S.I. No. 558/2024 - Trade Marks (Madrid Protocol) (Amendment) Regulations 2024

Notice of the making of this Statutory Instrument was published in

“Iris Oifigiúil” of 25th October, 2024.

I, EMER HIGGINS, Minister of State at the Department of Enterprise, Trade and Employment, in exercise of the powers conferred on me by section 59 of the Trade Marks Act, 1996 (No. 6 of 1996) (as adapted by the Business, Enterprise and Innovation (Alteration of Name of Department and Title of Minister) Order 2020 ( S.I. No. 519 of 2020 ) and S.I. No. 165 of 2024 - Enterprise, Trade and Employment (Delegation of Ministerial Functions) Order 2024,) hereby make the following regulations with respect to which, pursuant to section 3(3) of that Act, a draft has been laid before both Houses of the Oireachtas and a resolution approving of the draft has been passed by each House:

1. These Regulations may be cited as the Trade Marks (Madrid Protocol) (Amendment) Regulations 2024.

2. Regulation 21(1)(a) of S.I. No. 346/2001 Trade Marks (Madrid Protocol) Regulations, 2001 is amended –

(i) by the substitution of “all the goods and services” for “at least some of the goods and services”.

3. The Form No. 2M set out in Part 1 of the Schedule to these Regulations is substituted for the Form No. 2M set out in Part 2 of the Schedule to the 2001 Regulations.

SCHEDULE

Part 1

Regulation 21 (2)

Form No. 2M

APPLICATION TO CONTROLLER UNDER REGULATION 21(2) OF TRADE MARKS (MADRID PROTOCOL) REGULATIONS, 2001.

Reference No. of Applicant or

Authorised Agent...............

Application is hereby submitted to the Controller to note in the Register of Trade Marks, in relation to the registered trade mark indicated below, the particulars of the international registration indicated below.

1. Applicant(s)

Name:

Nationality and Address:

2. Registered Trade Mark Agent Authorised

The following has been appointed to act on behalf of the Applicant(s) in all proceedings connected with this application for registration and any proceedings arising subsequent to registration.

Name of Agent

Address

3. National Registration No.

4. International Registration No.

5. Goods/Services

□ All

□ Some – please specify:

6. Signature (the application may be signed by or on behalf of the Applicant(s) or by the Agent named at 2).

Date:

To: The Controller of Intellectual Property,

Intellectual Property Office of Ireland,

Government Offices,

Hebron Road,

Kilkenny.

GIVEN under my hand,

15 October 2024

EMER HIGGINS

Minister of State at the Department of Enterprise, Trade and Employment

EXPLANATORY NOTE

(This note is not part of the Instrument and does not purport to be a legal interpretation.)

These Regulations amend S.I. No. 346/2001 - Trade Marks (Madrid Protocol) Regulations, 2001 to provide that the replacement of an earlier national or regional trade mark registration by an international trade mark registration can be partial, namely for only some of the goods and services covered by the national or regional trade mark registration to be listed in the international registration.

These Regulations also provide for a new Form No. 2M to allow the holder of an international trade mark to select a full or partial replacement of the goods or services to which the international trade mark registration applies. Form No. 2M is also amended to reflect the new name of the ‘Controller of Intellectual Property’ and the change of name of the Office to the ‘Intellectual Property Office of Ireland’.