Trade Marks
What is a Trade Mark?
Any distinctive sign which can distinguish the goods or services of one trader from those of another and which can be represented graphically, e.g. Kit Kat, Guinness, Coca-Cola.
What types of Trade Marks are there?
Ordinary/Standard Trade Mark: The majority of all trade marks fall into this category and consist of words, slogans, and/or device.
Collective Mark: This is a mark that distinguishes the goods or services of the members of an association from those of others.
Certification Mark: This is a mark that ‘certifies’ the goods or services provided as possessing certain qualities or of a particular standard or other characteristics. The owners of a certification mark cannot trade in these goods/services.
Series of Trade Marks: A series is a number of marks which resemble each other in their important features and differ only in minor features, which do not substantially affect the identity of the mark.
Three-dimensional Mark: This is where a registration is sought for the shape of the item or product or its packaging.
How much does it cost to register a Trade Mark?
The initial application fee is €70. If an application contains more than one class then there is a fee of €70 for each additional class. If applying for a series of trade marks an additional €50 per mark fee is payable from the 3rd to the 6th mark. Once the application is accepted for registration, a registration fee of €177 is payable. A renewal fee of €250 per mark and €125 for each additional class is payable every ten years. Please note that these are statutory fees and if you employ a trade mark agent or solicitor to handle your application, they will charge their own professional fees.
Why register a Trade Mark?
Registration makes it easier to protect a trade mark i.e. to prevent others from using the trade mark without the owner's permission.
Does a Trade Mark have to be registered?
No, there is no legal obligation on a trade mark owner to register their mark; they may use a mark without registering it but it can be much more difficult and expensive to protect an unregistered mark if a dispute arises.
How long does it take to register?
If the Examiner doesn’t raise objections and it isn't opposed, it will normally take around 6 months to become registered. However, if objections are raised, or if your mark is opposed, it may take longer.
If I register the logo in black and white, does that mean that the registered trade mark would be valid for all colours, or do I need to specify colours that I intend to use?
If you register a trade mark your registered rights are for that mark as filed i.e. in black and white. If you file in a specific colour combination your registered rights will be in those colours.
However, your infringement rights extend to similar marks so protection may extend to other colour combinations.
Can a register a name without a logo as a Trade Mark?
The Act allows any "sign" to be registered. Most registered trade marks are words, logos or combinations of both. Words and letters may be registered on their own or with logos.
If the status of a Trade Mark on the Register is “removed”, could I be successful in registering it on foot of a new Trade Mark application or could the previous registrant object?
If a trade mark registration is not renewed it is deemed to be "expired". However, we allow a further period of 6 months for late renewal; an additional fee is charged for such late renewal. The result of this is that the status of the earlier registration depends on when it expired and whether the 6 months period for late renewal has passed. You should bear in mind, however, that a trade mark may be restored for six months following the date of publication of removal of the mark.
My Trade Mark has lapsed, can I restore it?
The request for restoration of a trademark must be filed within six months of the publication of the removal of the mark. A fee of €125 for the restoration in addition to the renewal fee must accompany the request.
I have a registered Trade mark. Can I alter it and still be covered?
Under Section 49(1) of the Trade Mark Act the proprietor of a registered trade mark may apply in the prescribed manner to the Controller for leave to add to or alter the trade mark in any manner which does not substantially affect its identity; and the Controller may refuse leave or grant it on such terms and subject to such limitations as the Controller thinks fit. You should send your request in writing with the prescribed fee of €60 and the examiner will consider your request to amend the mark.
When do I use the ‘TM’ symbol or the ®?
The 'TM' symbol can be used alongside a mark at any time, whether or not it is registered. It indicates that the use of the relevant 'sign', whether a word, phrase, picture, logo, letter, numeral, shape, colour, sound, scent or aspect of packaging is being claimed as a trade mark. The ® symbol may only be used with a registered trade mark.
How can I change my Address for Service/Proprietor details on my Registered Trade Mark?
There is no fee to be recorded as the address for service.
- In order to be recorded as the address for service you need to be within the EEA member states, (e.g. Canada or USA is not within the EEA member states) so therefore they can’t be recorded as the address for service.
- If you are not the Proprietor and you wish to be recorded as the address for service, they will need authorisation from the proprietor to state that they have authorised the person to act as the address for service and must be signed by the proprietor and send in scanned copy by e-mail or post. If you are the proprietor and within the EEA member states just send in the letter request by e-mail or post and quote the Trade mark/Patent Number.
Change of Name and address of Proprietor for Trade marks
The prescribed fee to change of name/address cost €6. If they change both on the same letter it costs €6. If the change the name of Proprietor they must include copy of the change of Name Certificate (an original or certified copy of change of name is no longer required) only if the document is not in English, we require a certified copy of the English translation. No proof is required for change of address of proprietor, just the new details of address on the letter request and sent in by e-mail or post.
I wish to register a Security Interest/Licence of a Trade Mark with the Office. What is the procedure for filing such applications?
Security interest/Licence applications 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. An original or certified copy of the Licence Agreement/Security Interest evidencing the agreement between the parties must be submitted to support the applications.
Does my Irish registration protect the Trade Mark abroad?
The rights conferred by registration of a Trade mark in Ireland do not extend beyond this Country, and in fact, provide protection in the Republic of Ireland only. It is necessary to seek registration in each country in which the owner wishes to protect the mark. If you are interested in protecting your mark in other European (EU) countries you should consider applying for a European Union Trade Mark. (link to EU TM) International protection can be obtained by way of an application to WIPO (the World Intellectual Property Organisation) under an international treaty called the Madrid Protocol. (link to Madrid Protocol)
What are the advantages of the EUTM/International route?
The European Union Trade Mark system applies in the European Union and allows the applicant to apply to all the countries of the EU using a single registration procedure.
The Madrid protocol system is administered by the International Bureau of the World Intellectual Property Organisation (WIPO). It gives the applicant the option to apply to protect a trade mark in several countries by filing one application form, in one language, with one set of fees in Swiss francs. Unlike the European Union Trade Mark where the applicant must choose all the EU countries, an applicant for an international trade mark may designate any countries that have ratified the Protocol. An International application must be based on either a previous national or EUTM, have the same owner(s), be an identical mark and the goods and services must be covered by the basic application/registration.
How do I file a European Union/International Trade Mark?
EUTM applications can be filed either directly to the European Union Intellectual Property Office. EUTM applications may be filed on-line using e-filing or by post/courier service.
European Union Intellectual Property Office
Receiving Unit
Avenido de Europa 4
E-03080 Alicante, Spain
The application form for an International Trade Mark registration may be accessed via the Intellectual Property Office of Ireland website (on the Madrid Protocol page) or the WIPO website. The WIPO website also has a calculator to calculate the fees due based on the countries designated.