the Controller under section 29.
(2) The Controller shall enter in the register the relevant particulars in relation to the
assignment.
Unofficial consolidated version
(3) At the same time as the entry referred to in paragraph (2) is made, the Controller
shall register the mark in the name of the assignee as proprietor in respect of the
goods or services to which the assignment relates; and such registration shall, for the
purposes of the Act and these Rules, be deemed to be an independent registration.
(4) Where an assignment of a registered trade mark is limited so that it applies in
relation to use of the mark in a particular manner or in a particular locality, the
provisions of paragraphs (1) to (3) shall, with the necessary modifications, apply in
respect of any application under section 29; and, in addition, the following provisions
shall apply:
(i) in the case of an assignment which is limited so that it applies in relation to
use of a trade mark in a particular manner, the registration pursuant to
paragraph (3) shall include the representation of the mark in the particular
manner in which it is to be used;
(ii) in the case of an assignment which is limited so that it applies in relation to
use of the mark in a particular locality, the registration pursuant to paragraph
(3) shall have effect as if it resulted from an application for registration in
respect of which the applicant had agreed to a territorial limitation to the same
effect under the provisions of section 17.
Non-exclusive licence.
77. (1) The Controller may, on application therefor to him or her in writing by a
person and on payment of the prescribed fee, grant or refuse to grant to the person a
licence (referred to in this rule as a non-exclusive licence) authorising the use by that
person of part or all of the computerised trade mark data base open to public
inspection.
(2) A non-exclusive licence shall be subject to such conditions and restrictions (if
any) as the Controller may impose, at the time of the grant of the licence or
subsequently, and specify in the licence or in another document given or sent to the
holder of the licence.
(3) The Controller may, if he or she is satisfied that there has been a contravention of
a condition or restriction of a non-exclusive licence, revoke the licence.
(4) A non-exclusive licence shall, unless previously revoked remain in force until
such period as may be determined by the Controller.
Form for conversion of pending application.
78. A notice to the Controller under paragraph 9(3) of the Third Schedule to the Act,
claiming to have the registrability of a mark determined in accordance with the
provisions of this Act, shall be in Form No. 2.
Forms.
79. The forms mentioned in these Rules are those set out in Schedule 2.
Unofficial consolidated version
79 (1) The forms mentioned in these Rules are those set out in Schedule 2 of the
Trade Marks Rules 1996
(2) Any other forms required by the Controller to be used for the purpose of registration
of a trade mark or any other proceedings before the Controller under the Act pursuant
to Section 69 and any directions with respect to its use shall also be published.*
(3) A requirement under this Rule to use a form as published is satisfied by the use
either of a replica of that form or of a form which is acceptable to the Controller and
complies with any directions as to the use of such form.**
Schedule 1
Fees Payable †
Rule 4
1.
2.
3.
4.
5.
6.
7.
8.
9.
On application to register a trade mark under section 37:
Class fees —
(i) for each class over one:
(ii) for each additional class to which rule 14(3) refers:
Application for a hearing:
Notice of opposition: (a) to the registration of a mark (rule 18); (b)
to the regulations relating to a collective or certification trade mark
(rule 31(4) or rule 33(4)(b)); or (c) to the alteration of a registered
trade mark (rule 35):
On lodging a counterstatement (rule 19):
On request for a written statement on the grounds of a decision
made by the Controller (rule 27(2)):
On notice under section 44(1) or on request under section 44(3) to
amend an application:
On request for division of application (rule 28):
On request to merge either applications or registrations (rule 29):
60.00
60.00
60.00
50.00
50.00
30.00
150.00
30.00
100.00
100.00
* * S.I No. 533/2015 Trade Marks (Amendment) Rules 2015
Unofficial consolidated version
10.
11.
12.
13.
14.
15.
16.
17.
18.
19.
20.
21.
22.
