Trade Mark Overview

Overview

A trade mark is a sign which identifies and distinguishes goods or services as belonging to a particular producer. It serves to identify the product or service and gives customers assurance in relation to its origin. The civil wrong of passing off protects goodwill, brands and reputation. However, the registration of a trade mark significantly enhances protection and eases enforcement.

Any kind of distinctive mark or sign can be registered as a trade mark, provided it can be produced visually or graphically. It may include logos, words, shapes, packaging, colouring, names or a combination.

Trademarks are registered in respect of a particular class of goods or services. They are classified in accordance with the NICE classification, which is an internationally recognized system of classification. The classes of goods and services are published on the Patent Office website.

There are a number of ways to protect trademarks. It is possible to register a national trade mark in Ireland. Protection is limited to Ireland. It may be sufficient if the goods or services are used or are likely to be used only in  Ireland.

International Marks

It is possible to register a Community trade mark with the Office for the Harmonisation of the Internal Market in Alicante. A Community Trade mark gives protection in all EU states.

If, however, there is an earlier trade mark in an EU country, the application for a Community trade mark may not succeed. It may be necessary to withdraw the application and apply only in a limited number of countries where there is no inconsistent trademark .

The Madrid Protocol provides for the registration of multiple national trade marks. An applicant can designate any of a significant number of countries that are party to the Protocol in his national application. This is equivalent to individual filings in the countries concerned. The Community trade mark itself can be designated.

The Irish Patent Office forward the application to the World International Intellectual Property Office in Switzerland. The latter notifies the application to each designated country.

The application may be converted into national filings within 12 months unless refused. The designated countries can grant or reject the trade mark. The matter can be contested in each country in which registration is refused.

The application may proceed in respect of countries that do not contest the application, even if it fails. If the original application is cancelled or fails within 5 years, the international registration falls.

Trademarks can be filed by the applicants or by agents on their behalf. Irish Trademark and Patent Agents act on behalf of applicants to the Irish and European Trade Mark and Patent Office.

Grounds for Refusal

There are various grounds for refusal of registration of a trade mark. A trade mark can be denied registration if

• it does not fall within the definition of trade mark;
•  it is not distinctive;
• it comprises only indications or signs that designate the kind, quality, quantity purpose, time of production, value, geographical origin or other characteristics of the goods or services;
• it consists of signs or indications that have become customary in the language or in the practices of the trade.

The grounds, other than the first, may not be an obstacle if it can be shown that the mark is distinctive in character as a result of usage prior to the application date.

A mark cannot be registered if it consists entirely of a shape arising from the nature of the goods, or which is necessary or gives it value.

A mark which is deceptive or is contrary to public policy may not be registered. Certain marks may not be registered because they are prohibited by various other laws. Many public or State emblems and symbols may not be used without the consent of the relevant  Government Department. The national flag may not be used as part of an emblem if it is misleading or offensive.

Marks that are illegal on general grounds, such as under equality and anti-discrimination laws (e.g., race, religion, gender etc. ) would not be permitted.

Grounds of Objection

The following “relative” grounds of objection may be raised in an application of registration or by way of defence to a claim of infringement.

• the trademark is identical to an earlier mark in respect of identical goods and services for which the earlier mark is registered;
• the trademark is identical or similar to an earlier mark in respect of similar or identical goods and services for which the earlier mark is registered and there is a likelihood of confusion or association  on the part of the public
• the mark is identical or similar to an earlier mark in respect of dissimilar goods and services, but the earlier mark has a reputation in the State (or in the EU in the cases of a Community mark) and the use of the later trademark would take unfair advantage or  would be detrimental to the distinctive character and reputation of the earlier trade mark

The owner of an earlier trade mark can oppose registration if he would be entitled to do so on the basis of civil law. The matter may be raised by the Patents Office or by third parties to whose notice the application comes.

Patents Office Procedure

When an application is filed, it is given a filing number. The application must provide details of the applicant, details of the mark, and a statement of the relevant category of goods or services for which the application is made.

If the mark has already been filed in a state which is a party to the Paris Convention within six months, the date of filing in Ireland is deemed to be the date of filing in that other country.

