Trade marks are badges of origin used in connection with goods and services. They serve to distinguish those of one undertaking from those of another manufacturer, business or provider.
In Ireland, trade marks can be registered or unregistered.
What can be trademarked?
The Intellectual Property Office of Ireland (IPOI) provides that a trade mark may consist of:
- Words, including personal names
- Designs, logos, letters, numerals or the shape of goods or of their packaging
- Other signs or indications that are capable of distinguishing goods of one undertaking from those of others
At a minimum, a trade mark must be of distinctive character.
What cannot be trademarked?
Section 8 of the Trade Marks Act 1996 details what cannot be trade marked.
For example, a trade mark will be refused registration if it:
- Is devoid of distinctive character
- Is not capable of distinguishing goods or services of one business from those of other businesses
- Consists exclusively of signs or indications that designate essential characteristics of goods or services, e.g. their quality, geographical origin etc.
- Is likely to deceive the public
Why should you register a trade mark?
A trade mark is a highly valuable asset as it can be retained in perpetuity, if used, and renewed every 10 years.
Trade mark registration grants a statutory right, subject to certain conditions, to prevent others from using the trade mark without the registered proprietor's permission - i.e. to prevent infringement.
Registration also confers an exclusive right to authorise others by means of licensing to use the trade mark for the goods and / or services for which the trade mark is registered.
While registration is not obligatory, it makes it easier to prevent others from benefiting from the reputation established by the use of a trade mark. Registration allows the proprietor of the registered trade mark to take infringement proceedings before the court.
What is considered trade mark infringement?
A person infringes a registered trade mark if the person uses in the course of trade a sign which is identical with the trade mark for goods or services which are identical to those for which is it registered. Where an identical mark is used for similar goods or services or vice versa a likelihood of confusion must also be proven in order to amount to infringement.
For more information and expert advice, contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.