Registration, Renewal and maintaining Trade Marks

Renewals (Section 48, Rule 38)

In order to keep trade mark protection in place it must be renewed every 10 years. The due date for the renewal of a trade mark is always calculated from the date of Registration. The renewal fee for a trade mark is €250.00 and this can be paid six months in advance of the renewal date. Where a trade mark has more than one class, €125.00 is payable for each additional class. A trade mark which has multiple classes may be renewed in respect of some of the classes only. There is an extended period of 6 months within which the renewal fee may be paid and this incurs an additional fee of €60.

Request the Recordal of a Change of Ownership or Registration of Title (Section 28, Rules 44 & 45)

As a form of intellectual property, the ownership of a trade mark can be sold, transferred, or assigned to another person. If the ownership of a trade mark changes, then this should be recorded by the following steps outlined below. An application for the registration in the register of the title of any person becoming entitled by assignment to a published trade mark application or a trade mark, or a share in such an application or trade mark, or becoming entitled by virtue of a mortgage, licence or other instrument to any other interest in such an application or trade mark, may be made in the prescribed manner by the assignor, mortgagor, licensor or other party to the instrument by which the assignment is made.

if you are no longer the owner of a trade mark, for example, if you have sold it or assigned rights in it, you or the assignor, mortgagor, licensor or other party to the change of ownership can apply to have the change of ownership or interest recorded.

The application must be accompanied by proof of title, or in the absence of such proof, you can state a case detailing the full particulars of the facts upon which his application or claim is based. Such a statement of case must be verified by a statutory declaration. A trade mark assignment form must be completed along with the prescribed fee of €60.00 for the first trade mark and €6.00 for each additional trade mark on the application form. An original or certified copy of the Deed of Assignment/Transfer Agreement evidencing the change of proprietorship must be submitted to support the application.

Licensing (Section 32 & 33, Rules 44 & 45)

A licence is a legal agreement in which an intellectual property owner (‘licensor’) grants a third party (‘licensee’) certain rights to use its intellectual property. A licence to use a registered trade mark may be general or limited. A limited licence may, in particular, apply:

In relation to some but not all of the goods or services for which the trade mark is registered; or
In relation to use of the trade mark in a particular manner or a particular locality

A licence can be exclusive or non-exclusive. An exclusive licence means a licence (whether general or limited) authorising the licensee, to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence

A trade mark Licence application form must be completed along with the prescribed fee of €60.00 for the first trade mark and €6.00 for each additional trade mark listed on the application form. An original or certified copy of the Licence Agreement must be submitted to support the application. The Intellectual Property Office of Ireland accepts Licence application forms and documents filed electronically, as far as scanned in colour or certified as true copy. Licence Agreements require wet ink signatures as outlined by Section 10 of the Electronic Commerce Act, 2000.

It is recommended that you inform the Intellectual Property Office of Ireland if you have entered into a licensing arrangement and have the details recorded on the trade mark Register. You are advised to seek professional legal advice when entering into a contract or licensing arrangement.

Request to Change the Name & Address of Proprietor (Rule 49(1))

You can apply to change the name & address of the proprietor on the Register by e-mail or post. Your application must state -

(a) The name and address of the person making the request

(b) The number of the trade mark or application in question and

(d) Accompanied by the prescribed fee of €6

Request to Rectify or Correct an Error in the Trade Marks Register (Section 67)

If you find that details in the trade mark register are wrong, you can apply to have them corrected.

An application for rectification of the register must state-

(a) The name and address of the applicant

(b) The trade mark number

(c) The exact nature of the amendment for the register for which application is made; and shall be accompanied by a statement setting out fully the nature of the correction, applicant’s interest and the facts upon which he or she relies

(d) Accompanied by the prescribed fee of €6

An application for amendment of the specification of the goods or services must comply with Section 67 (5) i.e. The application should clearly state the proposed new specification and the amendment must not in any way extend the rights given by the existing registration of the trade mark. There is no fee for this amendment.

Request to Alter a Trade Mark (Section 49, Rule 35)

If a proprietor wishes to change his or her trade mark (which may be either a picture or a word or combination of the two) in order to update it, or for some other reason, which must be explained; he or she may make an application to have the mark altered. The alteration is allowed provided it does not substantially affect the identity of the mark. The fee payable in respect of an application for alteration is €60.

Request to Restore a Trade Mark (Section 48, Rule 40)

A mark is removed from the register for non-payment of the renewal fee. The proprietor may make application to have this mark reinstated on the register. This is called Restoration. An application for restoration of a trade mark must comply with Rule 40 (1) of the 1996 trade mark Rules i.e. the request for restoration must be filed within six months of the date of publication of the removal of the mark in the Journal and must give the reason why the mark was not renewed, this normally takes the form of a statement of case. A fee of €125 is required to apply for the restoration and the outstanding renewal fee(s) must also be paid.

Surrender/Partial Surrender of a Trade Mark (Section 50, Rule 36)

If a proprietor no longer wishes to use his trade mark, he may make an application to have the mark removed from the register. This is called a surrender. If a proprietor no longer wishes to use the trade mark in respect of some of the goods for which it is registered, he may apply for a Partial Surrender. There is no fee payable in respect of an application for a surrender/partial surrender.

Revocation

If a registered trade mark has not been used (or use of the mark has been suspended) in relation to the goods or services for which it is registered in the five years since the trade mark was registered, or that there are no valid reasons as to why the trade mark has not been used, revocation proceedings may be instituted to revoke the trade mark registration in respect of all or some of the goods and/or services.

Registration of a Trade Mark (Section 45)

Following the acceptance of a trade mark at examination stage the mark is advertised in the official journal and there is a three month period allowed for someone to oppose the registration of the mark. At the end of the three months, if there is no opposition the fee of €177 is requested in order to register the trade mark. There is a period of two months given to pay the fee and a further €30 per month after this period following a request for an extension to pay.