Emer Higgins (Dublin Mid West, Fine Gael)
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I am delighted to join members today and I am pleased to present to the committee a draft statutory instrument entitled Trade Marks (Madrid Protocol) (Amendment) Regulations 2024. As the committee will be aware, a trade mark is a sign that distinguishes the goods and services of one business from those of another. The trade mark is a valuable business asset that can attract and retain customer loyalty and create value and growth for that business. A trade mark registration is one of the most effective ways for a business to build and defend its brand.

The draft statutory instrument proposes an amendment to the existing statutory instrument, SI 346/2001, Trade Marks (Madrid Protocol) Regulations 2001. That statutory instrument gave effect in the State to the provisions of the Madrid protocol, which is an international agreement concerning the international registration of trade marks administered by the World Intellectual Property Organization, WIPO. The Madrid system, which is governed by the Madrid protocol, is a WIPO-administered system that allows trade mark owners to protect their trade mark in several countries by simply filing one application in one language with one set of fees in one currency.

It offers a smart business solution for any business seeking to protect and manage its trademarks in international markets.

The proposed amendments to the draft statutory instrument are technical in nature and relate to the effects of an international trademark registration on the corresponding national trademark. An international trademark application must be based on a national trademark application or registration and up until now the specification or classes covered by the international trademark could not be broader than the list of goods and services protected in the national trademark. However, on foot of an amendment to Rule 21(3)(d) of the Madrid Agreement, it is now possible to have a partial replacement of a national trademark registration with an international registration, namely, for only some of the goods and services covered by the national trademark to be listed in the international registration. Consequential amendments are also required to Form No. 2M in the Schedule to the 2001 regulations. These facilitate the changes on Form No. 2M in the 2001 regulations, which are being substituted for a new, updated form in the 2024 regulations. Form No. 2M allows the owner of an international trademark to select a full or partial replacement of the goods or services to which the international trademark applies and to have this recorded in the Irish trademark register. The form has also been amended to reflect the new name of the controller of intellectual property and the change of name of the office to "Intellectual Property Office of Ireland". Ireland, as a contracting party to the Madrid Protocol, which is an international agreement, is obliged to carry out these amendments to its national legislation by 1 February 2025.

I would also like to explain the process required to approve the draft statutory instrument. In my role as Minister of State in the Department of Enterprise, Trade and Employment, I have the power to make domestic regulation to give effect in the State to the provisions of the Madrid Protocol, including the power to amend existing regulations. Section 3(3) of the Trade Marks Act 1996 specifies that any order or regulation pertaining to the Madrid Protocol must be laid before both Houses of the Oireachtas. A regulation cannot be made until a resolution approving the draft statutory instrument has been passed by both Houses. It is quite unusual to have a draft statutory instrument before a Joint Committee but that is why we are here today. I am asking the committee to endorse this draft statutory instrument before it goes to the Houses. As I am sure the committee will appreciate, it is important that we continue to ensure that Ireland's intellectual property legal framework remains current, flexible and effective for its users. The proposed amendment will improve the trademark regime for rights holders and businesses and ensure that they can continue to protect and manage their trademark rights in international markets. Should the committee approve the draft statutory instrument, I will then sign the regulation into law. The regulation will then come into effect on 1 February, as that is the deadline for the rule change for the signatories to the protocol, of which Ireland is one.