The Patents Office will make a search of its database for similar marks. Queries may be raised with the applicant. If satisfied, a report will be prepared, and the application will be advertised in the Official Journal in order to publicise it to trademark agents and other third parties.

Third parties can oppose the application within three months of the advertisements. If there is no objection, the trademark is registered at the end of the relevant period. The procedure for registration of a  Community trade mark is similar.

Grant of Trademark

A trade mark, whether Irish, international or European, is granted for an initial ten years. It can be renewed indefinitely for successive ten year periods on payment fees. The mark will lapse if not renewed. If it is not renewed, late payment fees are required for restoration.

A trademark can be cancelled if it is not used for the goods and services concerned. This can only be done if the mark has been registered for five years or more.

The owner of a registered trade mark has the exclusive right to use it in relation to the relevant goods or services for which it is registered. An Irish registered trade mark grants rights in Ireland only. A Community mark gives rights throughout the European Union.

Infringement

Almost any use of the mark without consent will be an infringement of the trade mark. Protection applies retrospectively to the date of filing of the application. However, legal proceedings may not be taken for breach until registration has been completed.

Infringement occurs when the same or similar mark is used in relation to the same or similar goods for which it is registered.  Where goods are not identical, there will be an infringement if there is a likelihood of confusion or of association.

Similarly, there an infringement takes place in relation to identical or similar marks in relation to different categories of goods (for which is not registered).  There is infringement if this takes an unfair advantage or is detrimental to the distinctive character reputation of the registered trademarks.

Examples of infringement include

• affixing the mark to goods or package
• selling goods or supplying services under the mark
• importing or exporting under the mark
• using the mark in advertisements

A person who knowingly applies an infringing mark is deemed an infringer. Comparative advertising, which refers to another’s trade mark is permitted, provided it is honest practice.

Defence

It is a defence to infringement

• that  it involves using another’s valid registered trademark
• use of a person’s  name or address
• descriptive indications
• explanation of purpose and
•  use an earlier unregistered mark in a particular area which has been in continuous use in relation to the goods before the first use of the registered mark

Where goods have been lawfully put into circulation in another EU country and are resold and circulated into Ireland, the  Irish registered mark cannot prevent this parallel importing unless the goods have been changed in some way.

Remedies

A person whose trademark has been infringed can seek

• compensation
• an account of the infringer’s profit
• injunction to stop use
• an order for the erasure, removal or obliteration of the mark
• order for  the destruction of the goods if erasure is not possible
• an order for delivery of the goods.
• order for the disposal and destruction of the goods.

An account of profits can be taken as an alternative to compensation.

In trade mark proceedings possible to seek and obtain pre-hearing applications to .search  against an alleged infringer.  This can include orders to prevent them from reducing their assets, making searches in advance and stopping anticipated breaches. A permanent injunction can issue to assert the holder’s rights after a final trial.

The Revenue authorities have the power to seize counterfeit goods at the behest of the owner of the trademark. The owner must provide an indemnity and proof of ownership of the trademark .

There is a list of actions which are criminal offences under the Trade Mark Act Thee are penalties on summary conviction up to €1269  or on conviction on indictment, imprisonment for up five years or €126 000.

Unfounded Complaints

There are laws aimed at preventing persons from making unfounded claims of infringement. Proceedings can be taken on the basis that the threats are groundless.

This puts the onus on the person concerned to prove their infringement They must show that they own the relevant trademark and that the acts complained of constitute infringements.

The claimant can prove invalid and revoke the registration. The fact of notification of the existence of the trademark does not constitute, by itself, a threat .

Property Nature

Trademarks are property rights like other intellectual property. It is possible to transfer, gift or mortgage a trademark. It can be split in respect of some of the goods only in respect with registration is in place.

A register of trademarks is kept. Dealings with the trademark should be registered, including the following licences transfers, mortgages, transmissions on death, and court orders. As an instrument transferring a trademark, must be in writing and signed.

Unless the transfer is registered, it is ineffective against third parties  Therefore,   if a transfer or mortgage is not registered, a third party may obtain a transfer and register first.

If the application for transfer is not undertaken within six months, the person acquiring the trademark is not entitled to damages or profits for infringement occurring before the date of registration.

