What is a Trade Mark

A Trade Mark is any Mark used to distinguish the owners goods or services from those of its competitors. Properly used and promoted, a Trade Mark may become the most valuable asset of a business. Trade Marks such as FORD, TAYTO and WATERFORD are household names and serve as an indication of origin of the goods as well as an indication of quality.

Trade Marks should not be confused with trade names. While trade names can also serve as Trade Marks, registration of a company or business name does not in itself give protection against others who might commence using identical or similar marks.

Critical Steps

The following are the critical points in relation to TRADE MARKS:

1. It is advisable to search the Trade Marks Register in each target market, before use begins. This will uncover any existing names/marks that are the same, or confusingly similar, to that which is proposed and where the owner would have a sustainable objection to the new entrant.
2. If the search is clear, then an application should be made to register the Mark in all target markets.
3. The application should be made in all classes of current goods/services as well as in classes where there is intent to use. All goods and services are divided into 45 classes. You should try to gain exclusivity for the name in whichever classes you are intending to trade in the future. In addition to avoiding the need to file an additional application, this will also obviate the possibility of being frustrated at a later date.
4. The initial life of a registration in many countries is 10 years. This can be renewed indefinitely thereafter.
5. One can apply to register either nationally or seek a Community Trade Mark (CTM) registration. The costs of an application, for one class, in Ireland, and  registration, about 12 months later, as well as the costs for additional classes are detailed on our fee pages.
6. A CTM registration provides exclusive use of the Mark in all member states of the European Union. With just one application, protection can be obtained in all countries of the EU. The cost of an application, which covers 3 classes of goods, and registration, about 24 months later, as well as the costs of each additional class are detailed on our fee pages.

Trade Mark Classes

An Application to register a Trade Mark must specify the goods and services on which the Mark is used or proposed to be used.  All goods and services fall into 45 categories or classes.

Practical Advice

There are a number of issues which, anyone contemplating starting a business to supply products or services, should be aware of, because ignorance of them can have serious consequences.

There is a misconception that having a limited liability company name or business name registration allows use of that name and provides Trade Mark protection. Not so! The only way to obtain exclusive rights to, and protect, the name under which you wish to trade is by way of Trade Mark registration.

A Trade Mark provides exclusive statutory rights so that a rival cannot legally use an identical or confusingly similar Trade Mark to an earlier registration for identical or similar goods or services. Similarly, if you infringe, then all the investment in design, printing and promotion may be wasted.

The Golden Rule must be, at the outset, do not attempt to market goods or services until the identity under which you intend to trade has been cleared for use. That is, that it does not conflict with an earlier Trade Mark Registration in the target market.

Therefore it is essential that, before using a new identity, a search is made of the Trade Mark registers in the target markets (be that Ireland or further afield) to ensure that it does not infringe the rights of others. Expert advice, such as that of a Trade Mark Attorney, is advisable because what appears to be clear to the untrained eye may, in fact, conceal a sustainable objection from a rival. Once it has been established that the way is clear the mark should be applied for registration immediately and so secure the position.

It also possible to apply to register, not only names and symbols, but also, slogans, colours, shapes and even smells.

Utilising the Community Trade Mark (CTM) it is now possible, with only one application, to apply to register a Trade Mark in all 25 countries of the European Union. Anyone who currently trades, or intends to trade, in the EU in the foreseeable future should seriously consider this option. This facility has an added benefit in that when one successfully secures a CTM registration, it is only necessary to use the mark in ONE of the 25 countries to maintain exclusive protection in all 25 member states. This opens up huge possibilities for the entrepreneur.

The costs involved in both the national and CTM options are relatively modest and are detailed on our fee pages. In both cases the period of cover is for an initial 10 years and is renewable.

Even if expansion into EU countries is not contemplated in the immediate future, one should seek registration in any field of activity where there is a possibility of use. By covering these additional product/service classes in target markets, the business man gives himself the opportunity to get on with current matters while preserving future options. Moreover, by virtue of multi class filings, in a market place as big as the EU, the intrinsic value of the original Trade Mark is enhanced.

Many foreign companies are availing of the CTM facility (at last count it was in excess of 100,000 and growing at 500 per week), and so it is imperative that companies in Ireland protect their national interests at least. Otherwise someone with the same or confusingly similar identity may obtain registration before the indigenous user. Then the burden of proof falls on the complainant to prove, in a court of law, that his goodwill is being damaged by the new entrant; an expensive and time consuming exercise, with no guarantee as to the outcome. The simple way to avoid possible lengthy litigation is to seek to register now!

By the same token if one moves speedily, and secures CTM registration, a plethora of possibilities await. Not only is one faced with a protected environment for personal expansion but also the prospects for franchise arrangements and licensing agreements.

