As part of Briffa’s expansion into Ireland, our IP solicitor in Cork, Mark Eiffe, examines some of the matters that Irish startups and SMEs should consider when it comes to protecting their trade marks.
Trade marks are a piece of intellectual property. They act as a badge of origin or a calling card for your business. They can be assigned, sold and licenced to third parties for a fee, just like any other asset.
The body responsible for examining and registering the ownership of trade marks in Ireland is the Intellectual Property Office of Ireland / Oifig Maoine Intleachtúla na hÉireann (‘IPOI’).
“Why should I register my trade mark?”, we hear you ask.
“I have a registered business name with the Companies Registration Office, money is tight at this early stage of the business’s life, and we can’t afford to spend thousands of euros on legal fees”.
Well, a trade mark essentially protects your business’s good name. It protects the brand equity you have built up through your innovative product, disruptive service or the quality of your staff in the minds of the public, i.e. your potential customers.
Who doesn’t automatically think of the best butter in Ireland when they see ‘KERRYGOLD’, or anything but the finest of Cork’s exports, Barry’s Tea, when they see either product in an ad or on the supermarket shelf?
Let us not forget the famous Mr. Tayto. Could the waving, top-hat-wearing, yellow humanoid spud be indicative of anything else but ‘The Original Irish Crisp’?
I think not.
The gold-coloured Guinness harp on a black background, the Aer Lingus shamrock, Stripe Payments and Eir are other well-known examples of Irish trade marks.
The point is that these names and their associated logos, through their distinctiveness, immediately conjure up positive connotations of the product or service that they provide in the minds of their customers.
A business name registered with the Companies Registration Office does not necessarily prevent someone else from piggybacking on your good name. But, having a registered trade mark, whether in Ireland, EU-wide or further afield (depending on what markets you intend to operate in), is the best way to provide your business or organisation with the strongest possible legal protections against others copying your logo or trying to pass themselves off as being associated with you.
Trade marks are territorial rights.
The Intellectual Property Office of Ireland (IPOI) is responsible for the registration of Irish national applications. Once the trade mark is registered in Ireland, it lasts for a ten-year period. This period can be extended indefinitely on payment of a renewal fee every ten years.
The European Union Intellectual Property Office (EUIPO), based in Spain, offers trade mark protection across the 27 countries of the European Union. The system allows you to file one trade mark application and pay one set of fees. This system is a cost-effective method for businesses that trade across the EU.
Even further afield, international trade mark applications can be filed via the World Intellectual Property Organisation in Switzerland.
Despite the different governing bodies, registering a trade mark as an Irish business is not as expensive as you might think. In fact, protecting your trade mark is one of the best euro-for-euro spends your business can make in its early years, such is the value of the intellectual property once the business matures.
Identify the trade marks that you want to register and perform a clearance search to ensure the mark is available, and won’t infringe upon another mark.
Draft and file your application (including the applicable fee). This can be a tricky feat to get right. It’s a good idea to engage the services of an experienced intellectual property lawyer. The official fee to file one trade mark in one class is €70, plus an additional €70 for each additional class. If you work with an IP lawyer throughout the registration process, you’ll all need to pay their fees – we can quote our professional fees following a consultation meeting with you.
The IPOI will examine your application to check that there are no absolute grounds for refusing the registration under the Trade Marks Act. If there are no grounds for refusal, the application will be published in the Journal of the Intellectual Property Office of Ireland / Iris um Oifig Maoine Intleachtúla na hÉireann.
Once published, there is a three-month period within which parties may oppose its registration accompanied by a written statement of the grounds on which the opposition is based.
Once the opposition period expires or the opposition has been overcome, the mark proceeds to registration.
Registration is valid for ten years, after which it is renewable in perpetuity, provided certain conditions continue to be met. Those conditions are, primarily, that you continue to actually use the trade mark relating to the goods or services for which it was registered.
Under Irish law, the following can often be registered as trade marks if they meet the relevant criteria:
If you’d like to learn more about the criteria for registration, check out our post: What Can Be Registered As A Trade Mark In Ireland?
Briffa is on hand to manage all of your Irish, EU and international trade mark registrations, just get in touch using the form below to discuss your case and set up a complimentary consultation with one of our trade mark specialist solicitors.
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