Protecting Your Trade Marks

Trade marks are a key part of your brand - whether it is your company name, a product name, a logo or even a slogan. However, filing a trade mark application is only the first step. You also need to know what you are protecting, where you are protected, and how to keep others from using something too similar.

Here are some practical things to keep in mind if you want to make the most of your trade marks.

1. Goods and services: what is being protected?

When you register a trade mark, it is not just about the name or logo. You are registering it for use in connection with specific goods and services. These are grouped into classes - for example, clothing, software, or consultancy services - and it is important to choose the right ones.

Think about:

• What your business does today
• What you might offer in the next few years
• Whether your brand might be used in new product lines or sectors

If you do not get this right, your trade mark may not protect you in the areas that matter most - and it could leave you exposed.

2. Enforcing your trade mark: keeping an eye on the market

Trade mark rights do not enforce themselves - you need to monitor the market. Watch services can help by flagging when someone applies for a mark that is similar to yours, giving you a chance to oppose it before it is registered.

Consider:

• Setting up a trade mark watch for key markets, for example Ireland, the EU, UK, etc.
• Monitoring competitors and new market entrants
• Taking action early - it is usually cheaper and more effective than trying to deal with an issue after a competitor has launched its competing product or service offering

Being proactive can help stop others from using confusingly similar names or logos and protect the distinctiveness of your brand.

3. Use it or risk losing it

Once your trade mark is registered, it is valid for 10 years and can be renewed after that. However, if you do not actually use it for a continuous period, typically 5 years, it can be challenged and removed from the register.

That means you should:

• Use the trade mark publicly and consistently
• Keep records of when and how it is used - on packaging, your website, marketing materials, etc.
• Use the version of the mark that you registered, or make sure any changes do not alter the distinctiveness of the mark

If you are not using a mark anymore, it might be better to file a new application for the updated version to ensure you are adequately protected.

4. Where do you need protection?

Trade mark rights are territorial. If you register in Ireland, it will not protect you in the UK or the rest of the EU, and vice versa. Think about where your business operates - or where it might grow - and get protection in those markets early.

Your options include:

• An Irish trade mark - through the Irish Patents Office
• An EU trade mark - covering all EU Member States
• A UK trade mark especially important post-Brexit
• International protection through the Madrid Protocol

There is no one-size-fits-all answer, it depends on your budget, risk profile, and business strategy.

5. Working with third parties: protecting more than just your trade mark

If you are working with external designers, manufacturers, distributors or licensees, make sure your wider IP and business interests are protected.

This includes:

• Using confidentiality agreements before sharing sensitive information or ideas
• Making sure contracts clearly state who owns any IP that is created
• Putting limits around how third parties can use your trade mark or branding
• Being clear on who is responsible for protecting the brand in different markets

Also, think about protecting trade secrets or confidential business information, like formulas, customer lists or supply chain details. This is especially important when entering new partnerships or markets.

Final thoughts

Trade mark protection is not just about getting the name registered - it is about actively managing and enforcing your rights, and thinking ahead. If you are unsure whether your current protection is fit for purpose, or you are expanding or working with new partners, it is worth reviewing your IP strategy with a legal adviser.

For more information and expert legal advice on how best to protect your intellectual property rights, please contact a member of our award-winning Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.