Relative Grounds For Refusal -
Outcome of Consultation

Background

In December 2009 the Intellectual Property Unit, published a consultation paper on a possible change with regard to examination of Trade Mark applications on Relative Grounds as contained in Section 10 of the Trade Marks Act 1996. The consultation period ended in February 2010. The following is a summary of the responses received together with our conclusions on the outcome of the consultation.

We wish to thank all respondents for the clear and detailed arguments that were put forward. The responses contributed greatly to the analysis and evaluation of the options available.

Responses

There was by far greater support for retaining the status quo, than for changing the current system. The following is a sample of the points made by both parties.

Response in favour of changing the current system:

• There is a move by national offices away from relative grounds examination.

• Applicants seeking an Irish registration are at a distinct disadvantage over applicants for Community or International Marks because of the more rigorous national examination process.

• There are many instances of Community and International Registrations which appear, on face value, to be in conflict – indicating that opposition based systems do not prevent such occurrences.

• There are many Community and International marks that designate Ireland but will never be used here, but prevent national applications becoming registered.

• Applicants who have an application refused on relative grounds can be successful in attaining a Community Trade Mark (CTM), which becomes effective in this State anyway.

Response in favour of retaining the status quo:

• The current system ensures, in so far as possible, that the register is clean and, to the extent possible, devoid of potentially conflicting marks.

• The current system provides certainty as to who has the right to the exclusive use of a mark as against other prospective users.

• Ireland is not out of step with Europe in having a relative grounds examination. 12 other EU member states have a relative grounds examination, including major economies such as Sweden, Portugal, Poland and the Czech Republic.

• The current system is more beneficial for proprietors who are not in a financial position to vigilantly police and enforce their trade mark rights.

• Irish trade mark registrations have a significant difference to, for example, Community trade mark registrations which makes any proposed removal of the relative grounds examination inappropriate. The ownership of an Irish trade mark registration is a defence to a trade mark infringement action in Ireland. If the relative grounds examination is removed, Irish trade mark registrations can be obtained with greater ease, which makes the defence more widely available and reduces the effectiveness of the trade mark infringement action. It would debase the value and strength of an Irish trade mark registration

• It is not considered that the existence of the relative grounds examination in Ireland is a major factor in encouraging companies to file Community trade marks instead. Irish application numbers have stayed relatively stable in the past number of years, although some Irish companies now file Community trade marks as well because of their increasing involvement in the export market. Also, some international companies now register in Ireland through the International Registration system which means that their applications would not show up in figures for Irish national applications. There is still a strong interest in the Irish trade mark registration system incorporating the relative grounds examination.

Conclusions

The outcome of the consultation process is to retain the status quo. On balance it is considered that retaining the status quo, for trade mark examination in Ireland, is the preferred option at this time. While a move to a ‘search and notify’ system would position the Patents Office alongside OHIM it would mean that, in the face of no response from prior rights holders (for whatever reason), the Office would end up registering marks that fail to perform the fundamental function required in Section 6(1) of the Act. There would not be any guarantee of origin and the integrity of the Register would be compromised.

The international community is still divided on this matter, with different regimes currently operating in the various National Intellectual Property Offices. Developments in this area will be closely monitored and the need for any appropriate changes will be kept under review.

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