Ireland

A trade mark may be obtained by applying for a national trade mark, an EU trade mark or an international trade mark. The primary Irish legislation is the Trade Marks Act, 1996 (as amended). A trade mark is defined as any “sign capable of distinguishing goods or services of one undertaking from those of other undertakings” and may consist of words (including personal names), designs, logos, letters, numerals or the shape of goods or of their packaging.

A trade mark must be capable of being represented on the register in a manner that enables the public to determine the clear and precise subject matter of the protection afforded to its proprietor. A trade mark will not be registerable if it lacks distinctive character or if it consists of signs or indications which designate certain characteristic of goods such as quality, purpose or origin.

The following may be protected as trade marks in Ireland:

• Colour mark. Marks which consist exclusively of a single colour without contours or a combination of colours without contours.
• Position mark. Marks which consist of the specific way in which a mark is placed or affixed on the product.
• Shape mark. Marks which consist of or extend to a three-dimensional shape, including packaging, containers or the product itself.
• Pattern mark. Marks which consist exclusively of a set of elements which are repeated regularly.
• Figurative mark. Marks where non-standard characters, stylisation or layout, or a graphic feature or a colour are used.
• Word mark. Marks which consist exclusively of words or letters, numerals, other standard typographic characters or a combination thereof.

Trade marks may also be registered as:

• Certification marks. A certification mark indicates that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
• Collective marks. A collective mark distinguishes the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.
• Series of trade marks. A series is a number of marks which resemble each other in their important features and differ only in minor features, which do not substantially affect the identity of the mark.

To maintain protection in Ireland, a trade mark must be renewed every 10 years and a renewal fee must be paid. It is also important that a registered trade mark is put to genuine use in relation to the goods or services for which it is registered, otherwise there is a risk that it might be removed from the register (specifically where there has been no genuine use for five years, without proper reason).

Unregistered trade marks. Unregistered trade marks can attract protection under the common law tort of passing off. This tort serves to protect the goodwill or reputation built up through use of a mark.

As such, an unregistered trade mark may be protected through an action in passing off provided the owner can meet the test required for such an action, including establishing goodwill associated with the unregistered mark.

Irish law also provides that the registration of a trade mark may be prevented by any rule of law protecting an unregistered trade mark.

Design rights in Ireland are governed by the Industrial Designs Act 2001. A design is defined as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colour, shape, texture or materials of the product itself or its ornamentation”.

To be registerable, a design must be new and have individual character. Designs that relate to how a product functions or for parts that in normal use are not visible, or designs that are contrary to public policy or to accepted principles of morality, will not be registered.

A product includes any industrial or handicraft item, including parts intended to be assembled into a more complex product. As such a design right may be applicable to a wide variety of fashion items, from bespoke pieces to mass produced goods; or individual components of each.

A national design right gives protection to the owner for a maximum period of 25 years. Unlike trade marks, design protection is not tied to specific goods or services. A registered design can be enforced against any other design that produces the same overall impression, even if it is used in a completely different context.

A Registered EU Design (REUD) may be obtained from the European Union Intellectual Property Office (EUIPO), which provides an owner with protection for a period of 25 years across all EU member states. EU law also provides for an Unregistered EU Design (UEUD) right, which automatically comes into existence by the mere fact of making the products incorporating the designs available to the public in the EU. An UEUD is limited to three years.

It is also possible to file an international design right through the World Intellectual Property Organization’s Hague System.

Copyright in Ireland is governed by the Copyright and Related Right Act, 2000 (as amended). Copyright is the exclusive legal right to produce, reproduce, publish or perform an original musical, literary, dramatic or artistic work. To qualify for copyright protection, a work must constitute the author’s own intellectual creation. There is no copyright registration system of Ireland, and the right automatically exists when a work is created. Copyright only applies to original works and does not extend to mere ideas.

Of particular importance to the fashion industry is the definition of artistic works, which includes photographs, paintings, drawings and prints.

Copyright for most works last for the life of the author/creator plus a period of 70 years.

Patents in Ireland are governed by the Patents Act 1992 (as amended) and the Patent Rules (as amended). A patent provides an owner with exclusive right over an invention for the life of the patent. This includes the right to exclude others making, using, selling or importing the patented invention, except with the consent of the owner of the patent. To be patentable an invention must be new, involve an inventive step and have industrial application. In Ireland a full-term patent lasts for a period of 20 years, while a short-term patent lasts for a period of 10 years.

Patentable inventions in the fashion industry may include fastening devices, certain types of fabrics, wearable technology or manufacturing techniques.

A geographical indication established intellectual property rights for products whose qualities, reputation or other characteristics are specifically linked to its geographical origin. The recent EU Regulation on geographical indications for craft and industrial products extends the existing system to include textiles, lace and other products, which will have positive impacts on the fashion industry.

