Trade Marks

Information for Attorneys

We undertake pre-filing searches on behalf of clients and professional associates and have the capacity to file Irish, UK and European Union trade mark applications immediately upon receipt of instructions.

European Union Trade Marks

It is clear that any company which intends to trade in the European Union should consider the possibility of obtaining a European Union Trade Mark (EUTM) registration. EUTMs are unitary in character and a single registration covers all the member States of the European Union.

While a valid prior national right in any of the EU member States may be invoked in opposition proceedings to prevent the registration of a subsequent conflicting EUTM, due to the cost involved in conducting a pan European Trade Mark search, EUTM applicants frequently opt to limit the initial pre-filing search to the European Union Trade Marks database.

Once a European Union registration has been obtained, the search can be extended to identify any potential conflicting national and international rights enforceable in the specific EU countries where the trade mark is intended for use.

Requirements for Filing an EU Trade Mark Application

  • Particulars of the trade mark to be registered. If the trade mark consists of, or incorporates, a figurative element, we will require at least one representation of the trade mark. This may be submitted in electronic format, together with details of any colours featured in the trade mark.
  • The full name, address and nationality of the applicant
  • Particulars of the goods and /or services for which registration is required
  • If priority is claimed, a copy of the basic application will not be required if particulars of the basic application or registration are available online by accessing the relevant database National Trade Mark database. This means that once you have secured your trade mark through registration, we can maintain a watch on the trade mark registers and inform you of any attempt to register a new trade mark which may conflict. An opposition can then be filed to prevent registration and protect your rights.
  • A Power of Attorney is not required

Examination of an EU Trade Mark Application

Any sign that is capable of being represented graphically and which is capable of distinguishing goods or services of one undertaking from those of another will qualify for registration as an EUTM.

EUTM applications are all examined on absolute grounds and registration will be refused if the trade mark fails to satisfy the relevant criteria for registration. EUTM applications are not subject to a relative grounds examination.

Registration will be refused if the trade mark:

  • is devoid of any distinctive character;
  • exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
  • has become customary in the current language or in the bona fide and established practices of the trade;
  • consists exclusively of signs or indications which have become customary in the current language or in the bone fide and established practices of the trade
  • consists exclusively of the shape of goods that results from the nature of the goods themselves
  • consists exclusively of the shape of goods that is necessary to obtain a technical result
  • consists exclusively of a shape that gives substantial value to the goods
  • is contrary to public policy or to accepted principles of morality;
  • is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

Other absolute grounds for refusal may relate to some official emblems.

Registration of an EU Trade Mark

Following the expiration of the opposition period, or the final rejection of any opposition submitted during that period, the Certificate of Registration will be issued and the registration will remain in force for 10 years from the filing date. EUTMs may all be renewed for a further 10 years.

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Ireland/UK Trade Mark

Requirements for Filing an Irish or UK Trade Mark Application

Prior to filing an Irish trade mark application we recommend that a search of the Irish and Community Trade Mark databases be undertaken to identify any potentially conflicting Irish, Community or international trade marks protected in the Republic of Ireland.

If registration is also required in the UK the search should be extended to the UK Trade Mark database, which includes international trade marks protected in the UK.

We offer a comprehensive and cost effective searching service covering both registered and common law rights. Our attorneys have a particular expertise in conducting and analysing searches and can report urgent searches on a one day turnaround basis, when required.

We require the following information to enable us to prepare and file a trade mark application:

  • Particulars of the trade mark to be registered. If the trade mark consists of, or incorporates, a figurative element, we will require at least one representation of the trade mark. This may be submitted in electronic format, together with details of any colours featured in the trade mark
  • The full name, address and nationality of the applicant
  • Particulars of the goods and /or services for which registration is required
  • If priority is claimed, a certified copy of the basic application or registration on which the claim to priority is based must be filed in support of Irish and UK applications, together with a certified translation into English if the priority document is in a language other than English. If the priority document is not available at the time of filing it may be submitted within three months of the filing date without incurring a late filing charge.
  • Please note that a Power of Attorney is not required for Irish or  UK trade mark applications.

Examination of an Irish or UK Trade Mark Application

Any sign that is capable of being represented graphically and which is capable of distinguishing goods or services of one undertaking from those of another will qualify for registration as an Irish or UK Trade Mark.

Irish trade mark applications are also examined on relative grounds, and registration will be refused if a later trade mark conflicts with an earlier Irish, European Union or international trade mark protected in the Republic of Ireland. UK applications are not subject to a relative grounds examination.

Irish and UK applications are all examined on Absolute Grounds and registration will be refused if the trade mark:

  • Is devoid of any distinctive character
  • Consists exclusively of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristic of the goods or services
  • Consists exclusively of signs or indications which have become customary in the current language or in the bone fide and established practices of the trade
  • Consists exclusively of the shape of goods that results from the nature of the goods themselves
  • Consists exclusively of the shape of goods that is necessary to obtain a technical result
  • Consists exclusively of a shape that gives substantial value to the goods
  • Is contrary to public policy or accepted principles of morality
  • Is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods and services
  • Consists of any state, national or other protected emblem.

Registration will also be refused if:

  • The application for registration has been made in bad faith
  • Use of the trade mark is prohibited in the State by an enactment or rule of law or by any provision of European Union law.

Registration of a Trade Mark in Ireland or the UK

Following the expiration of the opposition period, or the final rejection of any opposition submitted during that period, the Certificate of Registration will be issued and the registration will remain in force for 10 years from the filing date. Irish and UK trade marks may all be renewed for a further 10 years.

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