Privacy Statements and Cookie Policies on Websites-the Essentials in Ireland

privacy-statement

Have you noticed those annoying website “cookie” notices popping up nearly everywhere on the  internet?

Well, there is good reason for them.

They are a legal requirement in Ireland and Europe and breaches of the law covering data protection-the Data Protection Acts 1988 and 2003 and Statutory Instrument 336 of 2011-can lead to fines of up to €100,000 and deletion of the data collected via the website.

(Statutory instrument 336 of 2011 deals with European Communities (Electronic Communications Networks and Services)(Privacy and Electronic Communications) Regulations 2011.)

Privacy statement v privacy policy

Note that there is a significant difference between a privacy statement and a privacy policy.

A privacy statement is a legal requirement for all websites in Ireland and the EU. It is a public statement of how the owner/operator of the website applies the 8 data protection principles to data processed on its website.

A privacy policy, on the other hand, sets out how the operator/owner of the website applies the 8 principles to the way in which it processes data across the organisation. This data would include employee, third party, and customer data.

Website cookies

Regulation 5 of SI 336 of 2011 covers the use of “cookies” by website operators/owners. A cookie in this context is a small file that can be downloaded to your computer or phone when you visit certain websites. This regulation provides

  1. that you as website visitor should be told why this is being done and
  2. that you should be given the opportunity to give your consent or decline.

This, then, and a prosecution by the Data Protection Commissioner and a potential fine of €100,000 is why you will have seen these “cookie consent” notices popping up on websites.

If you operate a website and it uses cookies or web beacons, or collects personal data, or collects ip addresses or emails, your website needs a privacy statement.

What information should be contained in a privacy statement?

  1. The clear identity and contact details for the operator of the website
  2. The purpose of collecting the data
  3. The right of access to any personal data collected
  4. The right of rectification or erasure
  5. If the data collected can be released to a 3rd party-this should be made clear
  6. The extent of the data being collected
  7. Whether the website uses cookies and the extent
  8. If cookies are used, the visitor should be able to consent to their use or opt out.

If your privacy statement contains the information set out above your website should be compliant with the law in this area and the requirements of the Data Protection legislation in Ireland.

However, you can also go a step further by providing the following information:

  • Your commitment to maintaining security of any data collected
  • Some form of complaints resolution mechanism should be considered
  • How long you retain data, for example credit card information could be deleted once a transaction is complete
  • That the data collection is not excessive but only relevant data is collected
  • How data subjects can update their information to ensure the data that is held is accurate.

Where to put the privacy statement

It should be readily accessible from any page on your website, not just on your home page, as a huge amount of traffic visiting your site may visit your site through landing on a page other than your home page.

What you should do now

If you are responsible for a website or blog you should ensure that you have a legally compliant and robust privacy statement on your site.

I can provide you with one-you can contact me here.

5 Illegal Uses of the Internet and How To Combat Them

illegal-uses-of-internet

The internet has caused a revolution in the way we live and communicate.

But businesses can be the victims of illegal activity on the net.

What are these illegal activities? What can you do about them if your business is a victim?

There are 5 common illegal activities:

  1. Hacking
  2. Harvesting
  3. Hypertext links and “deep linking”
  4. Framing
  5. Trade mark infringements and meta tags.

1. Hacking

Hacking is the use of a person’s computer skills to break into a computer system or website to create damage or steal information.

Hacking is difficult to prosecute but The Criminal Damage Act 1991 makes provision for this.

The Criminal Damage Act 1991 covers damage to property and property includes data; damage can include altering, corrupting and erasing data.

It also covers the offence of threatening to damage property so even an unsuccessful hacker can be charged under this section.

Another section covers the situation where a person has in their possession the means to hack-again they may be charged under this section even though they have caused no damage to data.

The act also includes an offence of unauthorised access and this offence relates only to computer crime.

The act also provides very extensive powers to search and arrest under this legislation.

The Criminal Justice (Theft and Fraud Offences) Act 2001 can also be used to prosecute as it provides that it is an offence to use a computer to make a gain or cause a loss to another.

This is an example of our ordinary legislation being amended to accommodate the reality of internet law in the 20th century.

Other pieces of legislation which can be used to deal with hacking include:

  • The Data Protection Acts, 1998 and 2003
  • The Electronic Commerce Act, 2000
  • The Copyright and Related Rights Act, 2000

2. Harvesting

This is the operation of collecting email addresses for the purposes of spamming.

