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A Brief Guide to Registering Trade Marks

AUTHOR(S): Deirdre Kilroy
PRACTICE AREA GROUP: Intellectual Property
DATE: 13.11.2018

1. What is a Trade Mark?
2. Some Basic Rules when Choosing a New Trade Mark
3. Why Consider Registering a Trade Mark?
4. I have Registered a Company Name or Business Name for my Brand, why do I need a Registered Trade Mark?
5. What Could Happen if I do not Register my Trade Mark?
6. What’s the Best Practice Approach to Take?
7. What Classes Should I Register in?
8. Where do I Register my Trade Mark?
9. In what Form can I Submit my Trade Mark?
10. How can Matheson Help?

In this guide we explain:

  • what a trade mark is and what it is used for;
  • what the key elements of a trade mark are;
  • why trade marks are registered;
  • the trade mark registration process; and
  • how Matheson’s trade mark services can assist your business.

1. What is a Trade Mark?

  • A trade mark is a 'badge of origin' that informs the public that a particular business is the commercial source of products or services that the trade mark is affixed to.
  • A trade mark gives your business a unique, protectable brand which is readily identifiable by consumers.
  • A trade mark has several functions:
    • it embodies the brand of a business’ product and/or service, carrying value and goodwill;
    • it is used in advertising and for consumer protection; and
    • it distinguishes a business’ goods and services from those of its competitors.
  • Trade marks can be words, numbers, slogans logos, colours, shapes, sounds, motion marks, multimedia and holograms.

2. Some Basic Rules when Choosing a New Trade Mark

  • A trade mark must be distinctive.
  • A trade mark can be made up of words, logos, taglines, pictures, colours, smells or a mixture of any of these.  It can be anything that can be depicted graphically.
  • A trade mark must not be descriptive of the goods or services for which it is being registered.
  • A trade mark term must not be generic and commonly used in the relevant trade.
  • A trade mark must not be deceptive.
  • A trade mark cannot be a common surname or geographical name.
  • A trade mark must not be identical to or confusingly similar with any earlier registered mark. For this reason before applying for a trade mark it is advisable to search the existing trade marks on the registers.
  • In some cases, use of a mark for several years may make that mark registrable, even if it was not registrable when new.

3. Why Consider Registering a Trade Mark?

Customer loyalty and brand recognition are key assets that most businesses invest in.  When you register a trade mark you acquire a potentially perpetual exclusive right to use of your trade mark in connection with the goods or services for which it is registered.  You also secure the right to prevent others from using it.  A registered trade mark is an asset of the business which can be sold, licensed and used as security, just like any other piece of valuable property.

4. I have Registered a Company Name or Business Name for my Brand, why do I need a Registered Trade Mark?

The only way to ensure that you have exclusive rights to a brand is to obtain a trade mark registration.  Sometimes people think that if they register their brand as a business or company name they have the exclusive right to use the name, and this can be a costly error to make.

5. What Could Happen if I do not Register my Trade Mark?

Without appropriate trade mark protection for your brand, it could be copied or used by a competitor.  Consequently, you may lose reputation and goodwill that you have built up in the brand and, as a result, lose out on business.  With use, a brand may acquire unregistered rights but they are difficult to prove and enforce.  A trade mark owner has a right to prevent rivals and infringers from using their trade mark without consent.  It may be difficult or expensive to prove the geographic scope of your goodwill and the ambit of your exclusive rights to use your brand without registering a trade mark.

6. What’s the Best Practice Approach to Take?

Before you begin to use or trade with a brand, register a domain name or launch a product or service, investigate whether you can get trade mark protection for the name, logo or other identifying features.  It is always advisable to undertake pre-application searches before using or applying to register a trade mark.  If your proposed mark or a similar mark is already registered or being used in your industry, you could find yourself legally prevented from using that mark.  Trade mark filing fees are generally non-refundable and rebranding is often a costly exercise, so it is best to be certain about your freedom to operate with your preferred brand before you start trading.

7. What Classes Should I Register in?

There are 45 classes of goods and services in which you can register trade marks in Ireland and Europe.  You should register your mark in the class or classes in which you trade or intend to trade at some time in five years following application.

8. Where do I Register my Trade Mark?

  • You can apply for trade marks on a jurisdiction by jurisdiction basis.
  • It is possible to apply for a European Union trade mark which gives unitary protection in all European Union Member States.
  • You can also apply for registration in the 118 countries that are members of the Madrid Union by making a single application to the World Intellectual Property Organisation (WIPO).  The office of contracting state in which you originally apply for or register your trade mark is referred to as the "Office of Origin".  In your international application, you can designate the countries in which you wish to register your trade mark or you can expand the geographical scope of your international registration under the Madrid System at a later date.

9. In what Form can I Submit my Trade Mark?

  • Generally trade marks can be applied for if capable of graphical representation.
  • A number of reforms to European Union trade mark law by way of the European Union Trade Mark Reform Package came into effect on 1 October 2017.  Prior to that date a European Union trade mark needed to be capable of graphical representation - typically taking the form of a written representation of an image or word, or a combination of both.  One key change under the European Union Trade Mark Reform Package was the removal of the requirement for graphical representation.
  • Trade marks applications may now be filed in any appropriate form using generally available technology.  The representation of the mark must simply be clear, precise, self-contained, easily accessible, intelligible, durable and objective.  Practically speaking, this means that a an European Union trade mark can be in a graphical representation and also in everything from a word or shape, to a hologram or sound provided the mark is not necessary to achieve a technical result or to give substantial value to goods it is used for.  It is hoped that the changes under the European Union Trade Mark Reform Package will make it easier to register non – traditional signs as trade marks.  This change is particularly important to protect intellectual property in the digital age.
  • We have set out below the format types accepted when submitting the European Union trade mark, which you should take account of when preparing materials for the European Union trade mark application process.

  • Another change to European Union trade marks was the introduction of European Union Certification Marks in an effort to harmonise the position on certification marks throughout the European Union.  Certification trade marks serve to guarantee specific characteristics of certain goods and services.  They are owned by the certifying organisation or institution responsible for certifying and monitoring the qualities or characteristics of particular products or services.  While a trade mark applicant will not own the certification trade mark, the benefit of being permitted to bear an European Union certification mark is that it is an indication to the public at large that the applicant’s goods and/or services comply with a given standard set out in the regulations of use and controlled under the responsibility of the certification mark owner.

10. How can Matheson Help?

10.1 Trade Marks

We assist clients manage the full life-cycle of a trade mark.Our lawyers are experts in brand protection and we assist with brand protection in the following ways:

  • Pre-filing advice and clearance searches;
  • Brand strategy advice;
  • Trade mark filing and registration in Ireland, European Union and territories worldwide;
  • Management of multi-jurisdictional portfolios of trade mark assets;
  • Trade mark oppositions;
  • Revocations and cancellations of trade marks;
  • Licensing of trade marks;
  • Infringement, enforcement and dispute resolution;
  • Domain name advice and dispute resolution;
  • Assignments and title transfer of trade marks;
  • Market and competitor analysis and investigations of use; and
  • Counterfeit prevention and parallel imports.

10.2 Contact Details

This brief introduction to trade marks is simplified and is not a definitive statement of the law or practice in this area.  If you would like further information or wish to discuss any trade mark services with us please contact:

Deirdre Kilroy
Partner | Head of Intellectual Property
D:+ 353 1 232 2331
E: deirdre.kilroy@matheson.com

Julia Wheate
Solicitor | Technology and Information
D: +353 1 232 2196
E: julia.wheate@matheson.com

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