31 July, 2019
An Introduction to Trade Marks
The Trade Marks Act 1996 (as amended by the European Union (Trade Marks) Regulations 2018) defines a trade mark as “any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings”.
What is a trade mark?
A trade mark may consist of words, designs, letters and numerals. It may also consist of the shape of goods or of their packaging and sounds.
Why register your trade mark?
By registering your trade mark you attain an exclusive right to use the trade mark in association with the goods and/or services for which it is registered.
A registered trade mark is an asset which can be sold or licensed.
By registering your trade mark it makes it easier to prevent others from using your trade mark without your permission and assists in preventing others from benefiting from the goodwill and reputation that is associated with your trade mark. The owner of a registered trade mark may issue infringement proceedings against any party who uses their trade mark without their permission.
Classification of goods and/or services
Any trade mark application must contain a list of the goods and/or services to be covered by the trade mark. The goods and/or services are required to be classified under the Nice classification system which divides goods and services into 45 categories.
There are a number of terms within each class that have been accepted by the European Union Intellectual Property Office (EUIPO) and by all national intellectual property offices in the European Union, including the Irish Patents Office (IPO). Choosing these terms allows an application to be processed more quickly.
It is important when selecting the goods and/or services that you want to protect under the trade mark that they will actually be used or are intended to be used within 5 years of registration. If not the trade mark could face a challenge of cancellation.
Where to register a trade mark.
The IPO is responsible for the registration of applications in Ireland.
The UK Intellectual Property Office is responsible for the registration of applications in the UK.
You may also apply for a European Union trade mark through EUIPO which offers a unitary trade mark right granting protection across all European Union Member States. The system is based on filing one trade mark application and the payment of one set of fees. The system is cost-effective for businesses that trade and use their trade mark across the European Union.
Once you have filed an application for registration or have an existing registered trade mark, you may also apply for registration of that trade mark in any of the countries that are members of the Madrid System through the World Intellectual Property Organisation. This system is cost effective if you intend to trade and use your trade mark across a number of different countries. Please contact us for further information on this process and applicable fees.
Where a trade mark application (the basic trade mark application) is filed in one country (which has adopted the Paris Convention) the applicant may within 6 months of that filing, apply for protection in any of the other countries. The subsequent applications will be regarded as if they have been filed on the same day as the basic trade mark application. The representation and the list of goods and/or services of the trade mark must be identical to the basic trade mark.
Application process and route to registration (Ireland, UK and EU)
Trade mark search
We recommend carrying out a trade mark search before applying to register your trade mark in order assess the likelihood of registration or opposition.
File an application
An application to register a trade mark in Ireland, the UK or through EUIPO will require the following:
• Name and address of the owner.
• Details of the trade mark to be registered. A representation of the trade mark you want to register is required if the trade mark incorporates a figurative element. This will be required to be submitted as a JPEG.
• A list of the goods and/or services for which registration is required. Please note, you cannot add goods and/or services after an application has been made.
• If claiming priority, a certified copy of the basic application or registration on which the claim to priority is based must be filed for Irish and UK applications within 3 months. For EU applications, the reference number of the basic application will be required.
• Applicable registration fee.
Once an application is filed, the examination officer will examine the application on absolute grounds.
The trade mark being applied for must be capable of distinguishing the goods and/or services of one undertaking from those of other undertakings. If it is descriptive of the characteristics of goods or services it will not be considered distinctive and refused on absolute grounds.
Irish trade marks are also examined on relative grounds. If the trade mark is identical or similar to another pre-existing trade mark or application it may be refused on the basis of the likelihood of confusion or association between the trade mark and the pre-existing registration or application.
The examination officer will search the national and European trade mark database for similar or identical trade marks registered or pending. If any are identified, the IPO will notify the applicant of its objection.
European Union trade mark and UK applications are not examined or objected to under relative grounds.
If an application is refused on relative grounds, the applicant may seek to overcome the objection by satisfying that the trade mark is not similar or confusingly similar, amend application to remove conflicting goods and/or services, by obtaining consent from the owner of the earlier mark or application or show honest concurrent use of the trade mark going back a period of 5 years or more.
Once a trade mark application passes the examination stage it will be published in the Official Journal of the relevant office. There is a 3 month period from publication for oppositions to be lodged (2 months for UK applications).
If no opposition is received in the publication time period, the application will be registered and a certificate of registration is issued.
The trade mark registration lasts ten years from the date of filing of the application and can be renewed indefinitely for further periods of ten years.
How can FOD assist
Provided below our some of the services that we provide:
• Advice on trade mark strategy
• Trade mark searches
• Prepare and file trade mark applications and on-going management of the application through the registration process
• Responding to trade mark oppositions
• Filing trade mark oppositions
• Trade mark registration renewals
• Licensing of trade marks
• Assignment of trade marks
• Applications for cancellation of non-use
Please feel free to contact us on 091 396 540 for further information on our services or to discuss how we may assist you.
About the Author
Eliza joined Flynn O’Driscoll in May 2018 following the completion of a postgraduate Bachelor of Laws degree (LLB) from the University of Limerick in which she graduated with first class honours. Eliza completed the Law Society….