This clearly is in breach of the Data Protection act 1988 and 2003.

If the data harvested is not personal data it is conceivable that the harvesting may be an offence under the Criminal Damage Act, 1991.

3. Framing

Framing is the division of a website into real time “frames”. This allows the use of the website owner’s text and material to be displayed next to 3rd party material in the same window.

This may be a breach of copyright law.

4. Meta Tags and Trade Marks Infringements

Meta tags are the tags hidden in the html (or other) code of a website. They are not visible to the reader of the page.

These meta tags can infringe the trade marks of a competitor and 3rd parties intellectual property rights.

5. Hypertext Links and Deep Linking

We are all familiar with hyperlinks to other websites. On this page for example there are many hyperlinks to www.IrishStatuteBook.ie

However linking to other websites can be illegal and infringe the rights of the website owner to which you link.

It is possible that the Copyright and Related Rights Act, 2000 provides protection to the website owner to prevent deep linking to his/her website.

Another problem that can arise in this regard is the use of a registered trade mark of the target site which may also be a breach of the intellectual property rights of the target site. This type of case occurred in the United States when Playboy™ sued a porn site for using the Playboy™ logo to link to its website.

This type of breach could be pursued in Ireland based on

  • Copyright infringement
  • Breach of database rights
  • Trademark infringement
  • Passing off.

Conclusion

It’s clear from the above that you could unwittingly leave yourself open to a claim for damages.

You might as easily be a victim.

Consult a solicitor if you’re in doubt.
By Terry Gorry
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What Is Intellectual Property and Why Should Your Small Business Care?

intellectual property law

You might have heard the phrase “intellectual property” bandied about.

And you might have thought: “well, that doesn’t affect me-it’s only big companies that need to worry about that”.

Think again.

Intellectual property can, on occasion, be the greatest single asset that a company owns.

The growth of the value of intellectual property such as trade marks, copyright and domain names has led many savvy small business owners to look at their own business and its intellectual property.

Intellectual property, like any other form of property, can be bought and sold in a similar fashion.

What is intellectual property?

Intellectual property includes trade marks, copyright, passing off, counterfeit goods, confidential information and domain names.

There have been many high profile legal battles concerning intellectual property. A high profile battle in Ireland involved Sean Dunne, the property developer and the ownership of the D4Hotels domain name.

This involved a legal dispute between Dunne and a former manager as to who was entitled to ownership of the domain name.

It is understood that a significant sum of money was involved in the resolution and settlement of this dispute.

Karen Millen and Dunnes Stores

The fashion designer, Karen Millen, also brought legal proceedings against Dunnes Stores in relation to the unregistered design of garments that Dunnes were selling in their stores.

This was interesting from an intellectual property viewpoint as Karen Millen did not register a trade mark for the design in question. However the court recognised her rights in the unregistered trade mark.

McDonalds are another high profile company who guard their intellectual property rights jealously.

And it is equally important for small business in Ireland to do likewise as for some companies, the only significant asset that they own is their intellectual property right be it a trade name, a domain name or copyright in written material or photographs.

Domain names

It is important to note that whilst the registration of a domain name is a simple enough process, it is prudent for the owner of a domain name to also register the same name as a trade mark.

Because you can own a domain name but not own the trade mark for that same formation of words.

Intellectual property covers a wide spectrum of commercial activity. It may well be the case that your business has some valuable intellectual property which you may not recognise.

So take a look around your business at your trade name, business name, trade marks, copyright material, domain name(s) and see if you need to take steps to protect it.
By Terry Gorry
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How to Protect Your Domain Name(s)

domain-name-law

Your domain name may be one of the most valuable pieces of intellectual property your business has.

And protecting your asset is a smart, and essential, strategy.

Domain name disputes are becoming an increasing problem for business with the proliferation of website, eCommerce and new businesses going online and trading on the internet.

And infringements occur regularly in the shape of trade mark disputes, cyber squatting and related issues.

It is crucial for any business to have a smart commercial strategy regarding their trade marks and domain names.

Domain Name Basics

Domain names can usually be registered quickly and inexpensively. Top Level Domain(TLD) is the suffix such as ie or uk or fr-it denotes the country.

Within TLDs there are 2 sub-categories

1. Generic TLDs (gTLD) such as .com,.net,.org,.biz. These domain names do not have to be distinctive and do not indicate geographic origin.

