Trade Marks in Ireland1 January, 2017
Benefit of Trade Mark Registration
The owner of a registered trade mark enjoys the exclusive right, for so long as the trade mark is registered, to use that trade mark in connection with the goods or services covered by the registration in the country or countries of registration. In the event a competitor subsequently seeks to use the same or a confusingly similar trade mark to market the same or similar goods or services in that country, the owner of the earlier registered trade mark would have grounds to challenge that competitor on the basis of its prior trade mark rights. Registered trade marks are regarded as property and as such can be sold, assigned or licensed. Trade marks are also useful for building brand awareness, generating goodwill and the level of quality and reputation associated with a particular product or service.
Eligibility as a Trade Mark
To be eligible for trade mark registration certain statutory criteria must be satisfied. A trade mark, for example, may consist of words (including personal names), designs (including logos), letters, numerals, the shape of goods or their packaging, colours and even sounds (or any combination of these) so long as in each case the trade mark is capable of being graphically represented and is sufficiently distinctive. A trade mark, however, which is purely descriptive of a product or service or any feature, benefit or characteristic of that product or service (or if it is already a term commonly used in the trade) is usually regarded as non-distinctive and will likely be objection to objection and refused registration.
The first step involved in pursuing trade mark registration is to carry out a full search to determine whether the proposed trade mark is available for your intended use and registration in the country or countries concerned and to assess the level of commercial risk, if any, associated with such use. The search is quite comprehensive and in Ireland, for example, covers trade marks which are identical or similar in sound, appearance and meaning and/or trade marks that cover identical or similar goods or services not only in Ireland but also those trade marks applied for through the European Union Intellectual Property Office (“EUIPO”) (the Office responsible for handling EUTMs (mentioned at 1.6 below) and any applicable international registrations.
File an Application
Depending on the results of the availability search, the next step is usually to file an application for trade mark registration in the relevant country or region.
Registration Procedure and Timing
In Ireland, an application for trade mark registration, if successful, would grant registered trade mark rights in Ireland only. A separate application would be required to pursue trade mark registration in any other country or registration.
The average time at the moment to complete an application for trade mark registration in Ireland is about 8 months from the date the application is first filed, assuming no complications or oppositions arise. The timing would be similar in the United Kingdom.
For EUTMs, the time frame to complete the trade mark registration process is usually shorter, currently about 6 months from the date of filing, again assuming no complications or oppositions arise. The term of registration, once registered, is 10 years from the date of first filing the application and the trade mark may be renewed and maintained for consecutive 10 year periods upon attending to the necessary renewal requirements and paying the prescribed renewal fee.
A group registration also exists whereby a single application for trade mark registration may be filed before EUIPO in Spain and if successful, will grant registered trade mark rights for the goods and services designated under the application in all EU Member States simultaneously. These are referred to as European Union Trade Marks or EUTMs and can often be a more cost effective option. We understand provision will be made post-Brexit to separately maintain the UK element of a EUTM but the mechanics of this have not been agreed.
The registration costs involved, like the additional search costs, will depend on the scope of cover sought. The filing fees for any application will depend in each case on the type of application and the number of classes designated under that application. A classification system exists for all types of goods and services and on filing it is necessary to identify the class into which the goods or services fall and to designate the actual goods or services claimed within that class. This means that an application for registration, if successful, will grant you exclusive rights to use the trade mark in connection with the goods or services in the classes designated under the application in the country in which it is filed for as long as that trade mark registration remains in force.
We would be happy to provide an estimate of costs for your registration requirements with more specific information as to the type of products or services you intend to market and where.