Protecting Your Brand – The Importance of Registering a Trade Mark in Ireland

The importance of protecting your brand has never been as apparent as it is in 2020, as the infringement of intellectual property rights continues to be a significant concern to Irish brand owners across the industry spectrum. Holding registered trade marks is a key method brand owners use to secure their intellectual property rights, and so Lee Taren of our Technology & Intellectual Property team has set out below a brief guide to the procedures and practicalities of registering your trade mark in Ireland.

As holder of a registered trade mark, you will be entitled to statutory rights which protect your mark against any other party which uses a trade mark identical with or similar to your own. A trade mark can take the form of, for example:

• a word;
• a figurative mark, such as a logo;
• a combination of word and figurative elements;
• a shape;
• a sound or combination of sounds; or
• a hologram.

If your trade mark is not registered, any party who uses a mark identical with or similar to your own will be able to do so unless you can establish holding a ‘reputation’ in relation to the mark under the common law action of passing-off, which is difficult to establish and expensive to prove. Amongst other characteristics, in order to succeed in a passing off action you would be required to prove that this other party had made a ‘misrepresentation’ calculated to injure your business or goodwill.

In order to avoid such difficulties, registering your mark as a trade mark with the Irish trade mark office is highly recommended.

Step 1 – Trade Mark Clearance Searches

The first step in registering a trade mark in Ireland will often be to conduct a trade mark clearance search in relation to a proposed mark, which will involve searching the Irish, European and International trade mark registers and identifying trade marks which are already registered and would pose a risk to the proposed trade mark being registered successfully. This would also include conducting a common law search to identify any potential risks in domain names, websites, company names, etc.

These results would then be analysed in order to identify marks which pre-exist on the relevant registers and may pose a significant risk to your application being successful.

Step 2 – Submitting Your Application

Having conducted a clearance search and being sufficiently satisfied that there is no pre-existing mark on the relevant register which would pose a risk to your application (or if a risk has been identified, that sufficient countervailing arguments exist which may be relied upon in order to overcome such risk) the next step will be to submit an application for the registration of your proposed mark to the Intellectual Property Office of Ireland (the “IPOI”).

For Irish trade marks, once an application for registration has been completed, the IPOI will conduct an examination of the application and consider whether registration of the proposed mark should be refused. Refusal may be based on:

• Absolute Grounds – this would apply if, for example, the proposed mark is considered by the IPOI to be devoid of distinctive character, consists exclusively of a shape or other characteristic resulting from the nature of the goods themselves, or consists exclusively of a sign designating the kind, quality, quantity or intended purpose of the goods.
• Relative grounds – this would apply where on receipt of a trade mark application, the IPOI conducts its own clearance search on the relevant trade mark registers and finds that:
  1. The proposed mark is identical with an earlier trade mark and would be registered for goods or services identical to or similar to those for which the identified prior-registered trade mark is protected; or
  2. the proposed mark is similar to an earlier trade mark and would be registered for goods or services identical with or similar to those for which the earlier mark is protected.

If the IPOI completes its examination of the application and does not raise grounds for refusal, or if grounds for refusal are raised but overcome by accepted countervailing arguments, the proposed mark will then be published in the Journal of the Intellectual Property Office of Ireland. There will then be a three month period within which any third parties may file observations or an opposition to its registration.  If opposition is not filed against the trade mark application, the party applying for the proposed mark will then pay a registration fee and registration will be complete.  The registration will last for 10 years and can be renewed indefinitely.

How we can help

BHSM offers a full range of trade mark advisory services and if you are seeking to register a trade mark in Ireland, the EU or internationally, please feel free to contact Joe McVeigh or Lee Taren in our Technology and Intellectual Property Team.

This article is for general information purposes.  Legal advice must be obtained for individual circumstances.  Whilst every effort has been made to ensure the accuracy of this article, no liability is accepted by the author for any inaccuracies.