Licence agreements

A licence agreement involves the owner of an IP right giving permission to a third party to use the protected IP on agreed terms and conditions. The use of the protected IP is usually subject to the payment of a monetary sum known as royalties. Licence agreements may be necessary in circumstances where the owners of IP do not have the time or resources to manufacture a product or service.

A licence agreement should typically include clauses on scope, territory, exclusivity, duration, payment and royalties, termination and renewal. A licence agreement should clearly define the nature of the IP rights subject to the licence and set out the rights and obligations of the licensee in detail. It may also be necessary to consider minimum quality standards and dispute resolution.

Non-disclosure agreements (NDAs)

Non-disclosure agreements (NDAs) or confidentiality agreements are private contracts between two parties which aim to keep certain information secret. An NDA will prohibit one or both parties to the agreement from disclosing confidential information by creating contractual obligations to refrain from doing so. A party which breaches the terms of an NDA will typically be subject to financial penalties. NDAs provide a useful protection to confidential business information, trade secrets and unregistered IP.

Certain IP rights, such as patents, require novelty to obtain protection. Consequently, any disclosure of an invention intended for patenting should occur under an NDA. NDAs play a vital role in safeguarding unregistered IP, including trade secrets and know-how. They should clearly specify what constitutes confidential information and outline the permitted purposes for its use.

Subcontractor agreements with suppliers/in-house manufacturing

The holder of an IP right may consider a subcontractor agreement in cases where they do not have the resources internally to manufacture products. A subcontractor agreement may involve a subcontractor manufacturing all or some of a product off-site on behalf of the right owner. A subcontractor agreement must clearly define the scope of the subcontractor’s role, the consideration payable to the subcontractor, the protection of any IP rights which may be disclosed to facilitate the manufacturing, inspection and minimum quality standards, and remedies for breach of the agreement.

Agency agreement

In Ireland, Commercial Agency Agreements are regulated by the European Communities (Commercial Agents) Regulations 1994 and 1997 which transposed Council Directive 86/653/EEC of 18 December 1986 into Irish law.

A commercial agent acts as a representative of the principal and promotes or procures the sale of the principal’s goods or products. Under a commercial agency agreement, the principal will be bound by any transaction entered into by the agent provided it is done within the scope of the agent’s authority.

A commercial agency agreement should be in writing, and will typically contain clauses which set out the duties and authority of the agent, the duties of the principal and the remuneration payable to the agent. They are generally for a fixed period of time; however, the legislation provides that the lapse of a fixed term contract where both parties continue to perform their obligations will give rise to a contract of indefinite duration, subject to minimum notice periods.

Selective distribution online in high-end fashion and trade mark protection

Selective distribution agreements involve a supplier selecting a number of distributors based on a set of objective criteria. The use of selective distribution agreements allows a supplier to carefully manage the type of distribution of its products by controlling the quality of the sales environment. It is most often associated with high-end or luxury brands.

A selective distribution agreement would typically contain clauses that detail the duration, termination, price and payment and the territory in which the distributor is to operate. The agreement should clearly define the standards that the distributor must meet to be selective distributor of the products. The terms must also comply with Irish and EU competition law.

Co-branding and co-marketing

Co-branding involves a partnership between two existing brands to create a product that shares the identity of both brands. Co-branding can facilitate reaching new audiences and increasing sales by leveraging the strengths and customer bases of each individual brand. However, co-branding can also expose either brand to certain risks such as brand dilution, misaligned values and loss of goodwill due to association. If the brands are too similar, then this may lead to confusion amongst consumers.

Co-marketing involves two or more brands engaging in a joint marketing campaign. Leveraging the marketing strengths and resources of each individual brand can allow a brand to increase marketing effectiveness and visibility without incurring significant additional costs. Similar to co-branding, a co-marketing campaign must be carefully managed.

Franchising and alternative sales model agreements

A franchising agreement is a contractual arrangement whereby the franchisor grants the franchisee a licence to sell its products using the franchisor’s brand, business model, know-how and intellectual property. A franchise agreement allows the franchisor to expand its business into new markets.

Franchise agreements are not specifically regulated under Irish law and applicable law may include intellectual property law, competition law, and property law. A typical franchise agreement will contain clauses on the duration of the agreement, the obligations of the franchisor and franchisee, fees payable to the franchisor, exclusivity, intellectual property rights and termination. Under the franchise agreement the franchisor will agree to provide certain technical knowledge, know-how and support to the franchisee while the franchisee will agree to maintain minimum standards and to comply with the franchisor’s business model.

Corner store agreements involve a brand taking up a space inside an existing store. A corner store arrangement should have clear terms which address the amount payable for the space, the period of occupation and the operating rules. In a consignment store contract, the owner of the products sells goods through a store owned by a third party. The owner retains ownership up until the goods are sold. A consignment store contract should address the terms for selling the goods, fees and commission, ownership and returns. A pop-up store involves selling goods in a temporary location usually for a short period of time through a lease or licence. Key provisions in an agreement would include the duration of occupation, fees payable, terms of occupation and insurance.

