TM Registerability

Nature of Trade Mark

A Trade Mark is a sign which is capable of being represented graphically and capable of distinguishing the goods and services of one business from those of another.  It may include words, designs, letters, numbers, shapes or patterns provided that such signs are capable of being represented on the register in a manner which enables the Controller and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

A sign is widely defined, but it does not include the mere shape or another characteristic which results from the nature of the goods themselves, which is necessary to obtain a technical result, or another characteristic which gives substantial value to the goods.  This may be capable of being protected as an industrial design.

Unlike the position that once applied, it is not necessary to show that the trademark is in use.  It suffices that it is in use or that there is a bona fide intention to use it.

The Trademarks Act 1996 allowed registration of services for the first time.  Before that, there was no specific power to register service marks and there were several artificial methods to protect trademarks in relation to services.

Grounds for Refusal

There are both relative and absolute grounds for refusal of registration. The following are absolute grounds which disqualify a sign from registration as a trade mark.

The common description of the goods cannot be a trademark. The following may not be registered as trade marks:

• trade marks which are devoid of any distinctive character;
• trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services;
• trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

A trade mark shall not be refused on the above grounds if, before the date of application for registration, it has, in fact acquired a distinctive character as a result of the use made of it.

Capable of Distinguishing

A trademark must be capable of distinguishing the product or services.  The distinctiveness of the mark must be considered in relation to how it impacts members of the public.  A mark which lacks a distinctive character is not registerable.

Relatively minimal content may serve to distinguish.  Where a trademark already has an established reputation, even if it is a very common word, it may be capable of being a distinguishing mark.

Names are capable of qualifying as trademarks in exceptional circumstances.  Their registration cannot prevent persons from using their own names.

Descriptive Marks

Descriptive marks may not be registered. A trademark should not merely be a description of the goods or what they do. A trademark which consists exclusively of signs or indications which serve in the trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services is descriptive.

A mark which consists extensively of signs or indications that have become customary in the current language or are bona fide and established practices in the trade is denied trademark registration.

Descriptive terms should be available to all persons in the business.  One person should not be allowed a monopoly over a common expression. The descriptive word need not be literal.  It may resemble the descriptive word or be composed in such a way that it evokes it in the minds of consumers.

Places

In the absence of well-established pre-existing use, a geographic location will not qualify as a trade make.  Where goods have no connection with geographical place, and none is suggested, the fact of a geographical name will not automatically disqualify them.

There are separate protection for designations of origin under EU regulations.  Where a designation is registered for particular products, trademark applications for such protected designations of origin will be refused in relation to the same class of product.

The above grounds of refusal based on the absence of distinct characteristics descriptive or customary use may apply where the trademark had required a distinctive character as a result of widespread use. This may happen where the trademark is originated by the trademark holder and passes into common use. (E.g. Hoover) .

Slogans Flags & Emblems

Slogans may become associated with a product in a distinctive way. A slogan, by itself, will not generally qualify. However, a slogan may acquire a distinctive link in the public minds with goods in which event it may be capable of registration. It may be capable of being trademarked in conjunction with a distinctive mark.

A trade mark which consists of or contains any State emblem of Ireland or any insignia or device so nearly resembling such emblem that it may be mistaken for such emblem shall not be registered unless the Controller is satisfied that consent for its registration has been given by the Minister.

A trade mark which consists of or contains a representation of the national flag of the State, shall not be registered if it appears to the Controller that the use of the trade mark would be misleading or grossly offensive. The Controller may refuse to register a trade mark which consists of or contains any badge, device or emblem of a public authority unless such consent as is required by the rules is obtained.

Shapes

A shape may be capable of qualifying as a trademark.   However, it may not be registered where it consists of a shape which results from the goods themselves, which is necessary to obtain a technical result or a shape which gives substantial value to the goods. The principle is shapes that are an inherent part of the goods themselves should not be protectable.

Shapes are potentially protected as registered designs.  Shapes which give substantial value may qualify as registered designs.  This is also the case where the shape is part of the aesthetic aspects of fashion goods, jewellery or ornaments.

Sounds and Smells

Sound may be trademarked, but it must be capable of being represented graphically so that persons making searches can be aware of its scope. Short pieces of very distinct music or sound may qualify.

Smells and tastes can, in principle, be trademarked, but it is not clear whether they be represented graphically sufficiently so as to constitute a trademark. A colour may qualify, provided that it is sufficiently distinct through use, although this may, in practice, be difficult.

Prohibited Marks I

A trademark which is contrary to public policy or accepted principles of morality is not permitted.  This may include trademarks which are discriminatory and offend commonly held standards. The fact that a mark is distasteful does not necessarily mean that it will be disqualified.

A trademark which may deceive the public, for instance, as to the nature,  quality and geographical origin of services is not permitted.  The Controller has broad discretion to prohibit trademarks which might be misleading or make inherently false claims.

A mark which is prohibited from general use by law may not be trademarked. This includes certain national names and symbols as well as other words exclusively reserved by particular legislation for particular uses.

A trademark application made in bad faith is prohibited.  An application made with no bona fide intention to use it or for the purpose of blocking competitors may be prohibited under this heading.  Trademarks registered for ulterior purposes may similarly be disqualified. Registrations designed to damage competitors or take unfair advantage of their reputation may be refused.

Prohibited Marks I

A trade mark shall not be registered if it is contrary to public policy or to accepted principles of morality, or it is of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service.

A trade mark shall not be registered if or to the extent that its use is prohibited in the State by any enactment or rule of law or by any provision of EU law, or the application for registration is made in bad faith by the applicant.

A trade mark shall not be registered if or to the extent that

• its use is prohibited in the State by any enactment or rule of law or by any provision of European Union law, including those for the protection of designations of origin and geographical indications or where the State or the European Union is a party to an international agreement protecting designations of origin and geographical indications; or
• its use is prohibited in the State by any European Union legislation or international agreements to which the European Union is party, providing for the protection of traditional terms for wine; or
• its use is prohibited in the State by any European Union legislation or international agreements to which the European Union is party, providing for the protection of traditional specialities guaranteed; or
•  it consists of or reproduces in its essential elements, an earlier plant variety denomination registered in accordance with the law of the State or European Union legislation or international agreements to which the European Union or the State is a party.