Trade Marks Act, 1996

THIRD SCHEDULE

Transitional Provisions

Section 100 .

Introductory

1. (1) In this Schedule—

“commencement” means the commencement of this Act; “existing registered mark” means a trade mark or certification trade mark, within the meaning of the Act of 1963, registered under that Act immediately before commencement;

“the former register” means the register of trade marks kept under the Act of 1963;

“the old law” means the Act of 1963 and any other enactment or rule of law applying to existing registered marks immediately before commencement;

“the new register” means the Register of Trade Marks kept under this Act.

(2) For the purposes of this Schedule an application shall be treated as pending at commencement if it was made but not finally determined before commencement.

Existing registered marks

2. (1) Existing registered marks (whether registered in Part A or Part B of the former register) shall, on commencement, be deemed to be transferred to the new register and shall have effect, subject to the provisions of this Schedule, as if registered under this Act.

(2) Subparagraph (1) shall apply to all entries relating to existing registered marks as it applies to the marks themselves.

(3) Entries indicating that existing registered marks are associated with other marks shall cease to have effect on commencement.

(4) A condition entered on the former register in relation to an existing registered mark immediately before commencement shall cease to have effect on commencement; and proceedings under section 41 of the Act of 1963 (application to expunge or vary registration for breach of condition) which are pending at commencement shall be dealt with under the old law (with any necessary alteration being made in the new register).

(5) A disclaimer or limitation entered on the former register in relation to an existing registered mark and in force immediately before commencement shall be deemed to be transferred to the new register and have effect as if entered on the new register in pursuance of section 17 .

Effects of registration: infringement

3. (1) Sections 13 to 16 (effects of registration) apply in relation to an existing registered mark as from commencement and section 18 (action for infringement) applies in relation to infringement of an existing registered mark after commencement, subject to subparagraph (3).

(2) Without prejudice to the operation of the Interpretation Act, 1937 , the old law shall continue to apply in relation to infringements committed before commencement.

(3) It shall not be an infringement of—

(a) an existing registered mark, or

(b) a registered trade mark of which the distinctive elements are the same or substantially the same as those of an existing registered mark and which is registered for the same goods or services,

to continue after commencement any use which did not amount to infringement of the existing registered mark under the old law.

Infringing goods, material or articles

4. Section 20 (order for delivery up of infringing goods, material or articles) shall apply to infringing goods, material or articles made before, as well as after, commencement.

Rights and remedies of licensee or authorised user

5. (1) Section 34 (general provisions as to rights of licensees in case of infringement) shall apply to licences granted before commencement, but only as regards infringements committed after commencement.

(2) Paragraph 13 (6) of the Second Schedule shall apply only in relation to infringements committed after commencement.

Assignment &c. of registered trade marks

6. (1) Section 28 (assignment or other transmission of registered mark) shall apply only in relation to transactions and events occurring after commencement in relation to an existing registered mark; and the old law shall continue to apply in relation to transactions and events occurring before commencement.

(2) An application for registration under section 33 of the Act of 1963 (registration of assignments and transmissions) which is pending at commencement shall be treated as an application for registration under section 29 and shall proceed accordingly, except that the Controller may require the applicant to amend the application so as to conform with the requirements of this Act.

(3) An application for registration under section 33 of the Act of 1963 which has been determined by the Controller but not finally determined before commencement shall be dealt with under the old law.

(4) Where, before commencement, a person became entitled by assignment or transmission to an existing registered mark but did not make an application to register his title, any application for registration after commencement shall be made under section 29 .

(5) Any entry falling to be made in the old register as a result of subparagraph (3) shall be treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

Licensing of registered mark

7. (1) Sections 32 and 33 (2) (licensing of registered trade mark: rights of exclusive licensee against grantor's successor in title) shall apply only in relation to licences granted after commencement; and the old law shall continue to apply in relation to licences granted before commencement.

(2) Existing entries under section 36 of the Act of 1963 (registered users) shall be deemed to be transferred on commencement to the new register and shall have effect as if made under section 29 .

(3) An application for registration as a registered user which is pending at commencement shall be treated as an application for registration of a licence under section 29 (1) and shall proceed accordingly, except that the Controller may require an applicant to amend the application so as to conform with the requirements of this Act.

(4) An application for registration as a registered user which has been determined by the Controller but not finally determined before commencement shall be dealt with under the old law, and any entry falling to be made in the old register as a result of this subparagraph shall be treated for the purposes of paragraph 2 as an entry relating to an existing registered mark.

