Carol Plunkett of A & L Goodbody's Intellectual Property Unit outlines Irish law in this area (including Trade Mark legislation which came into effect in July 1996) and discusses remedies which are available.
The most usual method of preventing counterfeit goods from being sold is to rely upon the Intellectual Property Rights which exist in the authentic goods. These can be registered trademarks, copyright, registered design, patent rights, common law passing-off rights. In addition, in recent years, the European Union has recognised the necessity to prohibit the circulation in the Union of counterfeit goods and has brought in Regulations by granting powers of seizure of goods coming from outside the Union to the Customs & Excise.
The main Irish statutory areas are the new Trademarks Act, 1996 which I am going to leave until last; the Copyright Acts, 1963 - 1987; the remains of the Industrial & Commercial Property (Protection) Acts, 1927 - 1958 which still exists as far as the protection of Designs is concerned; and the Patents Act, 1992.
Courts
We have DISTRICT COURTS situated throughout the country which deal with cases where the amount of money concerned is up to IR£5000. However the District Court does not have jurisdiction to grant injunctions but it can award damages and deal with offences under the various anti - Counterfeiting Statutes and impose penalties.
The CIRCUIT COURT takes care of matters up to IR£30000 and has all the powers of the High Court. More and more IP cases are being brought in the Circuit Court although historically one tended to issue this type of action in the High Court in the perhaps rather pompous belief that the expertise in the Circuit Court was less than in the High Court. That is less true now, if it was ever in fact true.
The HIGH COURT deals with all cases and has unlimited Jurisdiction although one would tend from the point of view of cost to commence cases where it seems likely that the money involved will exceed IR£30000.
The Supreme Court deals with Appeals on points of Law.
Patents
I will just mention the area of patent infringement since this is probably the least relevant area for most of those present here today. However one may for example have a situation where with certain types of shoes the sole has been patented because it contains air pockets or some such thing and a counterfeiter starts to sell shoes which infringe the Patent. The Patent may be either a 10 year short term patent or a 20 year one.
Civil proceedings for patent infringement may be brought in the High Court for twenty year patents, and in both the High and the Circuit Court for ten year patents seeking an injunction stopping the infringement, delivery up destruction of the infringing product, damages and/or an account of profits.
There are no however no criminal penalties contained in the Patents Act, 1992 which can assist to control such things.
Copyright
The Copyright Act, 1963 makes provision both for civil Court proceedings and for criminal proceedings to be brought against infringers.
On the civil side, proceedings may be brought either in the Circuit Court or in the High Court to seek an injunction stopping an infringement or a false attribution (falsely applying a name or a monogram) and again looking for damages and/or an account of profits, and delivery up and destruction of the infringing product. Proceedings may also be brought in the District Court seeking damages for infringement.
Section 27(4) of the Act is one of the most useful sections for a person anxious to enforce his copyright. It provides a facility whereby he can apply to the District Court, give evidence that infringing copies of his property are being hawked, carried about, sold or exposed for sale let for hire or offered for hire and look for an order addressed to the Garda Siochana to seize goods without warrant and then to bring them before the court to seek an order for destruction. This section was I believe originally enacted at the behest of the music industry to control bootleg tapes and so on, but its ambit is much wider than that. It has its disadvantages of course. The applicant must be able to prove his copyright and sometimes that is difficult, if the necessary evidence has not been carefully preserved. The other difficulty which can occur is if the Garda Siochana support is not sufficient for the size of the raid you contemplate. I have always without exception found that the Guards will do everything they can to assist, but on occasion they simply may not have the manpower available to help. So it is essential that you organise everything in advance and ensure that the only people who are surprised by your action are the counterfeiters, not the people on your side.
On the criminal side, the owner of copyright may seek a warrant for seizure of infringing goods by the Garda Siochana either so that they may be destroyed and/or with a view to the Director of Public Prosecutions bringing a prosecution under the Act. This does not of course preclude the copyright owner from issuing civil proceedings for damages concurrently with the DPP.
Design
One major difference between Copyright law in Ireland and the UK at present is that the Industrial and Commercial Property and Protection Acts, 1927 to 1958 still govern the area of design.
The definition of a design is somewhat convoluted. However a design is basically the shape of, or the pattern or ornament applied to any article which appeals to the eye.
If a design is not registered under the 1927 Act, then in Ireland it has no copyright protection at all. The difficulty is then that one has no remedy to prevent infringement and any one may copy the design. This has major implications for the fashion industry here.
The position in England, as you know, is that copyright protection will subsist albeit for a shorter period than usual. It is to be hoped that in the new legislation this anomaly will be overcome.
Counterfeit Goods Regulations
These were greeted with great enthusiasm when Council Regulation 3842 of 86 came into force in Ireland in May 1990. Those Regulations have now being replaced in an attempt to overcome some of the difficulties encountered with the first ones. The new ones came into force in March 1996.
The most important improvement is that the Regulations now cover not just goods which have a registered Trade Mark applied to them but we now have the facility to have what are known as "pirated goods" seized. These are goods made without the consent of a copyright owner or the owner of "neighbouring rights", or the holder of a design right, whether or not registered under national law.