On filing of regulations governing the use of a certification or
collective mark (rule 31 or rule 33):
On request to amend regulations governing the use of a
certification
or collective mark (rule 32 or rule 34):
On notification of surrender of a registered trade mark (rule 36):
Renewal of registration (rule 38):
Class fee for each class over one:
Additional fee for renewal of registration (rule 39(1)):
On request for the restoration and renewal of a registration
removed from the register for failure to renew (rule 40):
On request for revocation or invalidation of a registration, or
rectification of an error or omission in the register (rule 41):
On application to record a registrable transaction (rule 45):
On request for any of the matters referred to in rule 48:
On request for alteration of a trade mark (rule 35) or for a change
of
name or address (rule 49):
On request for information about an application or a
registered trade mark (rule 60) for each item of information
requested:
On request for extension of time (rule 63(4)) for each month
of extension beyond the prescribed period:
On application to register of a transaction under section 29
(rule 45) and on notice under section 31 (rule 46):
(i) for one mark
(ii) for each other mark included in the application
For registration of a trade mark —
100.00
100.00
50.00
200.00
100.00
50.00
100.00
100.00
50.00
20.00
50.00
20.00
50.00
50.00
5.00
81.00
Unofficial consolidated version
23.
24.
25.
26.
27.
28.
29.
(i) where the application is dealt with in accordance with
the Act of 1963:
(ii) in any other case:
On request for a search under rule 71 in respect of one class:
For making a search by means of the Patents Office's computerised
trade mark search system, of the classified representations of trade
mark data, kept at the Office on computer and open to public
inspection, and for a print-out or output to electronic media or
paper of the results of the search:
(i) for each quarter of an hour or part thereof:
(ii) for each record in excess of 30 relating to a trade mark
in the computer print-out to paper:
For inspection of all or any part of the trade mark register available
on computer: for each quarter of an hour of part thereof:
For (a) inspection of the register or any document open to public
inspection, or (b) for making a search amongst such classified
representations of trade marks as are made available on paper for
each quarter of an hour or part thereof:
For computer print-out or output to electronic media/paper of
trade mark data open to public inspection other than as at item 24:
(i) for each trade mark record in respect of which data is
requested other than as at (ii):
(ii) for each trade mark record sought on the basis of time
period or sequence number, by persons complying with
conditions imposed by the Controller, the fees set out as
at item 29.
For access, by means of telephone or other data transmission
media
from outside the Patents Office, to the information specified in
items 24 and 25 for the purpose of searching or inspecting such
information and for a computer print-out of the results of the
search, the appropriate fee set out in those items, and in addition:
140.00
30.00
10.00
0.25
10.00
2.50
20.00
250.00
100.00
Unofficial consolidated version
30.
31.
32.
33.
34.
35.
On application for an authorisation under rule 77
and
(i) in the case of a search of the trademark database made
available under rule 77 carried out by a person other than
the
licensee, an additional fee of 20 per cent. of any fee
charged
by the licence for the use of that database.
(ii) in the case of such a search by the licensee, an
additional
fee of £7 in respect of the search of the first class and £1 in
respect of each subsequent class.
For photocopying documents, per page:
For certifying office copies, manuscripts, typed printed or
photographic, each:
On giving notice under paragraph 9 of the Third Schedule to the
Trade Marks Act, 1996 :
On application for registration in the Register of Trade
Mark Agents:
For registration in the Register of Trade Mark Agents:
Annual fee for renewal of registration as a trade mark agent
payable before 1st December each year in respect of the following
year.
0.25
3.00
50.00
200.00
100.00
200.00
Fees payable under the Trade Marks Act, 1996 (No. 6 of 1996), and the Trade Marks
Rules, 1996 (S.I. No. 199 of 1996)
Reference
Number
Item Amount
(1) (2) (3)
1. On application to register a trade mark under section
37.
70.00
2. Class fees -
Unofficial consolidated version
(i) for each class over one.
(ii) for each additional class to which Rule 14(3)
refers.
70.00
70.00
(i) On notification under Rule 25(2) or Rule
61(3) of intention to appear at a hearing.
