Marking out your business territory: Trademarks explained

Colin Manning is a lecturer in IT Law and Intellectual Property Law in the department of Computer Science at MTU Cork. He has a Masters in IT & IP Law from UCC and is currently working towards a PhD in Trade Mark Law. He qualified as a European Union Trade Mark Attorney in 2016.
Marking out your business territory: Trademarks explained

A trademark is a sign used to distinguish the goods of one provider from those of another.

Colin Manning is a lecturer in IT Law and Intellectual Property Law in the department of Computer Science at MTU Cork.
Colin Manning is a lecturer in IT Law and Intellectual Property Law in the department of Computer Science at MTU Cork.

What is a trademark?

A trademark is a sign used to distinguish the goods of one provider from those of another. It allows consumers who have a good experience of a product to make repeat purchases and allows those who have a bad experience to avoid that product in the future. Although we are most familiar with trademarks attached to goods, they can be applied to services too.

A trademark is registered for specific goods and services. The same trademark can be registered for different goods or services provided they are not so similar that customers might be confused.

What are the requirements/eligibility for a registered trademark?

Most trademarks are words, graphics, or a combination of both. But in theory, almost anything can be a trademark. Shapes, colours, and sounds can be trademarks. But in practice, unusual trademarks are difficult to register. A trademark office will ask whether the trademark by itself will allow customers to identify the producer of the goods. Customers rarely rely on shape or colour alone.

Why should someone apply for a trademark?

Trademarks protect reputations. A trademark can help protect the reputation a business has built up by providing quality products. If someone sells an inferior product that customers mistakenly believe comes from your business, your reputation will suffer and sales may fall. Service providers can be similarly harmed by customers’ inability to distinguish the good service providers from the bad. Registering the signs by which the business is known can prevent this kind of confusion. A trademark registration does not give a business the right to use the trademark, it gives it the right to stop everyone else from using it. A trademark registration can prevent other producers from importing or selling goods using confusingly similar signs.

When should someone apply for a trademark?

The sooner a trademark is registered the better. There are several reasons why an application to register a trademark might fail. So it is best to secure the trademark registration before too much time and effort is invested in something that cannot ultimately be protected. It can be very disappointing to build up a reputation using a trademark only to discover late in the day that it cannot be registered.

Trademark protection is granted on a first come first served basis. So that’s another reason to apply early in the business development process.

Are trademarks universal/ If you get one in Ireland is it recognisedglobally?

A trademark right can be enforced only in the territory where it is registered. Every country has its own Intellectual Property Office that maintains a register of the trademarks that are in force in that country. For example, a trademark registered at the Intellectual Property Office of Ireland (IPOI) provides protection only in Ireland. A French trademark registered at the French Intellectual Property Office applies in France. However, the European Union Intellectual Property Office (EUIPO) provides the option to apply for a single European Union Trade Mark (EUTM) that applies in all the countries of the EU. The cost of securing an EU trademark is a fraction of the cost of securing multiple national registrations and applications can be filed in English. National courts afford EU trademarks the same protections they provide to nationally registered trade marks.

Following Brexit, United Kingdom trademarks must be registered separately. Outside of the EU trademarks must be registered country by country. This is not as complex as it sounds, however. Since 1883 a system has been in place to provide a one-stop-shop in Geneva for registering trademarks in many countries at once.

How much does it cost and how long is a trademark for?

An Irish trademark can be registered at the Intellectual Property Office of Ireland for as little €247. Once a trademark is registered it is valid for 10 years and there is nothing more to pay until it comes up again for renewal. A trademark can be renewed indefinitely. The very first trademark to be registered in the UK in 1876 is still on the register. Registering a European Union Trade Mark at the EUIPO starts at €850. Paying a Solicitor or Trade Mark Attorney will add several hundred euros to the cost, but this is often not necessary. Both the IPOI and the EUIPO try to make it easy for business owners to register trademarks for themselves and they both provide excellent customer service.

How long is the process to get a registered trademark?

Once a trademark has cleared the absolute grounds hurdle it is published. At that stage, it can be opposed. If during the three-month opposition period the trademark is not opposed it will be registered. An unopposed EUTM might be registered as soon as 4 months after the application date. If there is an objection then a quite lengthy process of negotiations or legal arguments beings. At this point, a lawyer is typically required and the whole process might take 2 years.

On what grounds can a trademark be refused?

There are two categories of grounds for refusal: absolute grounds and relative grounds. A trademark will be refused on absolute grounds because of a problem with the trademark itself. A trademark will be refused on relative grounds if it is confusingly similar to a trademark already in use.

A trademark must have the capacity to distinguish the goods of one provider from those of another. The most common mistake applicants make is choosing a trademark that merely describes the product or says how great it is. “Wholemeal” could not be registered for bread, for example, because it is merely descriptive of the goods.

The many languages of the EU sometimes cause problems for trademark applicants because an invented word in one language might be descriptive in another. “Brod” would not be registered as a EUTM for bread because brød is merely the Danish word for bread. On rare occasions, a trademark may be refused for being immoral. Applicants for trademarks such as “EBI”, “Hexa”, and “Curve” were surprised to discover that their trademarks were offensive in one of the EU’s many languages.

A trademark will be refused on relative grounds if its use in the marketplace would likely cause customers to be confused about the provider of the goods. Importantly a registration can also prevent others from registering similar trademarks for similar goods. Both the similarity of the trademarks and the similarity of the goods are considered, and if customers would likely be confused about the origin of the goods then the newer trademark application will be refused. “Polo” can be used for both mints and for cars, because the goods are so different. But it is unlikely that the same trademark could be used for coffee and for tea without customers believing they came from the same producer. Similarly, registering “Polo” for sweets prevents other from registering “Polo” for sweets, but also “Bolo”, “Poolo”, and “Pollo”.

How busy is the trademark market?

Following Brexit UK based lawyers can no longer represent clients at EUIPO. Many UK firms have expanded their offices in Ireland or opened up new ones. Trade mark applicants from outside must appoint an EU-based lawyer in order to apply for a European Union Trade Mark and such applicants typically prefer to conduct their business in English. So there is significant scope for Ireland to become a hub for trademark services and to capture a large portion of the work that was previously done in the UK.

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