Employing fashion models

When employing a fashion model, the form of the contract will be dependent on the nature of the relationship; for example, is the agreement with the model themselves or with a modelling agency? Key provisions in such a contract could include an exclusivity or non-compete clause (particularly where the model is the face of a brand or campaign), a remuneration clause, a scope of work clause which clearly sets out the obligations of the model, a confidentiality clause and a termination clause. A model release clause should also be considered to ensure that the images can be used in the desired way without issue.

Social media, influencers and brand ambassadors/celebrities

Some social media channels may fall under the IP owner’s control, such as its own official accounts, while others, like third-party platforms, are outside its direct control. For its own channels, the IP owner should implement clear policies for staff and external agents to ensure consistent use of its IP. Staff handbooks can provide guidance on what employees may post on their personal accounts and the potential implications. Third-party social media is generally harder to manage unless formal agreements with those parties are in place

The Advertising Standards Authority (ASA) is a self-regulatory body that promotes better standards in advertising and sales promotion. The ASA has published guidelines on influencer advertising and marketing. The guidance applies to all those who promote or recommend products or services on social media for a benefit. It requires that such advertisements contain a clearly visible primary label such as #ad, #gifted or a platform-provided label. The guidelines state that a brand is responsible for ensuring that any commercial posts relating to the brand by a social media influencer contain the necessary labels and that the social media influencer follows the guidance. Any agreement with social media influencers should contain an obligation to comply with ASA guidelines and the applicable consumer protection laws.

Advertising standards, relevant authorities and advertising practice

In Ireland, advertising is regulated by legislation and an industry code of conduct: the legislation comprises the Consumer Protection Act 2007 and the EC (Misleading and Comparative Marketing Communications) Regulations 2007 (SI 774/2007) which implements Directive 2006/114/EC. The Consumer Protection Act 2007 is discussed further below.

The ASA publishes a Code of Standards for Advertising and Marketing Communications in Ireland (“the Code”). The Code applies to all commercial marketing communications in all channels including broadcast, print and digital, and to sales promotions that promote the sales of goods or services. The Code requires that all marketing communications must be legal, decent, honest and truthful. All ASA members are required to abide by the standards set out in the Code. Complaints about advertisements may be made to the ASA free of charge. A marketing communication found to be in breach of the Code is required to be amended or withdrawn. In the case of a sales promotion, the promoter may be asked to change the way the promotion has been carried out and to compensate any adversely affected consumers.

The Competition and Consumer Protection Commission (CCPC) is responsible for enforcing competition and consumer protection law in Ireland. The CCPC deals with consumer complaints in relation to false or misleading advertising, and can take enforcement action — including by issuing legal proceedings — against businesses that have deceived consumers with misleading or false advertising.

Coimisiún na Meán is the media regulator, and it is responsible for overseeing broadcasters and video on demand platforms in Ireland. It has also produced codes of practice relating to advertising standards.

Of the authorities listed above, the CCPC is the authority with the most “teeth” when it comes to enforcement.

The Consumer Protection Act 2007 (as amended) (the “2007 Act”) implemented the EU Directive on Unfair Commercial Practices in Ireland. The 2007 Act applies to business to consumer transactions. The 2007 Act prohibits businesses from engaging in unfair commercial practice with consumers. It distinguished between two types of unfair commercial practice: (i) misleading commercial practices; and (ii) aggressive commercial practices.

The Consumer Rights Act 2022 (the “2022 Act”) gives effect to several EU Directives. Similar to the 2007 Act, the 2022 Act only applies to business to consumer transactions. The 2022 Act imposes conformity requirements on goods or services being supplied to consumers and provides for strong remedies in the event of a breach. The 2022 Act also regulates cancellation rights, off premises and distance contracts and a blacklist and greylist of terms.

The CCPC is the body responsible for enforcement of consumer protection laws in Ireland and has significant powers to investigate and take enforcement action.

Regulation (EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024 expanded the scope of EU design rights so that spatial arrangements of items intended to form an interior or exterior environment can now be registered as an EU design. Additionally, it may be possible to obtain copyright protection for the layout of online stores as literary or artistic works. However, these protections have not yet been tested in the Irish courts.

In 2014, the Court of Justice of the European Union held in Apple Inc. v. Deutsches Patent- und Markenamt (Case C-421/13) EU:C:2014:2070 that trade protection may be afforded to the layout of a store provided certain conditions are met. In this case the court upheld a three-dimensional trade mark consisting of a design in colour of a retail layout and held that such a mark, represented through a collection of lines, curves and shapes, was capable of distinguishing goods and services.