TOP TIPS: Trade Marks

1. Avoid descriptive names. Trade Marks are meant to distinguish the goods and services of one company from those of another company. Therefore, distinctiveness is crucial.
2. A company registration at the CRO confers no rights to use that name as a Trade Mark or a Brand, nor does the registration of a domain name. Only a Registered Trade Mark confers that right.
3. There are Unregistered Trade Marks and Registered Trade Marks. If you need to defend the former, you can do so in the courts citing the Civil Tort of Passing Off.
4. A typical Passing Off action we estimate will not cost as much as €100k, will take up significant time and resources and will probably require the services of a solicitor and/or barrister.
5. Registered Trade Marks can be used to seek injunctions in courts as they are Government granted monopolies. Typically, these cost less than €10k.
6. Trade Marks are more valuable than patents yet cost significantly less. Using a registered Trade Mark Agent, the cost of filing a Mark in Ireland is usually less than €1k.
7. Following Brexit, the UK is no longer part of European Union Trade Mark system. That means in Ireland you may need to file a UK application to cover Northern Ireland.
8. The ® sign (R in a circle) can be used once a Trade Mark application has been accepted whereas the ™ sign can be used anytime before or after an application. It’s free to use!
9. Try to be aware of unconscious copying when designing logos. For example, it is common for Estate Agents to use the shape of houses in their logo.
10. You don’t have to apply for a Trade Mark before you use it. You can apply at any time but often it’s a good idea to do a Trade Mark search in advance.

One of our partners Mary Rose O'Connor has extensive experience filing and prosecuting International, European and National Trade Marks, including handling matters from Trade Mark clearance to registration and enforcement, and in Trade Mark portfolio management, as well as the licensing and assignment of Trade Marks.

If you would like to have a conversation about this with Mary Rose, you can get her on 01-2992222 or at mroconnor@cruickshank.ie