2. Country Code TLDs (ccTLD) which are administered by the domain registry of the relevant country; in Ireland this is IE Domain Registry ltd (www.iedr.ir).

In Ireland you must display a real and substantive connection with Ireland when applying for a domain name before iedr will approve your application.

You may also need to show a connection with the business that you are referring to in your domain name application.(Check out IEDR.ie)

Domain name disputes

Domain name disputes have been resolved generally in one of 2 ways-either in court or by reference to the alternative dispute resolution procedure provided by ICANN.

This body has adopted the UDRP (Uniform Domain Name Dispute Resolution Policy) which apples to generic TLD name disputes.

Some country code administrators have incorporated this procedure into their registration agreements.

This UDRP procedure has been very successful and has resolved many domain name disputes; however it does not provide for damages and so a company that needs immediate injunctive relief and damages will be advised to head for court rather than the UDRP procedure.

Generally the relief provided is simply to have the domain name transferred to the plaintiff.

To win relief at the UDRP you will need to show 3 things

1. the complainant must show that the name is confusingly similar to the name in which the complainant has rights
2. the existing holder has no legitimate interest or rights in the domain name
3. the complainant must show bad faith on the part of the holder of the domain name.

The holder of the domain name can reject the complainant’s case if he could show bona fide use of the name, non commercial use with no intention to profit, evidence that the respondent is known by the domain name.

UDRP also recognise the phenomenon of ‘Reverse Domain Name Hijacking’ which is the occasion when the plaintiff uses the policy in bad faith in an attempt to deprive a registered holder of a domain name of that name.

In ccTLD disputes the domain name registry require further proofs before they cancel or transfer a domain name.

They would need to see some aspect of passing off or trade mark infringement also.

These disputes can be litigated before the appropriate courts as occurred in Jan. 2009 when Sean Dunne, Property Developer went to court in a dispute to obtain D4Hotels.com from John Brennan who had registered the domain name in his own name whilst running D4 hotels group in Ballsbridge.

The IEDR introduced a dispute resolution procedure in 2003 in respect of .ie disputes which you can learn more about on their website.

Conclusion

It is clearly impossible to register all domain names and trade marks which they may feel they need to protect their intellectual property.

Sometimes it is more cost effective to purchase the name from the ‘offender’ rather than go to court or UDRP.

It is important to recognise the difference between trade marks and domain names and it is prudent for a company to register each of their domain names as a trade mark.

Because otherwise their domain name could be registered as a trade mark by a 3rd party.
By Terry Gorry
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Copyright Law in Ireland-A Quick and Easy Guide to Copyright Law

copyright-law-ireland-2

What is copyright? Can you register copyright? What steps can you take if your copyright has been infringed?

Copyright is the legal term, which describes the rights given to authors/creators of certain categories of work.

Copyright protection extends to the following works:

  1. Original literary, dramatic, musical or artistic works sound recordings, films, broadcasts, cable programmes
  2. the typographical arrangement of published editions, computer programmes,
  3. original databases.

The owner of copyright is the author and within the Copyright and Related Rights Act, 2000 the author has a very specific definition

21.—In this Act, “author” means the person who creates a work and includes:
(a) in the case of a sound recording, the producer;
(b) in the case of a film, the producer and the principal director;
(c) in the case of a broadcast, the person making the broadcast or in the case of a broadcast which relays another broadcast by reception and immediate retransmission, without alteration, the person making that other broadcast;
(d) in the case of a cable programme, the person providing the cable programme service in which the programme is included;
(e) in the case of a typographical arrangement of a published edition, the publisher;
(f) in the case of a work which is computer-generated, the person by whom the arrangements necessary for the creation of the work are undertaken;
(g) in the case of an original database, the individual or group of individuals who made the database; and
(h) in the case of a photograph, the photographer

 

For example a photographer is the owner in the case of a photograph.

However, as copyright is a form of property, the right may be transferred to someone else, for example, to a publisher. Where an employee in the course of employment creates the work, the employer is the owner of the copyright in the work, unless an agreement to the contrary exists.

Copyright is a property right and the owner of the work can control the use of the work, subject to certain exceptions.

The owner has the exclusive right to prohibit or authorise others to undertake the following:

  1. copy the work
  2. perform the work
  3. make the work available to the public through broadcasting or recordings
  4. make an adaptation of the work.

