Q. What is a Trademark?
A. 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.
Q. What types of Trademarks are there?
A. Ordinary/Standard Trademark: 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 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 can not trade in these goods/services.
Series of Trademarks: 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.
Q. How much does it cost to register a Trademark?
A. 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. 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.
Q. Why register a Trademark?
A. Registration makes it easier to protect a Trademark i.e. to prevent others from using the trademark without the owner's permission.
Q. Does a Trademark have to be registered?
A. No, there is no legal obligation on a trademark 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.
Q. How long does it take to register?
A. If the Examiner dosen'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.
Q. 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?
A. 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.
Q. Can I register a name without a logo as a trademark?
A. The Act allows any "sign" to be registered. Most registered trademarks are words, logos or combinations of both. Words and letters may be registered on their own or with logos.
Q. If the status of a trademark 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?
A. 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 trademark may be restored for six months following the date of publication of removal of the mark.
Q. My trademark has lapsed can I restore it?
A. 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.
Q. I have a registered trade mark. Can I alter it and still be covered?
A. 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.
Q. When do I use the 'TM' symbol or the ®?
A. 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.
Q. Does my Irish registration protect the Trademark abroad?
A. The rights conferred by registration of a Trademark in Ireland do not extend beyond this Country, and, 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 Community Trade Mark. 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.
Q. What are the advantages of the CTM/International route?
A. The Community 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 Community 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 CTM, have the same owner(s), an identical mark and the goods and services must be covered by the basic application/registration.
Q. How do I file a Community/International Trademark?
A. CTM applications can be filed either directly to the Office for Harmonization in the Internal Market (OHIM). CTM applications may be filed on-line using e-filing, by fax or by post.
Office for Harmonization in the Internal Market
(Trademarks & Designs)
Receiving Unit
Avenido de Europa 4
E-03080 Alicante, Spain
The application form for an International Trade Mark registration may be accessed via the Patents Office website or the WIPO website
. The WIPO website also has a calculator to calculate the fees due based on the countries designated.