The Gazette 1996

GAZETTE

Trade Marks Act, 1996 An Overview

by Ruth Finlay*

trade mark by providing that it may:

"consist of words (including personal names) designs, letters, numerals, or the shape of goods or their packaging ". This, therefore, now allows for the registration of shapes (to include a three dimensional object), sound, smell or taste. With regard to filing applications regarding sound, smell or taste, it is known that in other jurisdictions where such applications are already acceptable, there have been varying difficulties in providing graphical descriptions. For example, the registration of sound of course is not limited to music which is easily graphically described, but can be the sound of virtually anything. In the United States there is currently pending before the US Patent Office, an application for the sound of the start of a Harley Davidson motor cycle, and the applicants have had to file numerous revised applications providing a description of this trade mark, so as to satisfy the Patent Office. A graphical description of smell is probably more complex. There is an application pending in the UK for the registration of the scent of Chanel No 5. The new provision for registering the shape of a trade mark will allow the introduction of distinctive shapes such as the Coca Cola bottle which again in other jurisdictions has quickly obtained registration. Also geographical names are not directly prohibited from registration which was the case under the former Act. However, to obtain the registration of a geographical name it will now be necessary to produce evidence of the distinctive character of the trade mark through use.

Very significant changes have taken place recently in the law of trade marks with the introduction of the Trade Marks Act, 1996. This long-awaited legislation is, principally to give effect to the EU harmonisation provisions and to amend the existing national legislation which is over 30 years old. The Act became law on 16 March 1996 and subsequently came into force on 1 July 1996. It has repealed the Trade Marks Act, 1963. The objectives of the new legislation can be summarised as follows: 1. To make provision for registered trade marks implementing Council Directive No. 89/104/EEC on the approximation of trade mark laws. 2. To make provision for the Council Regulation No. 40/94 on the Community trade mark. 3. To give effect to the protocol to the Madrid Agreement concerning the international registration of trade marks and to certain provisions of the Paris Convention for the protection of industrial property. 4. To permit the registration of trade marks in relation to services. 5. To effect a general updating of the law on trade marks.

Ruth Finlay

However, the new definition introduced under Section 6(1) of the 1996 Act provides:

"A trade mark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another".

This gives effect to the provisions of Directive 89/104/EEC, providing a registration for trade marks in respect of services. In reality the Trade Marks Office in Dublin has been accepting applications for such registrations for some time on the basis that they would be dealt with only when the Directive was implemented into Irish law. This amendment is important for any commercial entity in the service industry in Ireland. Any company which fails to register a trade mark in respect of services may leave itself open to a competitor registering the same trade mark in Ireland or as a Community trade mark which would grant simultaneous protection in all EU countries.

NEW DEFINITION OF A TRADE MARK

One of the most fundamental amendments introduced by the Act is the greatly extended definition of a trade mark. Under the Trade Marks Act, 1963 a trade mark could only be registered in respect of goods for:

Colours of a trade mark can now be registered. However, as in other

"the purpose of indicating a connection in the course of trade".

Section 6(2) also extends the terms for a

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