Copyright takes effect as soon as the work is put on paper, film, or other fixed medium such as CD-ROM, DVD, Internet, etc.

No protection is provided for ideas while the ideas are in a persons mind; copyright law protects the form of expression of ideas, not the ideas themselves.

Rights related to Copyright

Rights are not restricted just to the creators of the works themselves but certain other rights may apply.

For example, the record company has certain rights in a sound recording of the performance of a song, in addition the author(s) of the lyrics and the music will also have certain copyrights. Similarly performing artists have certain rights in their performances. The legislation also provides for moral rights, such as the right to be acknowledged as the author of a particular work and also the right to object to derogatory treatment of that work.

The primary legislation governing copyright in Ireland is the Copyright and Related Rights Act, 2000 (No. 28 of 2000).

Copyright Protection

In Ireland, there is no registration procedure for owners of a copyright work.

Basically the act of creating a work also creates the copyright, which then subsists in the physical expression of the work.

Copyrights are protected by law and illegal use of these rights can be contested in the Courts, the technical term for this misuse is infringement.

The legislation provides for criminal offences and consequently infringers could face both civil liability and criminal convictions.

Professional advice should be sought by copyright owners with regard to the options and the remedies available where infringement of their work occurs.

It is most important that the originator of a work can show subsequently when the work and the consequential copyright were created as it may be necessary to commence or defend infringement proceedings, at some later stage.

One way of doing this is to deposit a copy of the work with an acknowledged representative who may be a bank or solicitor in such a way as to allow the date and time of the deposit to be recorded or notarised.

Alternatively, one may send a copy of the work to oneself by registered post (ensuring a clear date stamp on the envelope), retaining the original receipt of posting and leaving the envelope containing the copyright work unopened thus establishing that the work existed at that date and time.

The Copyright Notice and Symbol ©

It is important to show that copyright is claimed in a work. Works should be clearly marked to show who the copyright owner is and the date from which copyright is claimed.

The internationally recognised symbol © is normally used to indicate that a work is protected by copyright.

Example:

© Copyright Terry Gorry 2013.

Examples of more detailed copyright notices may be found in published versions of literary works. The inclusion of a copyright notice does not legally constitute proof of ownership, but does indicate a claim to copyright, which may prove useful if it is necessary to defend that claim or to deter possible infringement.

It is usually necessary to obtain permission to use copyright material. Persons with a copy of a work can look for an indication on the work regarding copyright. This can assist making contact with the author/ original creator of the work in order to obtain their permission to use the work for any act, which is prohibited by copyright legislation.

Length of Copyright Protection

The duration of copyright protection varies according to the format of the work. In respect of the following works the term of protection is:

Literary, dramatic, musical and artistic works

Copyright protection expires 70 years after the death of the author/creator.

Films

Copyright protection expires 70 years after the last of the following dies, the director, the author of the screenplay, the author of the dialogue of the film, or the author of the music composed for use in the film.

Sound recordings

Copyright protection expires 50 years after the sound recording is made or if it is made available to the public then 50 years from the date it was made available to the public.

Broadcasts

Copyright protection expires 50 years after the broadcast is first transmitted.

The typographical arrangement of a published edition

Copyright protection expires 50 years after the date it is first made available to the public.

Computer-generated works

Copyright protection expires 70 years after the date it is first made available to the public.

Chapter 3 of the Copyright and Related Rights Act, 2000 (No. 28 of 2000) deals in greater detail with the duration of copyright in Ireland.

Benefits of Copyright Protection

Copyright protection provides a vital incentive for the creation of many intellectual works.

Without copyright protection, it would be easy for others to exploit these works without paying any royalties or remuneration to the owner of the work. Copyright therefore encourages enterprise and creates a favourable climate to stimulate economic activity.

Copyright protection provides benefits in the form of economic rights which entitle the creators to control use of their literary and artistic material in a number of ways such as making copies, performing in public, broadcasting, use on-line, etc. and to obtain an appropriate economic reward.

Creators can therefore be rewarded for their creativity and investment.

Copyright also gives moral rights to be identified as the creator or author of certain kinds of material (known as the paternity right), and object to the distortion and mutilation of it.

An author’s right to object to the modification or derogatory action in relation to his or her work is known as an integrity right.

Chapter 7 of the Copyright and Related Rights Act, 2000 (No. 28 of 2000) deals in greater detail with moral rights applicable in Ireland.

