Enter your text here...
What is a Trademark?
This page aims to answer the main Trademark questions I get asked all the time, but if you have any questions that aren’t answered, then just ask in the chat window or call +353 (0)1 264 7519.
- What is a Trademark?
- Can I register a Trademark?
- What are the Classes?
- Do I need a Trademark?
- How much will a Trademark Cost?
- How long will it take to register a Trademark?
What is a Trademark?
A trademark is a ‘sign’ that is capable of distinguishing the goods or services of one undertaking from those of another undertaking. That’s what the law says anyway. You’ll probably mostly thing of a Trademark in terms of Logos. If you’ve ever played the logo game, then you’ve already seen LOADS of them. So, for example, all of the below (feel free to play along) are Trademarks:
However, far more than just logos can be registered as Trademarks. According to the law, ANY sign that is capable of being represented graphically, can be registered as a Trademark. This is currently being changed at an EU level, so it no longer has to be represented graphically, which will open up the possibility of smells and other things being registered as Trademarks. Already, you can register sounds as Trademarks. Sounds such as the Intel sound, the Sound of Darth Vader breathing and lots more have been registered as Trademarks. You can register colours, shapes and all sorts (subject to some exceptions). The most common application type is simple for a word mark, which is literally just that, a word with no picture/logo attached.
SO, whatever you’re thinking of registering, you probably can……subject to the legal requirements being met.
Can I register a Trademark?
To quote the theme song from Malcolm in the Middle, “Yes, no, maybe, I don’t know, can you repeat the question”
To know whether or not you are likely to succeed in registering a trademark really requires a detailed assessment of your proposed mark/sign in the context of the law, and existing marks….which is why you should really call us.
Basically if your sign is capable of distinguishing your goods/services from those of other people, then you are entitled to register a Trademark, unless you fall foul of one of the grounds of refusal (oh no!)
In very short summary, the Absolute Grounds of refusal are that a proposed Trademark:
- Lacks any distinctive element
- Consists only of terms used in your business area or trade to describe what the goods or services are
- Consists of words or images that have become customary to use;
- Consists exclusively of the shape of the goods;
- Is a specially protected emblem;
- Is deceptive about the actual qualities of the goods or services;
- Is considered offensive, contrary to public policy or morality; or
- Promotes a service that is against the law.
If your proposed Trade Mark falls foul of any of these problems, it will be refused outright, case closed
There’s a huge amount of law on all this specific grounds, but if you ask yourself the question, “would it be fair if I was allowed exclusive use this word to the exclusion of everybody else” and the answer is ‘no’, then you probably wont be able to register it. If you have a trademark in mind, and are worried it might fail any of the above absolute grounds of refusal, give me a call, I should be able to tell you quickly enough.
If you clear the first hurdle of the Absolute Grounds of refusal, the second issue you might have is the Relative Grounds of Refusal, which really relates to existing Trademarks already registered:
The Relative Grounds of refusal are a further hurdle to be considered, but may not be fatal to your application. The relative grounds basically provide that if your proposed mark is identical to or similar to another pre-existing mark, and you are seeking to register that trade mark for similar goods or services it may be refused if it is found or felt that there is a likelihood of confusion or association between the two marks if your mark was to be registered
Finally, an application may be refused where the mark in question is identical or similar to an earlier trade mark which has a reputation in the state, and use of that mark would be detrimental to or take unfair advantage of that mark.
In Ireland (but not in the UK or EU) when you make a Trademark application, The Irish Patents office will do a preliminary search of existing databases looking for relative Trade Marks that fall within the above description and if they find any, they will refuse your application on the preliminary grounds, unless you can satisfy them of reasons that they should not. Generally to overcome an initial objection from the Irish Patents Office you have to either convince them they are wrong in that the marks are not confusingly similar or likely to lead to confusion or association, or else you get the consent of the previous Trade Mark holders, or by showing ‘honest concurrent use’ of your Trade Mark going back a period of 5 or more years.
If you’ve received a letter like this, which refers to section 10 of the Trademark Act 1996, your application has been refused by the Patents Office on a preliminary inspection under the relative grounds:
What are the Classes?
When registering trademarks you only register the trademark in the specific categories (classes)you intend to use the mark in either now or in the future. There are 45 classes, and the more classes you register in, notionally the more protection you have…..and the more expensive your application will be.
The classes are one reason why you should at least talk to a professional before registering a trademark (in my opinion). Time and time again I see clients for the first time who have registered their brand as a trademark (sometimes several), but when I investigate, it turns out they have registered in the wrong trademark class, and their registration is effectively worthless.
The relative grounds of refusal largely depend on what class or classes you wish to register your Trade Mark in.
There is a potential danger in registering in too many categories as this can leave your trademark open to challenge from another person who may wish to use the same or similar marks in classes in which you have registered, but in which you are not currently using the mark.