Licensing

As with other intellectual property rights, it is possible to grant licences permitting the use of a trademark to a third party The licence can be limited to particular goods or services or may embrace the full e use of their trademark. The licence must be in writing and registered. Failure to register has adverse consequences for the licensees.

The licence must be signed by the holder of the trademark and be in writing. Formerly, stamp duty applied.  An exclusive licence gives the licence holder, the rights of the trademark holders However the trademark owner can still sue for infringement.

The licence holder may be sued by the registered owner and must be joined as a co-claimant unless the court otherwise allows. The owner will not be liable for the costs of the action even though joined unless he takes part in it.

The court can award damages to both the licence holder and the owner depending on the nature of their losses and interests. An apportionment of an account of profits can be ordered  It is possible to change the terms of these rights in the licence.

A  non-exclusive licensee can call upon the owner of the registered mark to take infringement proceedings if there is a breach. If the owner does not do so within two months, but the licensee may bring proceedings in his own name as if he was the owner.

The owner must be joined as coparty, unless the court otherwise permits. The owner who is joined in is not liable for costs unless he participates. As with an exclusive licensee, the court can order that part of the compensation be paid to the owner.

Revocation

A trademark must be used within five years, either by the owner or licensee. Unless there are good reasons for nonuse,  it may be revoked.  If it has been used, but its use has been suspended for five years, it may also be revoked.

It may also be revoked

• where it is liable to mislead the public in relation to the goods and services e.g., relation to origin or nature
• where it has become a common name for the goods concerned,
• if, for example, a name suggests it comes from a particular area but  does not,

Any person can commence revocation proceedings. An application can be made to the patent office or to court. The application must be brought to court if proceedings are already pending in relation to the matter The application can be made as a counterclaim or a defence to a claim of infringement.

A revocation may be partial.It may be referable only to certain categories of goods in respect of which it is registered. If the trademark is revoked, it is deregistered and ceases to exist.

Contesting

A trademark can be contested as invalid. This is on the basis that it was registered in breach of the absolute ground set out above.

It may be shown with the trademarks have become distinctive due to use after registration.  This applies to the second, third and fourth grounds.

A trademark may be invalid with respect to some categories of goods for which it is registered. If the trademark is inconsistent with an earlier trademark the owner of that right loses the right to apply to have it invalidated where he or she has acquiesced in its use for five years. However, the later trademark holder cannot oppose the use by the earlier trademark holder.

The registration of a trademark is presumptive proof that it is valid. It may, however, be challenged.

It is possible to have an association which has a collective mark that may apply to trade associations and other bodies with a collective membership.

Certification & International Marks

Certification marks are those which show origin, material, manufacturer, the performance of service, quality accuracy or characteristics. The certification authority designates the mark A trade body could for example, give its seal of approval for a particular process or certification of origin, quality accuracy etc.

Certification marks must be approved by the Minister for Enterprise Trade and Employment.

International marks is which are very well known internationally, are subject to special protection, even though they are not in commercial use.  Their use may be restrained by injunction within the state.

Community Trademark

The European Community trademark provides the EU system of trademarks. The system is similar to the national right but it is wider. It gives the right to the owner to prevent others from using an identical or confusingly similar trademark in the course of trade.

The community trademark does not prohibit use where goods have been lawfully put on the market in one state and are used in another state.

The community trademark is enforced in the individual EU member states. Generally, proceedings are brought in the place where the defendant is based. If the defendant is not based in any EU state,  it is brought where the claimant is based. If neither is based in the EU,  it is brought in the  Spanish courts.

CT Enforcement

A court can grant an order for compensation, an account of profits,  delivery of goods or destruction of goods.

An order can be obtained to disclose information regarding the origin or distribution of goods which infringe intellectual property rights.

The court can make orders making such requirements as are necessary in relation to manufacturers, distributors, wholesalers and retailers A court order can be made to have goods destroyed, recalled or removed. The court order can be published at the defendant’s expense.

CT Assignment

Community trademarks can be assigned and licensed in the same way as under national legislation. The assignment may be entered under the register. The assignment must be in writing . Exclusive or non-exclusive licences can be granted for goods or services. They can be for the whole or part of the EU.

The principles in relation to acquiescence, revocation and invalidity are broadly similar under the community trademark provisions.