(ii) On application for a hearing (Rule 61(2))
Nil
60.00
4. On giving notice of opposition –*
(i) to the registration of a mark (Rule 18), †
(ii) to the regulations relating to a collective or
certification mark (Rule 31(4) or Rule
33(4)(b)), or
(iii) to the alteration of a registered trade mark
(Rule 35).‡ 60.00
5. On lodging a counter-statement (Rule 19). Nil
6. On request for a written statement of the grounds of
a
decision made by the Controller (Rule 27(2)).
190.00
7. On notice under section 44(1) to restrict the goods or services covered by an application or on request under §
section 44(3) to amend an application. 35.00
8. On request for division of an application (Rule 28) 125.00
8.A On request for division of a registration (Rule 28A) 125.00**
9. On request to merge separate applications or registrations (Rule 29).
125.00
10. On filing of regulations governing the use of a
collective
or certification mark (Rule 31(1) or Rule 33(1)).
125.00
11. On submission of amended regulations governing
the use of a registered collective mark (Rule 32) or
on request to amend regulations governing the use
of a registered certification mark (Rule 34). 125.00
*
†
‡ S.I. No. 482/2001-Patents, Trade Marks and Designs (Fees) Rules 2001
§ S.I. No. 482/2001-Patents, Trade Marks and Designs (Fees) Rules 2001
** S.I. No. 564 of 2018 Patents, Trade Marks and Designs (Fees) (Amendment) Rules 2018
Unofficial consolidated version
12. On notification of surrender of a registered trade
mark
(Rule 36).
Nil
13. (i) Renewal of registration (Rule 38).
(ii) Class fee for each class over one
(iii) Additional fee for renewal of registration
(Rule 39(1)).
250.00
125.00
60.00
14. Restoration fee payable upon a request under Rule
40(1).
125.00
15. On application to the Controller (Rule 41 or Rule
41A*) –
(i) for revocation, or a declaration of invalidity,
of a registration of a mark
(ii) for rectification of an error or omission in
the
Register of Trade Marks kept under the Act
of 1996.
125.00
6.00
16. On request for a change in the Register of Trade
Marks kept under the Act of 1996 of a name or
address or both (Rule 49(1)) - for every mark in the
request to which the change applies 6.00
17. On request under Rule 48 for a certified copy or
extract
of any entry in the Register.
25.00
18. On request for alteration of a trade mark (Rule 35). 60.00
19 On request for information about an application or a
registered trade mark (section 70(1) and Rule 60)
For each item of information requested 6.00
20. For extensions of time requested on the basis of
Rule 63(4)
For each month of extension of the time or period
referred to in Rule 63(1) requested.
30.00
21. On application to register a transaction under section
29
(Rule 45) and on notice under section 31 (Rule 46) –
(i) for one mark.
60.00
* S.I. No. 628/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
(ii) for each other mark included in the
application or notice which is affected by the
transaction
6.00
22. For registration of a trade mark –
(i) where the application is dealt with in
accordance with the Trade Marks Act, 1963
(No. 9 of 1963).
(ii) in any other case.
102.00
177.00
23. On request for a search under Rule 71* 35.00
24. For making a search, by means of the Office's
computerised trade mark search system, of the
classified representations of trade mark data kept at
the Office on computer and open to public
inspection and for a print-out or output to electronic
media or paper of the results of the search –
(i) for each quarter of an hour or part thereof.
for each record in excess of 30 relating to a
trade mark
(ii) in the computer print-out to paper Nil
25. For inspection of all or any part of the Register of
Trade Marks kept under the Act of 1996 available
on computer
For each quarter of an hour or part thereof
Nil
26. For (i) inspection of the Register of Trade Marks
kept
under the Act of 1996 or any document open to
public
inspection, or (ii) making a search amongst such
classified representations of trade marks as are made
available on paper
For each quarter of an hour or part thereof
Nil
27. For computer print-out or output to electronic media
or †
paper of trade mark data open to public inspection
other
than as at reference number 24 –
(i) for each trade mark record in respect of
which data is requested other than as at (ii).
