The first step in protecting a trade mark used in your business is to identify the names, brands, logos, etc. that you want to register. However, there is more to this than initially meets the eye. Most businesses have numerous protectable trade marks, and new business owners are often unaware of the registrable trade marks they possess.

For example, if you look at the label on a bottle of Guinness, you will find several trade marks: the brand name Guinness, the harp symbol, the signature, and the label design as a whole. All of these trade marks have been registered, and for good reason, because if any were found on the label of another brand of beer, the consumer would likely assume that a company affiliated with Guinness produced that beer. Without proper registration and enforcement of the trade marks, the competing company could benefit from the goodwill Guinness has established in its brand, as well as dilute the value of that brand at the same time.

After identifying the trade marks your business wants to use, the next step is to conduct a trade mark search using the National Trade Marks Database and the Community Trade Marks Database (listing EU community trade marks, which are protected in all member states) found on the Irish Patents Office (Irish Patents Office) website (http://www.patentsoffice.ie/), as well as the company names and business names databases on the Companies Registration Office website (http://www.cro.ie/), to see if the trade mark is already in use as a trade mark or company name (which could indicate that there could potentially be legal protections attached to that name) or an application is pending in either office.

The National Trade Marks Database contains details of all trade mark applications filed with the Irish Patents Office and includes details of international registrations designating Ireland under the Madrid Protocol (an international system of trade mark registration administered by the World Intellectual Property Organization). If you would like assistance, the Irish Patents Office will conduct a search for a fee of €35.00. Keep in mind, however, that the Irish Patents Office does not guarantee that its search results will be complete or accurate. It’s therefore a good idea to do your own general internet search as well.

Once you have determined that the trade mark your business intends to use is available, then you can file a trade mark registration by completing Form 1 and sending it to the Irish Patents Office. The application must list all of the trade marks you want to register and the class of goods and/or services for which you seek registration. The initial application fee is €70.00, but if an application contains goods or services in more than one class, then there is a fee of €70 for each additional classification. If the application is successful, there is an additional registration fee of €177.00.

If you think you will do business outside of Ireland, it’s a good idea to register your trade mark in the appropriate countries as well. With respect to the EU, you can apply for a Community Trade Mark covering all 27 countries at the Office for Harmonisation in the Internal Market (http://oami.europa.eu/ows/rw/pages/index.en.do).

For even broader trade mark protection, you can apply for an International Trade Mark Registration under the Madrid Protcol. Under this system (which Ireland is a member of), a trade mark owner can apply to protect a trade mark in many countries by filing an application in his or her home country.

Simply filing an application, however, does not mean the trade mark will be registered. In determining whether to allow registration of your trade mark in Ireland, the Irish Patents Office will first look to whether the same or similar trade mark is owned or claimed by someone else. If you clear this hurdle, the Irish Patents Office will analyze whether the trade mark sufficiently distinguishes your product or service from those of another business.

Specifically, the Irish Patents Office has indicated that it may reject a trade mark if it:

• is not capable of being represented graphically
• does not have any distinctive character (i.e. is generic),
  consists exclusively of signs that designate essential characteristics of goods or services (e.g. their quality, intended purpose, geographical origin, etc.),
• consists exclusively of signs which are customary in the language in the trade,
• consists exclusively of the shape arising from the goods themselves, or which is necessary to obtain a technical result, or gives substantial value to the goods,
• is contrary to public policy or principles of morality,
• is likely to deceive the public, e.g. as to the nature, quality, or geographical origin of the goods or services,
• is applied for in bad faith, or
• is identical with or similar to a trade mark that is already on the register in respect of identical or similar goods.

If the Irish Patents Office accepts your application, the trade mark details will be published in the Irish Patents Office Official Journal. After that, third parties have three months to oppose the application.

Trade mark registration initially lasts for ten years from the date the application is filed. However, the registration can be renewed every ten years by paying a renewal fee of €250 plus €125 for each additional class.

Keep in mind, however, that you must use your trade mark for the registration to remain in effect. The Irish Patents Office can revoke a registration if a trade mark has not been put to genuine use within five years of registration, or its use has been suspended for five consecutive years. The trade mark registration can also be revoked if the owner takes or consents to actions which make the trade mark misleading or generic.

It is also important to enforce the rights granted by a trade mark registration, because the failure to do so will not only dilute the value of the trade mark, it may be interpreted as an implied consent for others to use it as well.