Commissioned Work and Copyright

Prior to the Copyright and Related Works Act, 2000 the commissioner of certain types of work would own the copyright to that work.

That is no longer the case.

If you commission artistic work and wish to have the copyright transferred to you, it will be necessary to have a written agreement to do so.

In Irish law, the assignment of copyright in a work must be effected in writing and signed by the person assigning the copyright (section 120, Copyright and Related Rights Act, 2000).

(3) An assignment of the copyright in a work, whether in whole or in part, is not effective unless it is in writing and signed by or on behalf of the assignor.

However, if an employee creates a work in the course of his/her employment, the owner of the copyright in that work will be the employer.
By Terry Gorry
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How to Register a Business Name

register business name

Do you need to register a business name?

If so, how do you register a business name?

This piece will answer those questions and tell you what forms you will need to register a business name.

The registration of a business name is obligatory if any individual or partnership (whether individual or bodies corporate) or any body corporate carries on business under a name other than their own true names.

Specifically it is required if an individual uses a business name which differs in any way from his/her true surname.

It makes no difference whether the individual’s first name or initials are added. So the registration of a business name would be required if, for example, Mr. John Smith traded as “Smith Builders” but not if he traded as “Smith” or “John Smith”).

The registration of a business name would also be required if a firm uses a business name which differs in any way from the true names of all partners who are individuals and the corporate names of all partners which are bodies corporate.

It would also be required if a company uses a business name which differs in any way from its full corporate name; or

a person having a place of business in the State carries on the business of publishing a newspaper.

Requirements to Register a Business Name

The particulars for registration must be furnished within one month of the date of the adoption of the business name.

The forms of application for registration are:

  • Form RBN1: for an individual;
  • Form RBN1A: for a partnership;
  • Form RBN1B: for a body corporate.

The filing fee is €20 if you do it online.

Business name fees, and other information, is set out here on the CRO website.

You should note that registration of a business name

1. does not give protection against duplication of the business name;

2. does not imply that the business name will necessarily prove acceptable subsequently as a company name;

3. does not authorise the use of the business name if its use could be prohibited for other reasons.

It should not for instance be taken as an indication that no rights (e.g. trade marks rights) exist in the name.

The companies registration office does not check proposed business names against names on the registers of companies or business names.

It is advisable, therefore, to investigate the possibility of others having rights in the name which it is proposed to use before incurring expenditure on business stationery, etc.

You can check the register of companies and register of business names for free using the companies registration office web search facility.

You can undertake a search of the trademark register at the Patents Office.

Requirements following registration of a business name

Certificate of registration

The registrar issues a certificate of registration for each business name registered. A copy of the certificate of registration must be exhibited in a conspicuous position:

  • in the case of a firm or individual at the principal place of business and in every branch office or place where business is normally carried on;
  • in the case of a body corporate, at its registered office in the State and in every branch office or place where business is normally carried on.

Business letters

The name(s) of the proprietor(s) of a business must be shown on all business letters, circulars etc. on which the business name appears.

If the proprietor of the business name is a body corporate the following additional information must be shown on business letters:

  1. The full name of the company (note that the only permitted abbreviation is “Ltd” for Limited, “PLC” for Public Limited Company, etc.);
  2.  The names and any former names of the directors and nationality if not Irish;
  3.  Additional particulars are required on letters and order forms for Irish registered companies (this does not apply to unlimited companies):
  4.  The place of registration (e.g. registered in Dublin, Ireland);
  5. the registered number (i.e. number of certificate of incorporation);
  6. the address of the registered office (where this is already shown on the document, the fact that it is the registered office must be indicated);
  7. if the company share capital is mentioned on the business letters and order forms, the reference must be to the paid-up share capital.

Registering changes

When a change occurs in any of the particulars of a registered business name (e.g. change of business name or business address) it should be notified to the registrar within one month of the date of the change.

The forms for notifying changes are as follows:

  1. Form RBN2: for an individual;
  2. Form RBN2A: for a partnership;
  3. Form RBN2B: for a body corporate.

Cessation of business name

When an individual, partnership or body corporate ceases to carry on business under a business name, a Form RBN3 should be filed in the companies registration office within three months after the business has ceased.

A fee does not apply to Form RBN3.

The form should be signed as follows:

  • Individual: by the individual. In the event of the death of an individual by the personal representative of the deceased;
  • Partnership: by all persons who were partners of the firm when it ceased to carry on business;
  • Body corporate: by a director or a liquidator.