This will improve the operation of the Regulations, but they are by no means a cure-all. The Regulations can only control goods coming from outside the European Union. If for example a consignment of shoes or watches has been landed at Rotterdam first then it may not be possible for the Customs to seize them here under these Regulations when they arrive in Ireland.
The other areas to which I will only refer but will not discuss, are the powers of the customs under the Customs Law Consolidation Act and the Merchandise Marks Acts, and these sections are extremely useful in that they are not confined to goods coming from Third countries, although one would have to be wary of EU law in attempting to rely upon certain of their provisions.
Passing Off
The next area is the common law area of passing off. This, as you are all aware, is the term used to describe Counterfeiting in the general sense. It is also a legal remedy to stop counterfeiting and is often used in conjunction with copyright and trademark actions but it stands very well as a remedy on its own. Indeed it is sometimes the only area of protection which can assist the owner of goods whose rights are being infringed. For such an application to succeed, the owner of goods must be able to prove that third parties will be deceived and confused into believing that the counterfeit goods are in fact legitimate. The proceedings will often end at the injunction stage and can be very effective, however one has to show a reputation and a goodwill in the goods, so that if the garment or the footwear which is being infringed is new for this particular season this may be a difficulty.
There are various different types of injunction, those which simply prohibit sale of the goods pending the full hearing, those which are sought in aid of proceedings in another European Union jurisdiction, or those which permit you to turn up on the Defendants door step and seize all things which relate to your product, known as an Anton Piller Order if you have been able to satisfy the court that there is a danger that everything is likely to be destroyed. It may be that you have knowledge of a factory which is manufacturing tee - shirts and are concerned that the silk screen printing material may be destroyed if a threat is received by them that proceedings will issue. In such circumstances it may be possible to seek an Anton Piller injunction to seize such evidence until a hearing.
The problem with any of the civil actions is of course that because they take time and care to prepare and involve a detailed "application" and can sometimes be lengthy and expensive, they are not particularly suitable for small time backstreet infringers.
Those then are the main areas, either one or a combination of the areas, which typically one would use to stop counterfeiters.
General
There are however a number of other areas which can sometimes be of assistance in thwarting infringers.
For example, consideration might be given to the MISLEADING ADVERTISING REGULATIONS. If, for example there is a row of clothes with a large sign claiming that the garments are of a particular manufacturer when they are not, it may be possible to seek an injunction under those Regulations or to report the matter to the Director of Consumer Affairs under those Regulations or under the Consumer Information Act.
Action may be possible under the CASUAL TRADING ACT which came into force earlier this year. The Act provides that the Authority which grants Casual Trading Licences, the Corporation or County Council may attach conditions to the grant of each Licence. One of these could be that counterfeit goods may not be sold so that the Licence may revoked if the condition is not complied with. It is to be hoped that the Authorities will attach such conditions to Licenses. There is a risk however that they may not regard such provisions as being within the ones about which they should be concerned.
It may be possible that the infringing goods do not comply with certain EU regulations such as requirements as to SAFETY or PACKAGING or LABELLING of ingredients and such matters might be again drawn to the attention of the Director of Consumer Affairs.
Trade Marks
ENFORCEMENT PROVISIONS
The Old Act.
The Act with which we have been living since 1964 was a copy of the UK Trade Marks Act of 1938 and as you can imagine a revision was long overdue. You may recall that the Anti-Counterfeiting Provisions in the 1963 Act were non-existent and realistically the only effective action which could be taken was to seek an injunction to stop infringement of the Mark and to look for damages. Allied with such a claim of course was a claim for passing-off, but all of this together resulted in a very expensive method of enforcing your Trade Mark. In short, there was no cheap effective manner of protecting your Trade Mark rights.
The New Act
The Trade Marks Act after much discussion in Dail Eireann was eventually signed by the President in March 1996. However difficulties have been encountered within the Civil Service, delaying its entry into force but at last the Act became effective on the 1st July 1996.
CIVIL REMEDIES
Section 18 of the Act provides that the infringement of a registered Trade Mark is actionable by the proprietor of the Trade Mark and that the same relief is available as is available in respect of any other property right.
Section 19 gives the Court, in this case the High Court, the power to order the offending sign to be erased, removed or obliterated from the infringing goods, material or articles or if this is not practical for the goods, material or articles to be destroyed. The Court can also order that the goods, materials or articles be delivered to any person for this to take place.
Section 20 gives the proprietor of a registered Trade Mark the right to apply to either the High Court or the Circuit Court for delivery up to him of any infringing goods, materials or articles. This application must be made within a period of six years of the date on which the Trade Mark was applied to the goods, their packaging or the material or in the case of articles the date on which they were made.
Section 21 defines infringing goods, infringing material and infringing articles. Basically they are goods, materials or articles which bear a sign identical or similar to the registered Trade Mark. Infringing articles means articles which are designed or adapted for making copies of an infringing Mark and which is in the possession, custody or control of a person who knows that they have been or are being used to produce infringing goods or material.
Section 23 gives the High and Circuit Courts power to order destruction or forfeiture of goods which have been seized under Section 20. The Court may decide to make no such Order and must consider whether other remedies available in an action for infringement would be adequate to compensate and protect the interests of the proprietor and any Licensee.
