There is no provision in Irish trademark law under which the nature of goods or services, per se, can serve as an obstacle to the registration of a trademark which is to be applied to those goods or services.

The protection of well-known trademarks is provided for in the Irish Trade Marks Act 1996, as follows: -Section 10 prohibits the registration of a trademark in various circumstances if the mark is identical with, or similar to, an earlier trademark. Section 11 defines "earlier trademark" as including "a trademark ... entitled to protection under the Paris Convention as a well-known trademark" (Section 11(1)(c); -Section 61 provides that the proprietor of a trademark which is entitled to protection under the Paris Convention as a well-known trademark, may restrain by injunction the use in Ireland of a trademark which, or the essential part of which, is identical or similar to the proprietor's mark, in relation to identical or similar goods or services, where the use is likely to cause confusion. No standard has been established to determine whether a mark is well known. This is a matter which would fall to be determined in each individual case by taking account of all the relevant factors of the case. The question of the protection afforded by Irish law to the owners of unregistered trademarks generally, is addressed in the reply to question 2 above.

See reply to the follow-up questions from the United States to question 2 above.

See reply to question 5 above.

If the provision which is referred to in the question were invoked in any particular case, it would be for the Patents Office or the Court, in dealing with the matter, to decide whether the circumstances of non-use which were advanced by the proprietor justified the saving of the registration. There have not been any administrative or judicial decisions addressing this issue since the Act came into operation. Because this is a matter which would fall to be decided in the context of the particular case in which it arose, it is not possible to be definitive about the types of circumstances which would result in the saving of a registration. It is likely, however, that, in general, this provision might be successfully invoked, and the registration saved, in situations where the non-use was due to circumstances totally outside the control of the proprietor of the mark, for example where, because of an import or export ban, the proprietor was prevented from selling the goods bearing the mark.

Geographical indications are protected under Irish law by a number of measures. Under consumer protection law, it is an offence to apply a false or misleading trade description to any goods. "Trade description" is defined as including any indication, direct or indirect, as to the place or country in which the goods were produced or manufactured. In the Trade Marks Act 1996, there are two provisions relating to geographical indications: -Section 8(1)(c) prohibits the registration of a trademark which consists exclusively of a sign or indication which may serve, in trade, to designate the geographical origin of the goods or services in respect of which registration is sought; -Section 8(3)(b) provides that a trademark shall not be registered if it is of such a nature as to deceive the public as to the geographical origin of the goods or services in respect of which registration is sought. Ireland has also, by means of Statutory Instrument No. 148 of 1995, transposed into its law European Council Regulation 2081/92 which established a system for the registration and protection in the European Communities of designations of origin and geographical indications for agricultural products and foodstuffs. Two Statutory instruments, No. 300 of 1995 and No. 60 of 1996, govern the definition, description and presentation of spirit drinks. The reference in question 12 below to the absence of an unfair competition statute in Ireland is not correct. Ireland has two Acts dealing with competition: the Competition Act 1991 (No. 24 of 1991), and the Competition (Amendment) Act 1996 (No. 19 of 1996). In summary, this legislation provides that, since 1 October 1991, all agreements between undertakings, decisions by associations of undertakings and concerted practices which have as their object or effect, the prevention, restriction or distortion of competition in trade in any goods or services in the State or in any part of the State are prohibited and void.

The Industrial and Commercial Property (Protection) Act and Rules 1927, Part III provides protection for industrial designs in Ireland. (a)As mentioned in response to the first part of this question, industrial designs are protected under the Industrial and Commercial Property (Protection) Act and Rules 1927. Other designs, of a more artistic nature or of a non-industrial nature may receive protection under Irish copyright law. Section 64(2) of the 1927 Act provides that, where copyright subsists in an artistic work defining a design, such design will not be registered without the consent of the copyright owner. (b)To be registered under the terms of the Industrial and Commercial Property (Protection) Act 1927, designs must be new or original. The concept of relative novelty is employed in the Patents Office, which maintains the designs register. Upon receipt of an application, a search of the domestic register is undertaken to see if similar designs have already been applied for. The application is then examined and if it meets the criteria of novelty or originality, registration then ensues. Certificates of registration are issued upon completion of the search and examination and registration system. (c)The 1927 Act provides for an exclusive right to apply the design to any article in any class for which the design is registered and the period of protection is 15 years broken down into three periods of five years. (d)Injunctions are sought through the courts in line with the common law tradition. In addition, Section 150 of the 1927 Act deals with offences under the Act. (e)It is not clear what the intention of this question is. The 1927 Act provides for no exceptions to protection.

Registration of the pattern and ornament of textile designs takes place under Irish law. This is, in effect, registration of the design as such.

