Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 12 months, if no objections or oppositions arise.
If I register my trademark in Ireland, do I have protection in other territories?
Your registered trademark will be protected in the Republic of Ireland with the exclusion of Northern Ireland.
Do I need to sign a Power of Attorney?
Yes, a Power of Attorney is required.
Are there any benefits from a pre-filing use of the trademark?
Yes. There are three benefits of pre-filing use:
- Demonstrate the mark’s distinct qualities and characteristics
- Defeat third-parties opposing on the grounds of non-distinctiveness
- The first party to use the mark establishes ownership rights (unless proven otherwise)
Will there be problems in case I don’t use my trademark after registration?
Yes. Non-use of a registered trademark makes it vulnerable to cancellation.
What are the types of trademark that can be registered in Ireland?
You may register any graphically reproducible marks that are capable of making your good/service distinguishable: words, slogans, names, holograms, sounds, devices, colours, trade dress and 3-dimensional shapes.
What are the phases of application after a trademark has been filed in Ireland?
There are three phases of trademark application in Ireland namely:
Examination – Your application will be examined based on several factors such as compliance, clarity, classification, conflicts, deceptiveness, descriptiveness and distinctiveness.
Publication – The particulars of your application will be published online including the mark itself, your name and address, the date and number of your application, among other details.
Registration – The application will go through prosecution, and if there any opposition, before the mark will be officially registered.
Are there any types of trademark that cannot be registered?
Applicants cannot register any of the following:
- Marks that are contradictory to Ireland’s standards of moral and/or public order
- Generic words or terms that have broad meaning
- Marks that contain names/flags/symbols of states/nations/international organizations unless responsible authorities have granted permission
- Marks that lack distinctiveness
- Marks that serve primarily as names of geographic locations
- Marks that banned in this jurisdiction
- Marks that intend to deceive the consumers or public
- Marks that are applied for in bad faith
Does Ireland use the "Nice Classification" system?
Yes. Ireland uses the Nice Classification system. Marks that cover several classes of goods/services, single application will cover all of that.
Does the Community Trademark apply for Ireland?
Yes. Community Trademark, currently known as European Union Trade Mark, takes effect in Ireland.
Is there any possibility to claim priority in Ireland?
Yes. You may claim the filing date of your home application as the filing date in Ireland, but you have to meet the following pre-requisites:
- Your home country must be a member of the Paris Convention
- The filing date of your home application is not more than 6 months from the date of filing in Ireland
- Your home country is a WTO (World Trade Organization) member
- Your international registration is recognized in this jurisdiction
What do I need to do to satisfy the use requirement?
You must use your registered mark within 5 years from the date the registration was published. Note that the use must be genuine and must happen in Ireland.
Once my trademark has been registered, for how many years will be valid?
The validity of a registered trademark in Ireland is 10 years which is calculated from the date of application.
What will be the renewal date of my trademark?
You must renew your trademark 10 years after the date when the application was filed.
Is it legal to use my trademark even if it is not yet registered?
Yes. You may legally use your trademark for business purposes.
Does having a registered trademark in Ireland afford me any right?
The “first to use” rule is applicable in Ireland. You don’t need to register your trademark in order to obtain rights. However, registration is preferable because the procedure of enforcing rights in a registered mark is less expensive than enforcing rights in an unregistered mark.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
Yes. Although this jurisdiction does not mandate applicants to prove use, applicants are obliged to submit a statement that the mark is currently being used or that they have legit intentions to use the mark.
What are the grounds for a Trademark Application to be opposed?
The following are grounds for your trademark application to be opposed:
- Proprietary rights violation
- Descriptive marks
- Non-distinctive marks
- When Article 6bis and Article 6septies of Paris Convention are violated
- When rights in company or personal name are violated
- When protected emblems and insignias are used without permit from authorities
Who can contest my trademark registration?
Anyone can object to your registration.
Is it possible to cancel a registration?
Yes. Registered marks may possibly be cancelled on the following grounds:
- Violation of Section VIII.A. Use Requirements
- Registration in bad faith
- Violation of rights under Article 6ter of the Paris Convention
- Mark is proven to be misleading, not distinctive, functional, descriptive, or generic
- Mark uses a protected emblem or badge
- Mark contradicts principles of morality and public order
Are there any rights established by having a registered trademark?
Yes. You will establish the following rights when your mark is finally registered:
- Exclusive rights to use the mark
- Right to take legal action (infringement) against anyone who uses an identical mark
- Right to receive damages due to infringement
How long is the opposition period?
Opposition period starts on the date the application was published in the Official Journal. It will end three months minus a day after the date it was published.
Is Ireland a member of the Madrid System?
Yes. Ireland is a Madrid Protocol signatory.
Do I need to present periodic statement of use?
No. Owners of registered mark are not obliged to submit a periodic statement of use.
When should I renew my trademark?
You must renew your trademark every 10 years to avoid it from getting expired.
What will be the renewal date of my trademark?
You must renew your trademark 10 years after the date when the application was filed.
Is there any documentation that should be presented when renewing a trademark?
No documentation is necessary when renewing a trademark.
If my trademark expires, do I have a grace period?
You still have 6 months to renew your trademark after its expiration date.
What is a trademark?
A trademark identifies products and services in order to distinguish them in the market. The name, the verbal element, is not the only component that distinguishes a trademark; figurative elements such as logos, design, images, colors and sounds also create an identity that can be protected through trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this symbol to show that the trademark has been filed at the trademarks office and is still undergoing the registration process.
SM Some countries use this symbol to show that the service mark has been filed at the trademarks office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
There are many ways to lay claim to your work. Trademarks, patents, and copyrights offer protection for owners of intellectual property. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or a service in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea because we all have them. You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to a problem to secure a patent.
Copyright protect published, performed, or printed creative works. People who produce artistic or musical work seek to protect their “right” to stop others from “copying” what they do. Copyright protection protects any original creative works of authors including:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
A trademark, patent, or copyright are all examples of ways you protect your intellectual property. Your right to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
You recognize a registered trademark by the symbol of a circle-R following the trademark name or graphic image. Various typographic symbols show copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but a best practice is to use a circle-R or circle-C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34). The owner uses this sign to mark what they believe is their brand mark.
- SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
- ®: ®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to mark a copyright. The word copyright is substitute sign for Follow it with the year of the publication and owner's name. Use it whether the work has obtained copyright registration or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe are best describe your business activity.
There are 45 classes – 34 for products and 11 for services – which countries from around the world have standardized for international use under the 'Nice International Classification'.
These classes group all known products and services. You can register the same trademark if there are similar classes, for example, you may register the trademark KING for computers in class 23, and you can also register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is possible, then for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. You can choose multiple classes under which to conduct business if you feel the protection must extend beyond only one class.
You can perform a search of your class with the following tool Trademark Class Search
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation.
It is a good idea to conduct a Study before you start doing business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you find professional help. Our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list identical and similar trademarks, and finally, it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you have some knowledge about trademark registration, you can search using any online trademark search tool. If not, we recommend hiring a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially a trademark search because the entire process is complex and takes time.
Notice that if you do not complete the application process carefully, the registration process could be extended for many months and cost far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace given the increasing number of unregistered and common law marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.
You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.