Provision may be made by Rules of Court as to the service of Notice on anyone having an interest in the goods, materials or articles and they shall be entitled to appear whether or not they have been served and to appeal against any Order made whether or not they appeared. The Order will not take effect until the notice period has expired and if an appeal is delivered the Order will not take effect until the appeal has been heard or abandoned.
If the Court decides to make no Order then the goods, materials or articles have to be returned to the person from whom they were taken.
Section 24 provides remedies against a person who makes "groundless threats" of infringement proceedings. The remedies are not available where the threat of proceedings relates to the application of the Trade Mark to goods or the importation of goods which contain the Mark or the supply of services under the Mark. This is, I believe, the same provision as is contained in the U.K. Trade Marks Act of 1994. It has existed in Ireland in the Patents legislation but it is new in Trade Marks.
Section 25 is a Section which we fought to include having regard to the fact that there is no system of Trading Standards Officers in Ireland. What we hoped to achieve was a cheap, cost effective method of obtaining a Search Warrant to search premises and to seize goods. The power is granted to the District Court and the Section is very similar to an equivalent Section under the Copyright Act which was introduced in 1987.
The terms of the Section are quite draconian and mention was made during the hearing of the Bill in Dail Eireann that it was envisaged that Sections 20 and 23 would be the ones used to deal with street traders. However Section 25 provides a cheaper and simpler facility and nothing confines its operation to large suppliers. Section 25 authorises the Garda Siochana to seize goods. Section 20 as you will see provides only for deliver up. This it seems to me means that the infringer may refuse to deliver up with the result that the Trade Mark holder will have to go back to Court for an Order attaching and committing the infringer to prison for contempt of the original Order by which time the infringer will have disappeared.
Thus Section 25 it seems to me will be a more useful Section provided that the Garda Siochana has the manpower to provide the necessary cover.
Those then are the civil provisions.
Criminal Remedies
The criminal remedies comprise four Sections towards the end of the Act in Part 6.
Section 92 says that it is an offence for anyone to apply a Mark identical or nearly resembling a registered Trade Mark to goods or material which is to be used for labelling, packaging or advertising goods. It is an offence to sell, let for hire, offer or expose for sale or hire, or distribute goods bearing such a Mark or material such a Mark when they are not entitled to do any of those things or authorised to do any of those things. It is also an offence for any person to possess in the course of a business goods or material bearing such a Mark with a view to enabling or assisting someone to do any of the things just mentioned when they know that person is not entitled to do them. Any person who contravenes the provisions of this Section is guilty of an offence but only if he acts with a view to gain for himself or another and in that regard we suggested the words "or another" to ensure that in the event we were dealing with, for example a street trader, they could not argue they were simply guarding the stall for someone else. It is a defence if the person can show that he believed on reasonable grounds that he was entitled to use the Marks. The fines are on summary conviction a term of imprisonment not exceeding 6 months or a fine not exceeding œ1,000.00 or both and on conviction or indictment a term of imprisonment not exceeding 5 years or a fine not exceeding œ100,000.00 or both. The words which are in the equivalent U.K. Section referring to the Defendants intention have as you will see been removed from the Section.
Section 93 is a similar Section to that contained in the old Act and provides that it is an offence for any person to make or cause to be made a false entry in the Register or to produce a document which purports to be a copy of an entry in the Register.
Section 94, again similar to the old Act, provides that it is an offence to represent that a Mark is a registered Mark when it is not unless it is shown that the reference is to registration outside Ireland.
Section 96 is the Section which brings in the jurisdiction of the Circuit Court to the civil provisions I spoke of in Sections 20 and 23.
Those then are the provisions of the new Act.
A great deal of course will depend on the manpower which the Garda Siochana can provide. In all of the cases with which I have been involved, they are extremely helpful but sometimes it is difficult for them to provide the necessary backup required.
Ideally of course we would like to see a force set up to deal specifically with this sort of crime and one suggestion is that the officers appointed by the Director of Consumer Affairs might be given powers of seizure. This might be something which the Anti-Counterfeiting Group could take up as their next lobby in Ireland.
In the short term it has to be said that the situation has been improved by the introduction of the Trade Marks Act, 1995 and hopefully when more Orders have been obtained and prosecutions brought the new Act will begin to prove its worth.
Conclusion
Not all cases are straight forward, sometimes because the goods are not protected here as well as they might be, sometimes because insufficient preparatory work has been carried out to ensure that in the event that an infringement is discovered all the necessary proofs of registration of Trademarks, assignments of Copyright, details of reputation and so on are stored and ready for action, sometimes because the infringer is a street trader of the sort who is unconcerned by injunctions or seizure of goods and sometimes because it is simply not commercially practical to pursue the infringer.
The main thing is to be prepared, to put together a Library of proofs ready in the event that an incidence of counterfeiting arises in Ireland and deposit this with your solicitor or Patent agent here. It is essential to act quickly and if evidence has to be gathered from abroad the days and sometimes weeks can destroy an action. Swift issue of proceedings can save you money at the end of the day.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