S.I. No. 482/2001-Patents, Trade Marks and Designs (Fees) Rules 2001 † S.I. No. 482/2001-Patents, Trade Marks and Designs (Fees) Rules 2001
Unofficial consolidated version
(ii) for each trade mark record sought on the
basis of
time period or sequence number by persons
complying with conditions imposed by the
Controller, the fees set out as at reference
number 29
Nil
28. For access, by means of telephone or other data
transmission media from outside the Office, to the
information specified at reference numbers 24 or 25
for
the purpose of searching or inspecting such
information
and for a computer print-out of the results of the
search,
the appropriate fee set out at those reference
numbers,
and in addition.
Nil
29. Licence (under Rule 77) authorising use of the
Patents Office the Office’s **computerised
trade mark data base.
Each update of the Patents Office the Office’s
**computerised trade
mark data base.*
125.00
625.00
70.00
30. For photocopying or reproduction of documents
open to
public inspection. Per page
0.30
31. On request for certified copies, manuscripts, typed,
printed or photographic, each 3.00
32. On request for a certificate for use in connection
with
applications for registration abroad (Rule 5).
25.00
33. On application for registration in the Register of
Trade
Marks Agents (Rule 51 (1))
250.00
50.00
33A On application to sit the written examination in the
law and practice of trade marks referred to in Rule
51(3).
200.00
* S.I. No. 564 of 2018 Patents, Trade Marks and Designs (Fees) (Amendment) Rules 2018
** S.I. 588/2019 Trade Marks (Amendment) Rules 2019
Unofficial consolidated version
33B On application for a review of marks obtained in the
written examination in the law and practice of trade
marks* 70.00
34. For registration in the Register of Trade Mark
Agents
(Rule 53 (a)).
125.00
35. Annual fee for renewal of registration as a trade
mark agent payable before the 1st day of December
each year in respect of the following year (Rule 55). 250.00
36. On request to the Controller for the removal from
the Register of Trade Marks kept under the Act of
1996 of matter which has ceased to have effect. Nil
37. Initial once-off connection fee in respect on on-line
dial-in access for searches and inspections of the
trade mark register†.
2,500.00‡
38. On application pursuant to Rule 30(1) for the
registration of a series of trade marks in a single
registration, for each trade mark in excess of 2 trade
marks contained in the application§
50.00
Schedule 2
FORMS
Form No. 1 Application for registration of a trade mark.
Form No. 2 Notice under paragraph 9(2) of the Third Schedule to the Trade Marks
Act, 1996.
Form No. 1
Reference No. of Applicant or Authorised Agent....................
APPLICATION FOR REGISTRATION OF A TRADE MARK
The Applicant(s) named herein hereby request(s) the registration of the trade mark,
the representation of which is shown below, on the basis of the following information:
* S.I. No. 30/2012- Patents, Trade Marks and Design (Fees) (Amendment) Rules 2012 † S.I. No. 482/2001-Patents, Trade Marks and Designs (Fees) Rules 2001 ‡ S.I. No. 564 of 2018 Patents, Trade Marks and Designs (Fees) (Amendment) Rules 2018
Unofficial consolidated version
1. Applicants(s)
Name:
Nationality and Address:
2. Representation of Mark (not to exceed 8cm x 8cm):
Type of Mark (please indicate as appropriate if the present application relates to any
of the following)
a collective mark
a certification mark
a series of trade marks
a three-dimensional mark (If this is relevant any additional perspectives much be
shown on separate sheets).
3. Goods/Services
The goods/services in respect of which registration of the mark represented at 2 is
requested are:
Number of Class:
Goods/Services Description
4. Use of Mark (indicate as appropriate)
It is hereby declared, in relation to the goods/services indicated at 3,
that the mark to which this application relates is being used by the Applicant(s) or
with the consent of the Applicant(s)
that the Applicant(s) indicated at 1 has/have a bona fide intention that the mark to
which this application relates should be used in relation to the goods/services
indicated at 3
5. Claim to priority (give the information below where a right to priority is claimed)
A right of priority is claimed on the basis of an earlier application for registration of
the mark as represented in 2, which was filed in a country or territory within the
meaning of section 40 or 41 in respect of the same, or some of, the goods/services to
which the present application relates. The details of the earlier application are as
follows:
Country/Territory
Unofficial consolidated version
Date of Filing
6. Colour (complete where appropriate)
The mark, in use, is/will be in the colour(s)..............................(please specify) and the
Applicant wishes that upon registration the Register shall contain an indication to that
effect.