Checklist for business name forms

In brief:

The appropriate fee must be lodged;

It is essential that the correct form be submitted at the time of application to register a business name.

The full name of the business must be given on all forms and forms must be dated.

Forms RBN1, RBN1A, RBN1B

The general nature of business must be completed;

The full address of the principal place of business must be stated, a PO box number will not suffice. An address outside the State is not acceptable;

The full date of adoption (i.e. day, month, year) of the business name must be given;

RBN1 : The form must be signed by the individual applying for registration;

RBN1A : The forename name and surname of every individual who is a partner in the firm together with the corporate name of every body corporate which is a partner must be given on the form. The form must be signed by either all the individuals who are partners and by a director or secretary of all bodies corporate which are partners, or by some individual who is a partner, or by a director or secretary of some body corporate which is a partner. In this case the form must be verified by a statutory declaration made by the signatory;

RBN1B : The form must be signed by a director or secretary of the company applying for registration.

Displaying the business name

Every business must paint or affix its business name on the outside of every office or place in which the business is carried on, even if it is a director’s home. The name must be both conspicuous and legible.

In addition, the company must state its business name, in legible lettering, on company letter heads, order forms, invoices, etc
By Terry Gorry
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Passing Off, Counterfeit Goods and Confidential Information-The Essentials

passing off counterfeit goods

“Passing off” is a common law tort. (A tort is a civil wrong which can be remedied in the Courts).

It generally involves the making of a misrepresentation and there are 5 characteristics of “passing off”.

1.       A misrepresentation

2.      Made by a trader in the course of trade

3.      To prospective customers

4.      Which is calculated to injure the business or goodwill of another trader

5.      And which causes actual damage to a business or goodwill of the trader.

1.       Misrepresentation

There must be a false representation by the defendant so that an association with the plaintiff is made in the minds of the public.

2.      Made by a trader in the course of trade

The misrepresentation must be made in the course of trade.
What is considered to be a trader as far as the law of passing off is concerned is very wide-it has been held to include the BBC for example.
Anyone who makes an income from the provision of goods/services is a trader.

3.      To Prospective customers

For passing off to occur, the misrepresentation must be made to prospective customers; the courts have held that they will decide whether the general public is likely to be deceived.

4.      Business/Goodwill

It has been accepted that goodwill can be created in different ways and is not confined to simply trading within a jurisdiction.

5.      Damage

The plaintiff must prove that the action of the defendant has or is likely to cause damage to the plaintiff in order to prove passing off.

Passing off is closely connected with counterfeit goods.

Counterfeit goods

A trade mark owner can register his trade mark with the Revenue Commissioners and customs officials can destroy goods, which have been abandoned without or before determining whether an intellectual property right has been infringed.

Each consignment of goods from outside the EU will be inspected to see whether the goods are genuine. If they are found to be counterfeit, the customs authorities will destroy the consignment.

Infringement

Exceptions

A trade mark is not infringed by the use of a person of his own name or address, provided it is done honestly.

A trade mark will not be infringed by its use on goods which have been put on the market in the EU by the owner of the trade mark or with his consent. This is known as Exhaustion of Rights of a registered trade mark and stems from EU law.

Remedies

Courts have the power to grant an injunction and/or the destruction of goods and damages.

The District court has the power to request the Garda Siochana to seize goods and ultimately to have them destroyed once satisfied that an infringement has taken place.

Domain Names

A domain name will not necessarily become a trade mark and it is advisable for the owner of a domain name to also register it as a trade mark.

Confidential Information

Information such as knowhow, secret formulae, processes, customer lists are clearly of huge importance to businesses.

The protection of this information can be best protected by a confidentiality agreement with an employee from an employer’s perspective. This can be more effective than registering patents as this involves putting information into the public domain.

Once it is established that an obligation of confidentiality then the person to whom it is given has the duty to act in good faith and only use the information for the purpose for which it was intended.

Generally the law imposes a duty of confidentiality in 2 situations:

  1. The protection of trade secrets/confidential information in non-employment cases
  2. The protection of trade secrets in the course of employment

Once a contract of employment has ended and the employee has left his position he is still under a duty of confidentiality.

It has traditionally been held that in an employment situation there will be 3 types of information:

  1. Public information-not protected;
  2. Skill and experience which is not protected although it could be the subject of a restriction of trade clause in the employment;
  3. Trade secrets-protected and can only be used for the benefit of that employer.

