Intellectual Property Rights

Copyright

There is no requirement in Irish or EU law to register copyright. Once a work qualifies for copyright protection, copyright subsists in it. Copyright law protects literary works, artistic works, musical works, films and sound recordings, among other things.

Computer programs are protected as literary works. Accordingly, a computer program in its source code, object code, and any other form is protected by copyright, provided that it is original. The standard of originality required is low and essentially requires that the program is not a reproduction of another program.

Copyright will subsist under Irish copyright law for the lifetime of the author and 70 years after the author's death, regardless of the date when the work was published or otherwise lawfully made available to the public.

The Copyright and Related Rights Act, 2000 substantially updates Irish copyright law to take account of many changes that have taken place (especially in technological matters) since the last substantial piece of legislation, the Copyright Act, 1963. The Act consolidates most of the previous legislation and implements a number of EU Directives. The Act attempts, in its terminology to be as technology-neutral as possible, so as to ensure certainty in the law in the future.

The Act creates new rights, including;

• rights for performers
• rental and lending rights
• database rights
• satellite broadcasting and cable retransmission rights
• moral rights for all authors include the rights of integrity and paternity of copyright works

The Act seeks to incorporate into Irish law the EU commitment to protect intellectual property rights and to fight infringements upon such rights, such as software piracy. There are extensive provisions dealing with infringement and substantial penalties for breach of them. The Act also addresses specific issues such as encryption and technological protection measures, as well as copyright and the Internet.

EU Directive 2002/29/EC (Copyright Directive) came into force during June 2001 and it must be implemented by member states by 22nd December 2002.

Trademarks

Under Irish law there are two main systems for protecting trademarks - the traditional common-law remedy of passing off, which covers unregistered marks, and the statutory protection of registered marks under the Trademarks Act, 1996.

A trademark is defined as any sign that can be represented graphically which is capable of distinguishing the goods and services of one undertaking from those of other undertakings. Trademarks are registrable in respect of both goods and services. Any trademark application must refer to specific goods or services. Registering a trademark confers a property right which gives the owner of the trademark exclusive rights in respect of the registered mark for the goods or services for which it has been registered.

A trademark is registered for a period of 10 years from the date of registration. The period may be renewed for further successive periods of 10 years.

Trademark owners can prevent third parties from using;

• an identical sign for identical or similar goods
• a similar sign for similar goods where there is a likelihood of confusion among consumers, including the likelihood of association between the sign and the trademark
• an identical or similar sign for dissimilar goods when the trademark has a reputation and where use of the sign takes unfair advantage, or is detrimental to the distinctive character or repute, of the trademark

The EU Community Trade Mark (CTM) gives trademark protection throughout the EU on the basis of a single application and obviates the requirement to lodge individual trademark applications in the EU member state. Applications for a CTM can be made at the Office for Harmonization in the Internal Market in Alicante, Spain.

E-business should bear in mind that the simple fact of putting up a website means that their business has global exposure and their “virtual” presence is visible to potential customers world wide.

One of the trickiest issues is the improper use of of trademarks online. For example the improper use of metatags by unscrupulous website owners who unlawfully use a third party’s trademark as a metatag on their site, with the intention of directing web traffic searching for the third party website to their site. Case law in this area is developing. It is probably fair to say that within the EU the courts will act to prevent such improper use of trademarks on the grounds that such conduct constitutes the infringement of the trademark or passing off so care is needed in the formulation of metatags.

The misuse of hyperlinks could give way to problems. As with the misuse of metatags, case law in this area is developing. Grounds of action will very much depend on the particular circumstances.However it is reasonable to assume that misuse of hyperlinks could amount to breach of copyright, infringement of a trademark or passing off.

Domain Names

The use of domain names is synonymous with the Internet. Many businesses have found when applying for a domain name that builds on or reflects their trademark, that domain name allocation does not have regard to pre-existing intellectual property rights. This has given rise to the phenomenon of “cybersquatting.

Where the cybersquatter has been unable to demonstrate use of the domain name that infringes a trademark in good faith or has been unable to demonstrate a legitimate connection with the trademark, courts in some jurisdictions have granted injunctive relief. However, it is important to remember that where evidence of good faith usage exists, or a legitimate connection, the courts in jurisdictions such as the UK have refused to grant injunctive relief.

Patents

The principal Irish legislation governing patents is the Patents Act, 1992. An inventor may apply for an Irish or European patent.

Patents are granted by the Irish Patents Office or by the European Patent Office (EPO). As Ireland is a signatory to the Patent Co-operation Treaty (PCT), Irish applicants may file the international application at the Irish Patents Office. The patent holder has the legal right to prevent third parties not having his consent from making, using, or commercialising the invention covered by the patent during a maximum period of 20 years.

Provided that certain requirements are met, royalties from patents are currently exempt from tax in Ireland.

A patent will be granted in respect of an invention if the invention is novel, involves an inventive step, and is capable of industrial application. The Patents Act 1992 specifically states that a program for a computer shall not be regarded as an invention. This is then qualified by a limited proviso.

In March 2002 the EU Commission published details of a proposed Directive setting out the conditions of patentability of computer related inventions. The proposed Directive introduces the concept of a “technical contribution” to the state of the art as a necessary component in order to meet the test of patentability. It is not proposed that patents be granted for computer programs on their own as separate from the machine on which they are run. Unlike the United States, it is not proposed that “Business Methods” which are not a “technical contribution” be patentable.

For further information or general enquiries contact: -
Anthony Layng
Email: alayng@kilroys.ie
Telephone: +3531-439 5600
Fax: +3531-439 5601/439 5602

© Kilroys Solicitors 2002 - 2003