(5) Any proceedings pending on commencement under section 36 (7) or (9) of the Act of 1963 (variation or cancellation of registration of registered user) shall be dealt with under the old law (with any necessary alteration being made to the new register).

Pending applications for registration

8. (1) The provisions of this paragraph apply where an application for registration of a trade mark, within the meaning of the Act of 1963, is pending at commencement.

(2) Subject to paragraph 9, the application shall be dealt with (and the registrability of the mark shall be determined) in accordance with the old law and any mark which, on that determination, falls to be registered shall be treated for the purpose of this Schedule as an existing registered mark.

(3) Provision may be made by rules to enable pending applications for registration to continue in accordance with the procedural provisions of this Act.

Conversion of pending application

9. (1) This paragraph applies if an application which was pending at commencement has not been advertised under section 26 of the Act of 1963.

(2) If, in case where subparagraph (1) applies, the applicant gives notice to the Controller requesting that the registrability of the mark be determined in accordance with the provisions of this Act, the Controller shall deal with the application accordingly.

(3) Notice under subparagraph (2) shall be in the prescribed form, shall be accompanied by the appropriate fee and shall be given no later than six months after commencement.

(4) Notice given under subparagraph (2) shall be irrevocable and the application to which the notice relates shall be treated as if it were made at commencement and as if the date of filing were the date of commencement.

Duration and renewal of registration

10. (1) Section 47 (1) (duration of original period of registration) applies in any case where the registrability of a trade mark is determined in accordance with the provisions of this Act; and the old law applies in any other case.

(2) Sections 47 (2) and 48 (renewal of registration) apply when the renewal falls due at or after commencement; and the old law applies in any other case.

(3) For the purposes of this paragraph it is immaterial when the application is made or when the fee is paid.

Revocation for non-use

11. (1) An application under section 34 of the Act of 1963 (removal from register or imposition of limitation on ground of non-use) which is pending at commencement shall be dealt with under the old law (with any necessary alteration being made to the new register).

(2) Subject to subparagraph (3), an application under section 51 (4) on the grounds specified in section 51 (1) (a) or (b) (revocation for non-use) may be made in relation to an existing registered mark at any time after commencement.

(3) No application for the revocation of the registration of an existing registered mark which was registered by virtue of section 35 of the Act of 1963 (defensive registration of well-known trade marks) may be made under section 51 until more than five years after commencement.

Application for rectification &c.

12. An application under section 40 or 42 of the Act of 1963 (rectification or correction of the register) which is pending at commencement shall be dealt with under the old law (with any necessary alteration being made to the new register).

Validity of existing registered marks

13. The old law shall continue to apply as regards the validity of the registration of an existing registered mark; and no objection to the validity of such a registration may be taken on the ground of failure to satisfy the requirements of this Act.

Certification marks

14. (1) If, at commencement, a request is pending for the amendment of the regulations governing the use of an existing certification mark, that request shall be dealt with under the old law.

(2) In subparagraph (1) “existing certification mark” means a certification trade mark registered under the Act of 1963 immediately before commencement.

Pre-commencement applications in respect of trade marks for services.

15. (1) If, at any time between 1st January, 1993 and commencement, an application was made to the Controller for the registration of a trade mark in respect of services, this Act shall have effect, subject to subparagraph (2), as if—

(a) the application were made at commencement; and

(b) the date of filing were the date of commencement;

and the Controller shall deal with the application accordingly.

(2) Section 20 (3) of the Act of 1963 (separate applications for registration of identical trade marks in respect of goods, etc.) shall apply in relation to applications falling within subparagraph (1)

(a) with the substitution of a reference to services for the reference to goods or a description of goods; and

(b) with the omission of the proviso.

Acts Referred to

Copyright Act, 1963

1963, No. 10

Consumer Information Act, 1978

1978, No. 1

Continental Shelf Act, 1968

1968, No. 14

Interpretation Act, 1937

1937, No. 38

Maritime Jurisdiction Act, 1959

1959, No. 22

Partnership Act, 1890

53 & 54 Vict., c. 39

Patents Act, 1992

1992, No. 1

Petty Sessions (Ireland) Act, 1851

14 & 15 Vict., c. 93

Public Offices Fees Act, 1879

42 & 43 Vict., c. 58

Solicitors Act, 1954

1954, No. 36

Statute of Limitations, 1957

1957, No. 6

Trade Marks Act, 1963

1963, No. 9