The Trade Mark Guidebook
European Patent, Trade Mark and Design Attorneys
FRKelly is a leading specialist in intellectual property law, with offices in Dublin and Belfast. Working with world-class institutions, corporate clients, academic and research institutes and SMEs, we offer a range of patent, trade mark, design, domain name, copyright and renewals services; always with a professional and client-focused approach. We understand how best to protect your intellectual property, not just in Ireland, the UK or Europe, but all over the world.
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Trade Mark Fundamentals
Intellectual Property Intellectual property (IP) is a type of virtual property owned by an individual or a company. It is a virtual property because it refers to creations of the mind, as opposed to physical property. However, like physical property, IP can be sold, mortgaged, transferred, or exchanged. IP falls under the broad headings of: Patents Trade Marks Designs Copyright
Trade Marks A trade mark is a sign used to distinguish products or services of an individual or enterprise from those of others.
Purpose of a trade mark The purpose of a trade mark is: • To deter others from unauthorised use of your brand name or image • As an indicator of origin for consumers • Trade marks can be fully or partially assigned, licensed or mortgaged to raise capital • A registered trade mark can prevent any later registration of a confusingly • similar mark • Acts as evidence of ownership of your brand name or image
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Trade Mark Fundamentals
Trade Mark Classes All goods and services are divided into 45 classes. You should try to gain exclusivity for your sign in respect of the goods and/or services you are intending to trade in the future, for example, class 29 for cheese and cheese products. It is advisable to cover the specific goods and services of interest in the usual way in which they are described, as well as any broader terms for which protection is sought.
How long does a trade mark registration last? The initial life of a registration in most countries is 10 years. This can be renewed indefinitely.
Where should i register my trade mark? To ensure you have necessary protection, apply to register your mark in whichever countries you trade or intend to trade. Then, if someone begins to offer goods or services similar to yours using your mark, you can take action against them. Â Most Irish or UK companies would apply to register either nationally or seek a Community Trade Mark (CTM) registration. A CTM registration provides exclusive use of the trade mark in all member states of the European Union. With just one application, protection can be obtained in all countries of the EU.
Avoid conflict with prior trade marks When devising a new trade mark, it is advisable to carry out a search of the trade mark register to ensure that the chosen trade mark is not identical or confusingly similar to a prior registration for the same or similar goods or services. Trade mark searching is a highly skilled business and should be conducted by a specialised trade mark attorney.
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The trade mark application process
1.Filing an application
To pursue Trademark protection, a trademark application must be filed at the relevant Patent Office.
2.Examination
The application will be examined by the Patents Office to ensure that the mark is distinctive and not deceptive. The Patents Office will also carry out a search of the registers to ensure the mark does not conflict with any prior application or registration.
2a.Objection
If the mark is problematic, there will be an objection raised against registration and may be used as a basis to refuse registration of the mark.
3.Application accepted 4.Publication
If acceptable, the trade mark will be advertised in the Patents Office Journal so that other traders can have an opportunity to oppose.
5.Registration
4a.Opposition
If the mark is problematic, there will be an opposition filed against the application and may be used as a basis to refuse registration of the mark.
If no opposition is encountered the trade mark will proceed to registration and the Certificate of Registration will issue. The entire process can take as little as 9 months.
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Protection routes and systems
Which trade mark system is right for you? You should analyse where your business is going in terms of overseas growth outside of Ireland. If you use, or are likely to use, your brand outside of Ireland in the short to medium term, you should contact us to discuss whether the Madrid system, the CTM or national trade mark registrations are viable options for protecting your brands in export markets. Â If you are interested in expanding your brand into export markets overseas, then your business needs to consider trade mark registration and clearance. Registered trade mark rights are territorial, and only provide protection in specific countries where trade mark registrations have been secured.
1. National Trade Mark System In most cases you will want to file your trade mark with either the Community or Madrid system as they allow you to register your trade mark in many countries at once. However, in certain circumstances, such as when there are conflicting marks, you will need to register on a country by country basis.
2. Community Trade Mark Application System If your business is expanding its brand across the European Union countries only, then obtaining a Community trade mark registration offers good protection, and avoids having to secure national protection in each of the EU member countries. A Community trade mark (CTM) registration offers a unitary trade mark right in the EU, under which a single trade mark registration provides protection in all member states of the EU, thereby saving time and costs for brand owners.
3. International Registration System | The Madrid Protocol The Madrid Protocol offers businesses the opportunity of obtaining and maintaining protection for their brands in more than 80 countries worldwide, including the European Union, through a single international application designating countries of interest.
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Tips for choosing a trade mark
1.
Where possible use invented words
2.
Use words which have no connection to the goods in question (Apple for computers, Elephant for insurance)
3.
Use words which allude to characteristics of the goods but are not directly descriptive (e.g. Innocent for natural drinks). Ask yourself, how would I finish this sentence: “It’s almost as if the goods are ....�
4.
Try to incorporate two or more words together in a combination which has no meaning
5.
One word marks which have some relevance to the goods are the most likely to have potential problems
6.
If the mark is too descriptive, you could incorporate a logo but this will only help you with registration, it might not provide you with sufficient differences to overcome issues from similar marks
What is the next stage? Having assessed your trade mark, please feel free to contact us and we would be delighted to discuss your trade mark strategy further with you.
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