The Gazette 1996

GAZETTE

NOVEMBER 1996

Deduct ions f rom awards in personal injuries cases: addendum Under the heading 'The employer's right to deduct' the author cited a reserved judgment of Morris J, McGuinness v Reilly (unreported) (30 November 1992) wherein he held that an agreement between the ESB and the plaintiff requiring her to refund monies received during an absence from work due to a road traffic accident was not binding and that therefore she could not claim those monies as special damages. Two ex tempore decisions of the High Court have been brought to the author's attention which come to a different conclusion. In Boyce v Cawley (Costello J) (Sligo) (13 November 1991) the plaintiff was injured in a road traffic accident in January 1988 and was out of work as a result for a considerable period. He was employed as a linesman with the ESB and as a result of a comprehensive agreement negotiated between the ESB and trade unions in 1975 was entitled to receive advance payments during his period of absence from work. As a result he claimed special damages in the sum of £46,465 so as to refund his employer under the terms of the agreement. Costello J held: "Quite clearly the employee has a contractual obligation to repay these sums out of the damages, if he recovers damages, as he has in this case. That being the case it seems to me that once such an obligation exists the plaintiff has shown that he

Anti-counterfeiting Sections 92 to 95 of the Act provides expressly that fraudulent use or fraudulent application of a trademark is a criminal offence, and such criminal proceedings are within the jurisdiction of the Circuit Court. Sections 56 and 57 have given effect to the Council Regulation 40/94 in relation to the establishment of a Community trade mark system. Since 1 January 1996 it has been possible to file applications for a single EU-wide trade mark with the Community Trade Marks Office recently established in Alicante. This provides an alternative to the national filing system rather than a replacement. It operates under a unitary system. A trade mark will be refused registration generally only if opposed by the proprietor of an earlier national registration. For that reason it is crucial for national proprietors to monitor the Community trade mark applications. The advantages of a Community trade mark are principally the substantial cost saving by acquiring registration in 15 countries with a single application, and the considerable administrative advantages in processing only one application rather than 15 national applications. Also, the use required for a Community trade mark application, may be use in only one of the Member States, which would also assist any prospective applicant. It is understood that more than 40,000 community applications have been lodged since 1 January 1996 which is three times more than expected. It is possible to file a Community trade mark application through the national office in Dublin and it is then passed on to Alicante. COMMUNITY TRADE MARK

Organisation). Once an application for a trademark is made in the applicant's home country, an application for protocol protection can also be made in that country. If a claimed country does not issue a refusal to register within 18 months of the entry of the mark on the international register, the mark is deemed to be automatically registered. Although it has not been possible to comment on all the extensive changes which have been brought about the new Act, it would appear that for any practitioner involved in advising a prospective or existing trade mark proprietor, the important new provisions are: 1. The introduction of a service mark for the first time in this jurisdiction. 2. The extension of the type of trade mark which can be registered in Ireland to include shapes, smell, taste, sound, colour etc. 3. The widening of the protection granted to a trade mark proprietor against infringement. 4. The introduction of an alternative form of registration, being a Community trade mark system. *Ruth Finlay is a solicitor with Eugene F. Collins. • Cr iminal law advisory group Justice Minister Nora Owen has set up a new advisory group to review criminal law and procedure and to 'identify any perceived deficiencies or possible improvements in this critical area of the law'. The 11-strong committee will be chaired by barrister George Birmingham and includes solicitors Anne Fitzgerald and Brendan Heneghan, Robert Sheehan of the Chief State Solicitor's Office and 'a garda with court experience'. CONCLUSION

has a recoverable loss and has established, in my judgment, his entitlements to the claim for full damages".

MADRID PROTOCOL

Sections 58 and 59 of the Act incorporate the Madrid Protocol into Irish law. This protocol allows for an application designating a number of countries with which registration for a trade mark is sought to be filed with WIPO (the World Intellectual Property

A similar view was taken by Johnson J in ESB v McManus (17 July 1995). The author is grateful to Ann Hughes, Solicitor, for her assistance. • 327

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