7. Disclaimer or Limitation (indicate and complete as appropriate)
Right to the exclusive use of the following element(s) of the mark is disclaimed:
The rights conferred by registration of the mark shall be subject to the following
limitations:
8. Registered Trade Mark Agent Authorised
The following has been appointed to act on behalf of the Applicant(s) in all
proceedings connected with this application for registration and any proceedings
arising subsequent to registration.
Name of Agent
Address
9. Address for Service (indicate and complete as appropriate)
same as at 8
state hereunder the address where no Agent authorised to act
10. Fees:
The prescribed fees in the amount of £ .............are enclosed with this application.
11. Signature (the application may be signed by or on behalf of the Applicant(s) or by
the Agent named at 8).
Date:
To: The Controller of Patents, Designs & Trade Marks,
45 Merrion Square,
Dublin 2.
Unofficial consolidated version
FORM NO. 1
TRADE MARKS ACT 1996
APPLICATION FOR REGISTRATION OF A TRADE MARK
1. Applicant(s)
Name
Address
Nationality
Telephone:
Email:*
2. Legal Representative (Trade Mark Agent, Solicitor or other qualified person
Name
Address
Telephone:
Email:
3. Address for Service (within the EEA, to which correspondence is to be sent)
If different to address at 1 or 2.
Address
Telephone:
Email:
Please tick box if you wish the Office to correspond with you by email in
relation to this application
* S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Reference No. of Applicant or Legal
Representative…………………………
Unofficial consolidated version
4. Representation of Mark (Illustration should not exceed 8cm x 8cm)
5. Type of Mark
Series of Trade
Marks
3D Trade Mark Other
6. Colour
The mark in use is/will be in the colours ..................
7. Claim to a Right of Priority (If you have applied to register the Trade Mark
outside the State within the last 6 months enter here the relevant information
where a right to priority is claimed)
Standard Trade
Mark Collective Trade
Mark
Certification
Trade Mark
Unofficial consolidated version
Country Date Number
8. Goods and/or Services*
Nice Class No. List here the goods and/or services for which registration is sought
9. Declaration
I hereby declare that the Trade Mark to which this application relates is being used by,
or with the consent of, the Applicant named herein in relation to the goods and/or
services mentioned above or that the Applicant has a bona fide intention that it will be
so used.
Signature:
If a company, state the position within the
company of the person signing
Name in BLOCK CAPITALS
Date:
* S.I. No. 410/2010 Trade Marks (Amendment) Rules 2010
Unofficial consolidated version
Form No. 2
Notice under paragraph 9(2) of Third Schedule to the Trade Marks Act, 1996
1. Application No.
2. Name and address of Applicant(s)
3. Notice
The Applicant(s) named herein hereby gives/give notice to the Controller that the
registrability of the mark, the subject of the application identified above, is to be
determined in accordance with the provisions of the Trade Marks Act, 1996 .
It is acknowledged that this Notice is irrevocable.
Signed:
Date
Schedule 3
Rule 11
Rules Revoked
Statutory Instrument Number Title
No. 268 Trade Marks Rules, 1963
No. 76 Trade Marks Rules, 1963 (Amendment) Rules, 1964
No. 35 Register of Trade Mark Agent Rules, 1964
No. 371 Register of Trade Mark Agent (Amendment) Rules,
1985
No. 313 Trade Marks Rules, 1963 (Amendment) Rules, 1992.
GIVEN under my Official Seal, this 27th day of June, 1996.
Unofficial consolidated version
RICHARD BRUTON
Minister for Enterprise and Employment
The fees prescribed by the foregoing Rules are hereby sanctioned by the Minister for
Finance.
GIVEN under the Official Seal of the Minister for Finance, this 27th day of June,
1996.
RUAIRI QUINN
Minister for Finance