Posted on Monday 18 June 2018 by Cruickshank Intellectual Property
As an intellectual property law firm, we are always keen to remind business owners and individuals just how important obtaining intellectual property protection is. Whether it is patent, trade mark or design protection, safeguarding your business or product is an area that is imperative to success and should not be overlooked.
When it comes to trade marks, it can be hard to know where to start. That is why we thought we would make things a little easier by providing you with the answers to some of the common questions that we get asked here at Cruickshank – from the beginning point of ‘what is a trade mark?’ right through to the details of ‘what are the trade mark classes?’
Firstly, what is a trade mark?
‘What is a trade mark?’ is the most commonly asked question and to help, we defer to the Trade Marks Act 1996. It defines a trade mark as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.”
Once registered, a trade mark imparts exclusive rights on the holder for use of the mark thus granting a certain degree of protection against intellectual property infringement. A trade mark is an indispensable business asset because it carries value and serves as a unique mark of identification for brand owners.
When should I file my trade mark?
Following the understanding of what a trade mark is, when to file a trade mark is another common question we get asked here at Cruickshank. The simplest answer is straight away. We would advise business owners that to protect and maintain their intellectual property rights, the registration process is one which should be started as soon as possible. It should be noted that the process to registration can take some time, but once you have filed your application you establish a priority date thus enforcing protection from that date.
What can I register as a trade mark?
A word or combination of words, letters, colours, numerals, symbols, sounds and drawings are just some of the things which can be registered as a trade mark. Your trade mark must have a distinctive character or characteristic which distinguishes it from similar products or services.
How long will my trade mark last?
The good news is once your trade mark is registered, it can last forever or however long you need it. The only requirement is that it must be renewed through the payment of fees. While Irish and EU trade marks require renewal fee payments every ten years, this may vary in other jurisdictions. By paying these fees, you are thus ensuring your intellectual property protection is enforced and upheld.
Is there a worldwide trade mark?
No, a worldwide trade mark does not exist, however it is possible to obtain international trade mark protection by registering your trade mark in various countries.
To get a single trade mark covering all member states in the EU, you will need to apply for a European Union Trade Mark (EUTM) via the European Union Intellectual Property Office (EUIPO). It is also possible to designate/choose multiple international jurisdictions for your trade mark using the International Trade Mark System, administered through the World Intellectual Property Organisation (WIPO). This only applies to countries which are signatories of this system; currently, this stands at 101 members.
If you require a trade mark in a few countries, applications can be made through their national offices. As always, we advise consulting with a trade mark attorney on how best to approach your chosen marketplaces.
What are trade mark classes?
There is an international classification system applied to goods and services, established by the Nice Agreement in 1957, however it should be noted that while Ireland and the EU use this system, not all countries adhere to it. The system comprises of 45 classes spilt between goods and services; the chosen classes should correspond to the trade mark registered.
Selecting the wrong class is one of the most common mistakes which can happen when individuals choose to file their own trade mark. A trade mark attorney can make this an easier process by advising you on the correct class and drafting the correct specification of goods and/or services.
I’ve applied for my trade mark, what happens next?
Once your trade mark is filed, the application then enters the examination phase, where a period of time is given to correct any issues found with the trade mark application. Once completed, an opposition period begins, allowing for third parties to object to the application. If no opposition is filed, your trade mark is then registered and published in the official Trade Mark journal.
Can I file my own trade mark?
While it is possible to file a trade mark yourself, it is something we would not recommend. We have found many mistakes are made when individuals choose to go it alone and when this happens it can be difficult to rectify and can financially cost more in the long term. To avoid unnecessary issues with your trade mark application we would advise contacting a trade mark attorney which we cover in our next point.
Should I speak with a trade mark attorney?
As an intellectual property law-firm with years of experience, we believe that yes, it is best to speak with an expert. Intellectual property law is complex and to ensure you get the correct protection for your product or service, it is highly advisable you get the right help and advice. A trade mark attorney will have expert knowledge of how the process works, thus ensuring the correct procedures and requirements are in place. Remember applying for a trade mark application is not always costly, we charge for an Irish trade mark application in one class €980+VAT (Based on a straight-forward application) while for an EU trade mark application in one class we charge €1800+VAT (Based on a straight-forward application). The EU Trade Mark application covers 28 countries including Ireland so represents good value.
If you have an idea that requires protecting or simply need an expert in European IP Law, then please get in touch with us today.
The world is constantly changing, to provide the best possible advice we need to keep our fingers on the pulse of European law. If you would like to know the latest news or download helpful publications and guidance, go here