You can only register a ‘sign’ which you are using, or which you have an honest intention to use. Failure to use a sign which you have registered as a Trademark leaves it open to attack and revocation if another party wishes to use an identical and similar mark but are prevented from doing so by your registered Trademark which you are not using. Therefore, there is something of a balance to be struck between protecting yourself and the brand into the future and ensuring that you don’t seek such blanket protection as to possibly leave yourself open to challenge further down the line on the basis that you have registered the mark in categories and classes for which you have no realistic intention of using the mark either now or in the future. The classes of goods and services in respect of which it is possible to register a Trade Mark are:
Class 1 – Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry
Class 2 – Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists
Class 3 – Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices
Class 4 – Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting
Class 5 – Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides
Class 6 – Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
Class 7 – Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs
Class 8 – Hand tools and implements (hand-operated); cutlery; side arms; razors
Class 9 – Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus
Class 10 – Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials
Class 11 – Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes
Class 12 – Vehicles; apparatus for locomotion by land, air or water
Class 13 – Firearms; ammunition and projectiles; explosives; fireworks
Class 14 – Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments
Class 15 – Musical instruments
Class 16 – Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks
Class 17 – Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal
Class 18 – Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
Class 19 – Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal
Class 20 – Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 21 – Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes
Class 22 – Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials
Class 23 – Yarns and threads, for textile use
Class 24 – Textiles and textile goods, not included in other classes; bed and table covers
Class 25 – Clothing, footwear, headgear
Class 26 – Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers
Class 27 – Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)
Class 28 – Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class 29 – Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats
Class 30 – Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice
Class 31 – Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt
Class 32 – Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33 – Alcoholic beverages (except beers)
Class 34 – Tobacco; smokers’ articles; matches
Class 35 – Advertising; business management; business administration; office functions
Class 36 – Insurance; financial affairs; monetary affairs; real estate affairs
Class 37 – Building construction; repair; installation services
Class 38 – Telecommunications
Class 39 – Transport; packaging and storage of goods; travel arrangement
Class 40 – Treatment of materials
Class 41 – Education; providing of training; entertainment; sporting and cultural activities
Class 42 – Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services
Class 43 – Services for providing food and drink; temporary accomodation
Class 44 – Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services
Class 45 – Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals
Do I need a Trademark?
Are you just saying that because you’re a lawyer and you want me to pay you to register my trademark for me? Yes.
Well, actually to be 100% honest, no. Lots of people don’t have a trademark and they are getting on just fine. It’s a little bit like insurance, you don’t need it….until you need it, if you see what I mean. If nobody else registers your brand, or if you don’t infringe anybody elses rights, or vice versa, then no. But it’s a far safer and more sensible option to have one. There you go, that’s the honest answer.
How much will a Trademark Cost?
In terms of the cost of making a Trade Mark application, you will, effectively, have two costs. One for outlay which is purely the fee that has to be paid to the relevant registering body, and secondly a professional fee if you hire someone to do the application for you (i.e. me) for the work undertaken in providing any initial advice and any subsequent advice and in attending to having the registration applied for in respect of the classes required.
Outlay – Irish Only Application:
It costs €70 per class per mark initially, with a further fee of €177 payable only if the applications are accepted.
Outlay – European Application:
The minimum cost per Trade Mark Applied for is €850. A second class costs an extra €50 (total €900) but every additional class above that costs and extra €150.
Obviously, this is quite a bit more expensive, but it also affords you protection across Europe and not just in Ireland, and has the added benefit that the European Office will not refuse an application on the relative grounds of refusal on behalf of the existing owners of Trade Marks. If they find Trade Marks that could notionally give rise to objection on the relative grounds, they notify the registered owners of those Trade Marks, leaving it up to those owners to monitor to object to any that they have issue with. This is also the process adopted by the UK Intellectual Property Office, which is the other jurisdiction most clients consider lodging applications with.
Outlay – UK application:
The outlay here is £170 GBP for one class. There is no additional fee payable on registration (as there is in Ireland) but the fees paid are non-refundable in the event that your application is refused.
Our Professional Fees:
Our professional fee is €950 (excluding VAT) per application for a standard application in which the Patents Office or relevant registering authority raises no objections. If the Patents Office does raise objections, we will be required to make submissions to them in order to try and have the Trademarks registered, and this will incur additional costs above the set fee, which will be calculated on an hourly rate as agreed on your signing up as a client of the firm. Depending on whether the relevant body objects of its own volition on relative or absolute grounds, or whether another party (usually an existing Trade Mark owner) objects to registration, the costs of contesting an objection hearing, or pursuing the application can be extensive, though this is something that can be revisited should that eventuality arise.
How long will it take to register a Trademark?
Even if there is no objection to your Trade Mark application, it will take at least 3 months (possibly up to 5) to obtain your Trade Mark. This is because there is a 3 month period (2 months in the UK) from the publication of the acceptance of your application within which any party is entitled to object to your application.
For more information
Start a chat in the chat window at the bottom right of this page, or call +353 1 6393000
Or, check out some of the below official pages of the Irish, UK and EU Trademark Offices, which have lots and lots of great information and resources:
Irish Patents Office – https://www.patentsoffice.ie/en/Trade-Marks/
UK Trademark Office – https://www.gov.uk/how-to-register-a-trade-mark
EU Trademark Office – https://euipo.europa.eu/ohimportal/en/trade-marks-basics