E-Commerce

Much has been written and said about the huge potential that the Internet holds for all of us. Likewise, the inherent dangers that can wipe out businesses with the click of a mouse. Tall tales abound about people who have made a fortune on the sale of a name and others who are allegedly sitting on a fortune just waiting for their prey to bite. Wherein lies the truth?

It is useful therefore to examine, in simple layman's terms, the basic rules and facts that govern the Internet with regards to Intellectual Property (IP) - the title which covers the more familiar terms, patents, Trade Marks and copyright.

The world wide web, or Internet, is just another medium like retail, wholesale or cash and carry. It is another market place. Therefore the same rules apply when it comes to IP. In order to protect your goodwill in this new market you require a registered Trade Mark. Without a registration there is very little that can be done to stop others from infringing your rights.

Let us first clear up a number of misconceptions; having a limited liability company name that contains the name under which you trade or a business name registration does not provide Trade Mark protection. Neither does a domain name registration.

The domain name relates only to your web site and may stop others from having the same site name. But here there are a number of variables; anyname.com which has international status, means no one else can have this .com address but it can be used by others for national addresses i.e. anyname.ie, anyname.uk or anyname.sp for Ireland, the UK and Spain respectively. Almost anything can be registered as a .com name and this is done on a "first come, first served" basis and generic names can be used. Therefore you will find flowers.com but not so on national registers where generic names are not accepted. Famous names such as Rolls Royce can only be registered as a domain name by its owners.

Therefore you can see that there is money to be made by those who have been the first to register a generic name like flowers.com and then sell it to a major flower selling enterprise. But the opportunists who tried to do the same with names like Marks & Spencer, Harrods and Virgin ended up at the wrong end of a court case.

Now, back to the basics! If you want to ensure that the name under which you trade has the necessary protection, apply to register it in whichever markets you trade or intend to trade. Then, if someone begins to offer goods or services similar to yours, using your mark on a web site directed to those markets, you can take action against them. You can insist that the offer cannot be made to markets where you have registration. The offending site must carry a disclaimer to the effect, for example, not available for sale in Ireland or not for sale in the EU whichever the case might be. You can test the situation by ordering goods from the site and if they are sent to you, these will form the basis for legal redress.

It must also be remembered that this cuts both ways and one must ensure that if you offer branded goods or services on your site, you do not infringe the registered rights of others in foreign markets. If this is the case then you too must carry the appropriate disclaimer.

There are other ways in which Intellectual Property rights can be infringed. It is illegal to copy a substantial part of existing web site and superimpose your name on it for your own purposes. This would be illegal as the original site design is covered by copyright and cannot be legally copied to any material extent without the permission of the owner. The same applies to the use of any literary, dramatic, musical or artistic work of another. You must not incorporate any such work in your site (copy articles, play music, display paintings) without prior consent from the author. Remember too that copyright lasts for the lifetime of the author and 70 years after his/her demise.

It is essential to realise that you should not expose a potential invention on the Internet before you have applied to have it patented. If you have something which might be patentable, check it out with a patent attorney before utilising it or offering it for sale on the site. Public exposure may result in never being able to obtain valid patent protection for such innovation. By the same token do not utilise or offer for sale the invention of others which may be covered by a patent.

Because the Internet is global you should be on your guard and aware of the myriad of laws that can be contravened, even innocently. Ignorance is no excuse of the law. What you offer from your site in Ireland may be perfectly legal, here, but not so in one of the states in America. There was a recent case where someone in New York visited a gambling site in another country to enter on-line bets. The act of placing the bet in New York was deemed to constitute gambling within that city , where such is not freely permitted. The courts are struggling to come to terms with all the unusual permutations and situations which the world wide web is erupting upon us. Only time will tell how all of these matters will be finally decided meanwhile take all steps to stay on the right side of the law.

The one undeniable fact is that the Internet is here to stay and everyone in business must be prepared to embrace it. For that reason it is essential to recognise how to exploit it to the full and protect your position once you have gained a foothold. Firstly, register your Trade Marks, perhaps try to obtain an identical domain registration and go about designing your own web page to promote your own goods or services. If you can't see an obvious way to sell on the Net, worry, because your competitors will! All the pundits say that within the next few years everyone will be represented on the Internet. For that reason alone at least take the essential step of protecting your mark so that it cannot legally be usurped by others.

This new medium opens up huge opportunities to business small and large. Anyone can become an international marketeer almost overnight. New enablements offer fertile ground for inventions which can be patented. In many instances these need to be protected by way of Trade Mark registration and exclusivity ensured through the registration. Even the smallest, simplest concept - product or service - can be highlighted to 100 million potential customers at such a low cost never before dreamed of, thanks to the Internet. Because of this new branding will be spawned and offered world-wide. If you are one of these, protect your identity. If not, you are likely to be on the receiving end so make sure that the Trade Mark which you trade under is protected by registration. Failure to do so can be devastating.