Remedies

Breach of confidential information will lead to an injunction or damages or an account of profits or all 3.
By Terry Gorry
Google+

Trade Marks in Ireland and Community Trade Marks (CTM)-The Facts You Should Know

trademarks ireland

Do you have a valuable trade mark? Is someone infringing your trade mark?

Are you thinking about registering a community trade mark (CTM)?

This  article will look at trade marks, community trade marks (CTM), the benefits of trade mark registration, how to register a trade mark, registered and unregistered trade marks, and more.

First: what is a trade mark?

A trade mark is the means by which a business identifies its goods or services and distinguishes them from the goods and services supplied by other businesses.

The registration of a trade mark is an important task for any small business owner.

The Trade Marks Act, 1996 defines a trade mark as

“any sign capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

6.—(1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

(2) Without prejudice to subsection (1), a trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or of their packaging.

(3) References in this Act to a trade mark include, unless the context otherwise requires, references to a collective mark within the meaning of section 54 or a certification mark within the meaning of section 55 .

A trade mark may consist of words, (including personal names), designs, logos, letters, numerals or the shape of goods or of their packaging, or of other signs or indications that are capable of distinguishing the goods or services of one undertaking from those of others.

Trade Mark Registration

Not all trade marks are capable of registration.

Registration will be refused for a trade mark which:

  • is not capable of being represented graphically or not capable of distinguishing good or services of one business from those of other businesses,
  • does not have any distinctive character,
  • consists exclusively of signs or indications that designate essential characteristics of goods or services (e.g. their quality, intended purpose, geographical origin etc.),
  • consists exclusively of signs or indications which are customary in the language in the trade,
  • consists exclusively of the shape, arising from the goods themselves, or which is necessary to obtain a technical result, or gives substantial value to the goods,
  • is contrary to public policy or principles of morality,
  • is likely to deceive the public, e.g. as to the nature, quality, or geographical origin of the goods or services,
  • is applied for in bad faith,
  • is identical with or similar to a trade mark that is already on the Register in respect of identical or similar goods.

Trade mark registration creates an official record of your rights as owner of a particular trade mark and makes it easier to prevent others from using it.

Trade mark registration grants a statutory right, subject to certain conditions, to prevent others from using the trade mark without the registered proprietor’s permission – i.e. to prevent infringement.

Trade mark registration confers an exclusive right to authorise others by means of licensing to use the trade mark for the goods and /or services for which the trade mark is registered.

You should consider registering your trade mark if it is important to you that your customers are able to identify your products and services from those of your competition.

Unauthorised use of a trade mark means the rightful owner may lose business and goodwill.

Although trade mark registration is not obligatory, registration makes it easier to prevent others from benefiting from the reputation established by the use of a trade mark by allowing the proprietor of the registered trade mark to take infringement proceedings before the court.

The fraudulent application or use of a trade mark in relation to goods without the authorisation of the proprietor and/or the possession of goods or material bearing a mark identical to or nearly resembling a registered trade mark, may in certain circumstances, be a criminal offence, and criminal proceedings may be initiated under the Trade Marks Act, 1996.

Unregistered Trade Marks

If you use a particular brand for some period of time then you may have an unregistered trade mark. If someone infringes your brand or trade mark you will still have legal recourse to protect your trade mark.

However this will involve commencing legal proceedings under the common law heading of “passing off” and the onus of proof will be upon you to establish proof of your ownership of the unregistered trade mark.

This can be costly and time consuming and you will not enjoy the protection of registration and the remedies provided by the Trade Marks Act, 1996.

Benefits of Trade Mark Registration

The principal benefits of trade mark registration are

  • Without registration you can only rely on a legal action for “passing off” to protect your rights
  • Registration will help protect your business identity and goodwill
  • It is proof of your ownership of the intellectual property rights of the trade mark
  • Protection against other businesses whose products/services are defective who trade in the industry
  • Protection against others using similar trade marks.

Types of Trade Mark

Ordinary or standard trade mark

The majority of all trade marks fall into this category.

They consist of words, slogans, logos, etc. whose purpose is to distinguish the goods and services of their proprietors from those of other undertakings.

Collective mark

A Collective trade Mark is a mark that distinguishes the goods or services of the members of an association from those of others.

Certification mark

A Certification trade Mark is a mark that “certifies” goods or services as being of a certain standard or possessing certain qualities or other characteristics.

