Intellectual Property Unit: Trademarks & Industrial Designs

Regulatory Impact Analysis – Singapore Treaty

Following the consultation process undertaken in 2009, Ireland proposes to ratify the Singapore Treaty on the Law of Trade Marks. A Regulatory Impact Analysis (PDF, 157KB) has been completed. The RIA takes full account of the responses received through the consultation process. Ireland already participates in the Trade Mark Law Treaty of 1994 and ratification of the Singapore Treaty would allow us to benefit from updates in any new Treaty provisions. Ireland’s legislation is broadly consistent with the requirements of the Treaty. However, a change to Section 29(4) of the Trade Marks Act, 1996 as well as some changes to secondary legislation will be required.

Reduced Community Trade Mark fees enter into force

Following a recent decision taken to reduce fees for Community Trade Mark registration, the European Commission published Commission Regulation (EC) No 355/2009 (PDF, 707KB) of 31 March 2009 amending Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) and Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community Trade Mark.

This, following entry into force on 1st May 2009, reduces the cost of having a Community Trade Mark by 40%.

Proposal for a Directive of the European Parliament and of the Council amending Directive 98/71EC on the legal protection of designs

The Proposal for a Directive of the European Parliament and of the Council amending Directive 98/71EC on the legal protection of designs concerns design protection of spare parts intended to restore the appearance of complex products such as motor vehicles. It aims to remove the option provided for in the original designs Directive adopted in 1998 (98/71/EC) by introducing a “repair clause” so that visible parts can be freely reproduced by independent parts manufacturers and marketed throughout the EU for repair purposes. In so doing, the Commission wish to complete the Internal Market in this sector which is currently fragmented in that just 9 of the Member States have opened up the after-sales market in spare parts for repair purposes. The proposal aims to increase competition and offer consumers greater choice as to the source of spare parts used for repair purposes while at the same time maintaining the overall incentive for investment in design.

Ireland favours the commission proposal and the Industrial Designs Act 2001 already provides for a repairs clause. The dossier was voted on in Plenary session of the European Parliament in December 2007. Parliament approved the Commission’s proposal with the significant amendment which proposes a transitional period of five years within which Member States would eliminate spare parts design protection. Council has yet to consider the European Parliament text in 2009.

EU Accession to Geneva Act of the Hague Agreement

The European Community acceded to the Geneva Act of the Hague Agreement which concerns the International Registration of Designs on the 18^th December 2006. Accession by the Community to the Geneva Act of Hague will now establish a link between the Community design system and the international design registration system established under the Geneva Act. As a result of this link, designers, through the filing of one international application under the Hague Agreement at WIPO, can now obtain protection for their designs, not only throughout the EU with the Community Design, but also in those countries which are members of the Geneva Act of the Hague Agreement.

Directive of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights

The purpose of this Directive is to harmonise the disparities between the national systems of penalties for infringements of intellectual property. In addition to the civil and administrative measures, which already exist, it is intended that this directive will, in appropriate cases, allow for criminal penalties to be a means of enforcing intellectual property rights.

Although discussions on the directive took place within Council in 2006, these were not conclusive. The main points of contention are whether the Community legislator has legal competence to arbitrate in the area of criminal sanctions and, whether there is a need for criminal measures to enforce Intellectual Property.

The European Parliament voted in favour of the measure at its plenary session in April 2007. Parliament proposed some important amendments to the Commission’s proposal e.g. the removal of patents from the scope of the directive. Follow-up negotiations within Council on the directive have not recommenced to date.