Sections 8(3) and 8(4) of the Irish Trade Marks Act 1996 prevent the registration of a trademark if the trademark is, inter alia, contrary to public policy or if its use is prohibited by any enactment or rule of law. Contrary to what is suggested by the question, these provisions do not prevent the registration of the mark where the goods are prohibited by public policy or by law. Since the nature of the goods or services to which the trademark is to be applied is not at issue in Sections 8(3) or 8(4), the question of compliance or otherwise of these provisions with Article 15.4 of the TRIPS Agreement does not arise.

See reply to question 8 above.

Iceland recognizes a right of priority on the basis of an earlier trademark application filed in another WTO Member by a national of a WTO Member. This recognition is explicitly stated in Regulations No. 436/1990 and No. 287/1996 (see document IP/N/1/ISL/1) and in an amendment made earlier this year to Article 30 of the Trade Marks Act. Members will find this amendment in Part II of Act No. 36/1996, as notified (document IP/N/1/ISL/I/1).

The nature of the goods or services to which a trademark is to be applied may not serve as an obstacle to the registration of the mark under Icelandic law.

Actual use of a trademark is not a condition for filing an application for registration. According to the Icelandic Trademark Act, persons, firms or companies can obtain an exclusive right to use a trademark by registration, use or if the mark has become established.

Colour marks fall under the scope of Article 1(2) of the Icelandic Trademark Act. However, a trademark cannot be registered if it is not suitable for distinguishing the goods of the proprietor from those of others, according to Article 13. There are many figurative marks registered in colour in Iceland but the distinctiveness of the colours as such is uncertain.

According to Article 1 of the Icelandic Trademark Act in English translation, trademarks may consist of any type of symbol which can be "printed". More precise translation would be "published in print" or "represented graphically" as in the trademark laws of the other Nordic countries. The interpretation of this provision in Iceland is that it is necessary to be able to show a trademark in print so that it can be published. But it is not a condition that the trademark as such is printed. It is for example possible to register the shape of goods or of their packaging if the applicant has provided a picture of the mark. The Icelandic language does not have a precise word for describing "represented graphically"; the word "printed" has been used instead. A proposal for a new Trademark Act has now been prepared. The proposal is expected to be approved by Parliament before the end of this year and enter into force on 1 January 1997. Article 1 has been changed in the proposed new law and the condition is that a sign shall be visually perceptible.

In case of the use of an identical sign for identical goods or services, a likelihood of confusion is presumed according to the Icelandic Trademark Act. The proprietor does not have to prove likelihood of confusion in each particular case where an identical sign is used for identical goods or services. This follows from Article 4 and Article 6 of the Trademark Act and also from Article 14(6).

There is no specific provision in the Icelandic Trademark Act relating to well-known marks. However, this does not mean that well-known marks are not afforded protection in the Act in accordance with TRIPS Article 16.3. According to Article 3(3), it is prohibited to use any mark which is liable to be confused with a trademark already in use in Iceland or abroad if the one who intends to use the mark knows the mark or ought to have known it. According to Article 14(7), a trademark shall not be registered if it is liable to be confused with a mark which was in use abroad on the filing date of the application and remains in use, provided that at the date of the application the applicant knew the mark or ought to have known it. This provision provides for broad protection for marks in other countries.

Iceland does not yet have a new Trade Mark Act. A proposal for such a new Act is, however, being submitted to Parliament later this week in the expectation that it can enter into force on 1 January 1997. The proposal as submitted to Parliament contains specific provisions regarding the protection of well-known marks. In providing protection for unregistered well-known marks, Article 14(7) of the proposed new Act stipulates that a trademark shall not be registered if there is any likelihood of confusion with a trademark that was considered well known in Iceland when the application for registration was filed. This applies also to products or services which are not similar to those in respect of which a trademark is registered, in accordance with the provisions of Article 16.3 of the TRIPS Agreement. The new Trade Mark Act will be notified to the TRIPS Council at the appropriate time.

Article 25a was introduced into the Icelandic Trademark Act when it was amended by Act No. 67/1993, of 7 May 1993, which entered into force on 1 January 1994. The explanatory text in Act No. 67/1993 contains some examples of circumstances or situations that would not constitute "valid reasons" for continued registration despite non-use of a trademark. These examples are lack of funds, lack of employees, difficulties in obtaining material or difficulties in marketing the product. If however these difficulties are due to circumstances or situations which the proprietor cannot control, for example acts of war (i.e. force majeure), these could be considered valid reasons. No administrative or judicial decisions addressing this issue have been passed to date, and none can be expected before 1999 at the earliest.

Article 25a was introduced into the Icelandic Trade Mark Act by an amendment which entered into force on 1 January 1994. Iceland does not expect any decisions before 1999 for the simple reason that the five-year period of non-use stipulated in Article 25a will not have passed before that time.