Minister Humphreys introduces overhaul of trade mark law

• This is the first major reform of trade mark law in over 20 years
• The reform will make trade mark registration systems more accessible and efficient for businesses

Dublin, Ireland, Monday, 14th January The Minister for Business, Enterprise and Innovation, Heather Humphreys TD, has introduced an overhaul of Irish trade mark law that will lead to lower costs and increased legal certainty for business. This reform follows an EU Directive which has been transposed into Irish law and is the first major reform of trade mark law in Ireland for over 20 years.

The Directive being transposed into Irish law reforms and modernises the trade mark system in Europe, further harmonises the national laws of EU Member States, streamlines procedures, facilitates cooperation, supports anti-counterfeiting measures and provides up-to-date means by which to protect a trade mark. All of this better serves and reflects the modern business environment.

Minister Humphreys welcomed this development and said: “The reforms to Trade Mark system are intended to make national and EU trademark law fit for the challenges of business in the 21st Century. They include a wide range of innovations, both legal and technical, which will mean more efficiency for businesses. In practice, this translates into lower costs, greater predictability and more legal certainty.”

In Europe, a trade mark can be registered at national level at the Industrial Property (IP) offices of Member States, or at EU level as a European Union Trade Mark (EUTM) at the European Union Intellectual Property Office (EUIPO).

While SMEs have become important users of the European system, they still regularly tend to prefer national systems because they may not need their trade mark to be protected at EU level. The introduction of new and amended provisions modernises Irish Trade law and procedures, whilst aiming to achieve greater approximation with the EUTM system and facilitate cooperation between the IP offices of the Member States and the EUIPO.

The Minister for Training, Skills, Innovation, Research and Development, John Halligan T.D. said: “This modernisation of Irish and EU trade mark law is a positive step forward as it aims to ensure that the trade mark system continues to remain effective in meeting the needs of business as technology develops.”
The Statutory Instruments transposing the Directive comes into effect on 14 January 2019.

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Notes for Editors

Details of Statutory Instruments
Minister Humphreys signed four Statutory Instruments which transpose Directive (EU) 2015/2436 of the European Parliament and of the Council to approximate the laws of Member States relating to trade marks (Recast).
1. S.I. No. 561 of 2018 European Union (Trade Marks) Regulations 2018
These Regulations, made pursuant to the European Communities Act, 1972, amend and extend certain provisions of the Trade Marks Act 1996 to give statutory effect in the State to Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 amending Directive 2008/95/EC relating to trade marks and to certain provisions of Council Regulation (EU) 2017/1001 of 14 June 2017, on the European Union Trade Mark.

2. S.I. No. 562 of 2018 Trade Marks (Amendment) Rules 2018
This Statutory Instrument primarily transposes procedural matters laid down in Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 and thereby amends and extends certain provisions of secondary Irish Trade Mark legislation, namely, the Trade Marks Rules 1996.

3. S.I. No. 563 of 2018 Trade Marks Act, 1996 (Community Trade Mark) (Amendment) Regulations 2018
These Regulations amend certain technical provisions in the Community Trade Mark Regulations 2000 (S.I. 229/2000) (“the CTM Regulations”). The amendments are for the purpose of giving effect to technical changes in certain provisions and changes in terminology arising from Regulation (EU) No. 2017/1001 of the European Parliament on the European Union Trade Mark,
Under Council Regulation 2017/1001, it is no longer possible for applicants for EU trade marks to file their applications with a national office as all applications must now be filed directly with the European Union Intellectual Property Office. Therefore, the European Communities (Community Trade Mark) Regulations, 1996 (S.I. No. 10/1996), which provides for the charging of a receiving or handling fee for receiving and forwarding EU trade mark applications to the European Union Intellectual Property Office, is revoked in these Regulations.

4. S.I. No. 564 of 2018 Patents, Trade Marks And Designs (Fees) (Amendment) Rules 2018
This Statutory Instrument introduces amendments to the Patents, Trade Marks and Designs (Fees) Rules 2001 (S.I. No. 482 of 2001).