The list, included in Section 6(2) of the Irish Trade Marks Act 1996, of signs which may constitute a trademark, is not fully inclusive. In particular it is to be noted that that sub-section is "without prejudice to sub-section (1) ..." of that Section. Sub-section (1) of Section 6 of the Act contains the definition of what may constitute a trademark. This provides that a "trademark" means any sign which is: - capable of being represented graphically; and -capable of distinguishing goods or services of one undertaking from those of other undertakings. A sign consisting of a colour or a combination of colours may constitute a trademark if it satisfies this definition.

The question is taken to relate to the reference in Article 16 to "existing prior rights". The rights of the owners of unregistered trademarks are protected in Irish law: - under the common law tort of passing off; and -by the provision in Section 10(4) of the Trade Marks Act 1996. This prohibits the registration of a trademark if its use in the State is liable to be prevented by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade, or by virtue of any other earlier right. Ireland considers that these provisions comply fully with, and satisfy, the requirements of the TRIPS Agreement.

The common law tort of passing off allows owners of unregistered marks to obtain relief for abuse of their marks through the Irish courts, principally by way of injunctive relief and damages, as appropriate. Passing off actions are the principal means provided by the Irish legal system for the defence of rights in unregistered marks. The case of C&A Modes vs. C & A (Waterford) Ltd. (1976), Irish Reports 198 confirms that owners of unregistered marks not trading in the State may seek and, as appropriate, obtain relief within the terms of this tort. A copy of a chapter on the tort of passing off from the leading general Irish textbook on this area of the law (Irish Law of Torts, McMahon and Binchy, 2nd Edition) is appended for information. The chapter referred to above gives a general indication of the factors to which the Irish courts will have regard in deciding a passing off case. Since the question of whether and to what extent, relief may be granted is determined by the courts on a case-by-case basis, referring to the differing facts of each particular case, it is not possible to give an exhaustive list of the elements which must be shown to sustain such a claim in the Irish courts. This applies to well-known marks as to other marks unregistered in Ireland. Future jurisprudence in this area which - as a distinctive topic - is relatively novel to the Irish courts may provide more specific guidance.

A presumption of likelihood of confusion is established by Section 10(1) of the Irish Trade Marks Act 1996, which prohibits, ab initio, the registration of a trademark if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services for which the earlier trademark is protected. This provision cannot be circumvented by a claim as to the absence of a likelihood of confusion.

Regarding the use of identical marks on identical products, while it would be considered presumptuous to anticipate the ruling of the courts in any such hypothetical case, it would appear highly likely that this would be found to foster confusion.

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.

The list, included in Section 6(2) of the Irish Trade Marks Act 1996, of signs which may constitute a trademark, is not fully inclusive. In particular it is to be noted that that sub-section is "without prejudice to sub-section (1) ..." of that Section. Sub-section (1) of Section 6 of the Act contains the definition of what may constitute a trademark. This provides that a "trademark" means any sign which is: - capable of being represented graphically; and -capable of distinguishing goods or services of one undertaking from those of other undertakings. A sign consisting of a colour or a combination of colours may constitute a trademark if it satisfies this definition.

The question is taken to relate to the reference in Article 16 to "existing prior rights". The rights of the owners of unregistered trademarks are protected in Irish law: - under the common law tort of passing off; and -by the provision in Section 10(4) of the Trade Marks Act 1996. This prohibits the registration of a trademark if its use in the State is liable to be prevented by virtue of any rule of law protecting an unregistered trademark or other sign used in the course of trade, or by virtue of any other earlier right. Ireland considers that these provisions comply fully with, and satisfy, the requirements of the TRIPS Agreement.

The common law tort of passing off allows owners of unregistered marks to obtain relief for abuse of their marks through the Irish courts, principally by way of injunctive relief and damages, as appropriate. Passing off actions are the principal means provided by the Irish legal system for the defence of rights in unregistered marks. The case of C&A Modes vs. C & A (Waterford) Ltd. (1976), Irish Reports 198 confirms that owners of unregistered marks not trading in the State may seek and, as appropriate, obtain relief within the terms of this tort. A copy of a chapter on the tort of passing off from the leading general Irish textbook on this area of the law (Irish Law of Torts, McMahon and Binchy, 2nd Edition) is appended for information. The chapter referred to above gives a general indication of the factors to which the Irish courts will have regard in deciding a passing off case. Since the question of whether and to what extent, relief may be granted is determined by the courts on a case-by-case basis, referring to the differing facts of each particular case, it is not possible to give an exhaustive list of the elements which must be shown to sustain such a claim in the Irish courts. This applies to well-known marks as to other marks unregistered in Ireland. Future jurisprudence in this area which - as a distinctive topic - is relatively novel to the Irish courts may provide more specific guidance.

A presumption of likelihood of confusion is established by Section 10(1) of the Irish Trade Marks Act 1996, which prohibits, ab initio, the registration of a trademark if it is identical with an earlier trademark and the goods or services for which the trademark is applied for are identical with the goods or services for which the earlier trademark is protected. This provision cannot be circumvented by a claim as to the absence of a likelihood of confusion.

Regarding the use of identical marks on identical products, while it would be considered presumptuous to anticipate the ruling of the courts in any such hypothetical case, it would appear highly likely that this would be found to foster confusion.