A certification mark can only be registered in the name of the proprietors if they themselves do not produce or provide the goods or services to which the mark is applied.

Series of trade marks

A series of trade marks is a number of marks, which resemble each other in their important features and differ only in respect of non-distinctive elements that do not substantially affect their identity.

Three-dimensional mark

A three-dimensional trade mark is a trade mark that consists of the shape of a product or its packaging.

Application for a Trade Mark

Any person or company etc who uses or proposes to use a trade Mark can apply to register that trade mark.

An application may be made either before the trade mark is put in use or afterwards. Generally speaking an application should be made to register a trade mark as soon as possible to ensure priority over anyone else who applies to register the same or similar mark.

To apply, complete the application form 1 on Patents Office website. The fee for filing an application may be paid at this time or within one month of that date.

An applicant may pursue his or her application personally or choose to employ the services of a registered Trade Mark Agent. If an application meets the criteria for registration, it is registered with effect from the date of application.

The Application Process

When an application (which contains the minimum information required) is received, a filing date and application number is assigned and a filing receipt is issued.

The Minimum requirements for a filing date are –

  • A request to register the Mark (completion of the prescribed application form meets this requirement),
  • The name and address of the person requesting the registration,
  • A representation of the trade mark,
  • A statement or list of the goods and/or services for which registration of the trade mark is sought.

The application is then examined as to its registrability.

The examination process includes a search of relevant databases to ascertain whether the trade mark or a similar mark has previously been registered. If this is found to be the case, then the Office may refuse to register the trade mark.

The examination also addresses other obstacles to trade mark registration such as, for example, whether the mark is simply a laudatory statement of a product’s quality (e.g. “Best Quality”) or a sign that has become generic within a particular field of commercial activity. These are among a number of grounds on which an application for registration may be refused.

If it is proposed to refuse registration in a given case, the Applicant will be informed of the reasons why and will be afforded an opportunity to make arguments in support of the application.

Before any decision to refuse becomes final, the Applicant will have a right to attend an oral hearing before a senior official of the Patents Office.

If the application is accepted for registration, details of the mark will be published in the Official Journal. Within 3 months of the advertisement of a trade mark, any person who objects to its registration may send a notice of opposition to the Office accompanied by the prescribed fee and the Office will copy this to the Applicant. Each side (the Applicant and the Opponent) is then given an opportunity to file evidence in support of its case and the question of whether the mark should be registered is ultimately decided by a senior official of the Office.

How Long Does a Trade Mark Last?

A trade mark registration can last indefinitely provided the registration is renewed.

Registration is initially for a period of ten years (from the date of filing of the application) and it can subsequently be renewed every ten years on payment of the renewal fee.

Community Trade Mark (CTM)

A CTM (Community Trade Mark) is effective across all 27 states of the European Union.

However as it has unitary effect, that is recognised in all 27 states, if your trade mark registration application fails in one state then your application for a CTM will fail.

Benefit of a Community Trade Mark

The big benefit of the community trade mark procedure is that it allows

  • A single application for all 27 EU states and any new members
  • A single administrative centre
  • One language to be dealt with
  • Very cost effective compared to registering a national trade mark in a number of countries.

Should your application for a CTM fail you do have the option of applying to register in individual states but clearly this will require lawyers or agents in many different countries and other costs such as translation of documents, many administrative centres and files to deal with.

Maintaining your CTM

In order to maintain your community trade mark you will have to use it in at least one member state within 5 years of registration but using it in only one member state will allow you to maintain your CTM across the European community.

Enforcing your CTM

To enforce your CTM there are essentially two avenues open to you-

  1. Issue proceedings at the Community trade mark courts
  2. File requests with EU customs offices to retain allegedly counterfeit goods under their control.

The whole system of CTM (community trade marks) is administered by the OHIM (Office for Harmonisation in the Internal Market) in Alicante, Spain.

Priority of an earlier national trade mark

If you are the owner of a national trade mark for the CTM application that you now wish to make then you can claim the priority of that previous mark in your CTM application which safeguards your previous trade mark rights even if you choose not to renew the national mark.

CTM application fees

The application fee for a CTM is €900 if you do it online and €1,050 for a paper based application and this includes 3 classifications or classes of goods/services. Each extra classification costs €150.

Keep in mind that you will also have additional professional fees for a solicitor/lawyer/trade mark agent.
By Terry Gorry
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