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Registered trademarks are obtained by formal registration under the laws of the country where trademark registration is applied for. To obtain a registered trademark, there are certain requirements to be met, and certain advantages gained for the trademark owner when the trademark is registered. As trademark agents, we deal regularly with queries from customers about registering trademarks, and we summarise a few of the frequently asked questions about registered trademarks below based on the following: -

• the legislation is based on the current trademark law at time of preparation, and relates mainly to Trade Marks legislation in the Republic of Ireland (which is similar in many respects to UK trademark law and practice, and to trademark law in several other countries) and in the EU,
• the answers in general about registered trademarks apply to sole traders, proprietors, organizations, partnerships and companies, and
• we hope the answers give those interested in registered trademarks some insight into registered trademarks.

   

A registered trademark is a property right obtained by registration of the trademark under the laws of the country where the trademark is used. Once a trademark is registered, it cannot be used by any other party without the consent of the proprietor for similar goods/services. When registering a trademark it is necessary to meet the trademark registration legal requirements for the territory involved.

A trademark can be registered if it is a sign capable of being represented graphically which is capable of distinguishing the goods and services of one undertaking from those of other undertakings.

Logos, brands, signs, can be registered as registered trademarks when they meet the trademark legal requirements for trademark registration.

A registered trademark may consist of words (including personal names), designs, letters, numerals of the shape of goods or their packaging. There are certain exclusions also that can block a registered trademark, where the term may be in common use in the trade, or where the trademark refers, inter alia, exclusively to the quality of the goods or services.

The owner of a registered trademark shall have exclusive rights in the trademark and such rights shall be infringed by the use of that trademark in the country without the owner's consent.

No. Registered trademarks are much more powerful than registered business names. It is worthwhile understanding that different laws can be involved. Under business name law, the location of a business is recorded, but it does not block duplication of the name. In contrast, the laws for registered trademarks confer strong rights and powers when you register a trademark. Aspects of registered trademarks and business name registration are discussed on our business names page.

The rights of the owner of a registered trademark shall have effect from the date of registration. In most cases priority dates from the date of application.

A registered trademark is personal property. In the case of a business, it forms part of the assets.

A registered trademark is transmittable by assignment, testamentary disposition or operation of law in the same way as other personal property, and shall be transmittable either in connection with the goodwill of a business or independently.

Can you make a partial or limited transfer of a registered trademark?

An assignment or other transmission of a registered trademark may be partial. Your trademark agents can advise you further on this.

Yes. A license to use a registered trademark can be general or limited.

A registered trademark licence shall not be effective unless it is in writing signed by or on behalf of the grantor and this requirement may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.

Yes, unless the licence provides otherwise, it shall be binding on a successor to the grantor's interest.

Yes, unless the licence provides otherwise, a sub-licence may be granted by the licensee.

Goods and services shall be classified for the purposes of registration of trademarks according to a prescribed system of registration; and every trademark shall be registered in respect of particular goods and services or in respect of classes of goods or services.

Yes, in Ireland, the UK and for EU-wide trademarks. When application is made to legally register a trademark, the trademark is examined from a number of aspects to ensure that it conforms to the legislation. Before the trademark is examined, it can be useful to obtain the assistance of a trademark agent. In advance, you can then avail of experience of the trademark registration procedures, and knowledge of trademark regulations. When you deal with some of the technical aspects of the trademarks procedures before making the application, the process to register a trademark can be more successful.

An application to register a trademark can be rejected, withdrawn or opposed. A trademark agent will usually indicate their views on such technical aspects, and often can address some of the more complicated trademark issues that can arise.

Assuming an application to register a trademark passes through the initial phases involved in trademark examination, by way of rectification and observation. The trademark, following acceptance for publication, is then open to objection from third parties, for a limited period.

Third parties can bring opposition proceedings to protect their own brands and trademarks, depending on the circumstances. Trade mark agents assist their customers with completion of opposition proceedings. Assuming successful conclusion on opposition matters, the trademark then progresses towards formal registration (subject to payment of relevant fees). In some cases, opposition can prevent the trademark from being registered.

A registered trademark can last forever (assuming it is used continuoulsy in trade), but the first registration usually lasts 10 years. Registered trademarks are renewable indefinitely for successive 10 year periods on payment of renewal fees. [This may vary somewhat for certain countries].

A business can have register as many registered trademarks as it requires. Several businesses will not use a trademark in advertising or packaging until it has been registered. This is to ensure the registered trademark is fully protected so that others cannot copy it. It is important, though, that the registered trademark be used in trade within 5 years of the application.

Once registered, the owner of a registered trademark is entitled to use the symbol r in a circle for the registered trademark, as in BATTLE ^®. However, it is not obligatory.

Trade marks once registered apply throughout the territory of the country where it is registered, for the goods and services specified. It is possible to extend the trademark registration from your home country to other countries where you intend to use the trademark. However, you should consider international trademark registration at an early stage, because if an earlier similar mark gets registered before your trademark, it may hold prior rights. The Republic of Ireland, Great Britain and the EU are parties to the Madrid Protocol for the international registration of trademarks. The Madrid Protocol makes it possible to designate additional countries over time, subject to no other prior or similar trademark registrations in those countries involved. For a list of countries where the Madrid Protocol applies, please visit the international trademarks page.

In 2006, the High Court in the Republic of Ireland dismissed a claim by Jaguar Cars to prevent the registration of a similar trademark for watches. This was because trademarks are registered only for the goods and services specified at the time of application for trademark registration, and in use thereafter. Watches technically belong to a separate classification under the Nice Classification system, and the High Court held that it was possible for another business to register the trademark "JAGUAR" for watches.

In the Republic of Ireland, businesses are required to register their trading names, mainly for regulatory purposes under the Business Names Registration Act. Business names are not protected under this act from copying or from duplication. Business owners do not get any brand protection or name protection under that legislation.

In contrast, for protection of business names, logos brands or trademarks, they must be registered as trademarks. Applications for registration of brands or logos as trademarks can be made under the Trade Marks Act, 1996 and under the EU legislation governing Community Trade Marks.

The main difference is that trademark registration is similar to registration of title in property, and confers significant powerful rights to owners of registered trademarks. For more information visit the what you should know about business names page.