- A Trade Mark is a sign that distinguishes your goods and/or services from those of your competitors.
- A Trade Mark can encompass anything from the brand name you use on your product, to logos, the shape of goods and the get up of packaging. The list of what may constitute a Trade Mark is not exhaustive.
- A Trade Mark must be capable of being represented graphically.
- The most effective way to protect a Trade Mark is through registration.
A Trade Mark can be refused registration on two grounds:
- Absolute Grounds of Refusal
- Relative Grounds of Refusal
Absolute Grounds of Refusal
- It is not capable of distinguishing your goods and/or services from those of your competitors;
- It is not capable of being represented graphically;
- It does not have distinctive character;
- It describes the goods and/or services for which registration is sought;
- It consists exclusively of the shape of the goods for which registration is sought;
- It consists exclusively of a shape which is functional;
- It consists exclusively of a shape which gives substantial value to the goods for which registration is sought;
- It is contrary to accepted principles of morality or law;
- It deceives as to the nature, quality, or geographical origin of the goods and/or services for which registration is sought;
- It is applied for in bad faith.
Relative Grounds of Refusal
Most European countries and EUIPO will refuse registration upon a successful challenge from the holder of an earlier identical or similar Trade Mark and/or right that covers identical and/or similar goods and/or services. In some cases, registration of a Trade Mark will be refused if the holder of an earlier reputable Trade Mark covering dissimilar goods can show that use of the later Trade Mark, without due cause, would either (i) take unfair advantage of, or (ii) be detrimental to the distinctive character or reputation of the earlier trade mark.
Procedures & Systems for Registering your Trade Mark
There are numerous national and international systems that can be used to register your Trade Mark.
- Most countries maintain and run their own national Trade Mark registers.
- Some countries co-operate in running a single register, e.g. the Benelux Trade Marks Register (Belgium, Luxembourg and the Netherlands).
- The majority of countries throughout the world are members of The Paris Convention 1883. This means that all Member States must treat applications filed by non-nationals in the same way as those filed by its own nationals.
- In the European Union (EU), the criteria under which Trade Mark applications are examined has been the harmonised by the Trade Marks Harmonisation Directive 207/2009, e.g. a ‘devoid of distinctive character’ objection can be raised in any EU Member State.
- Tierney IP is authorised to file and manage Trade Mark applications in Ireland and the United Kingdom. If protection is required outside these countries, Tierney IP can assist in registering your Trade Mark in other countries by using its worldwide network of Trade Mark Attorneys as well as using the Madrid Protocol and EUTM systems.
European Union Trade Mark - EUTM
- EUTM is a single Trade Mark registration that is effective and enforceable throughout the 28 Member States of the European Union. This means it is not necessary to seek registration of your Trade Mark in each EU Member State.
- The holder of an EUTM has the right to exclusively use their Trade Mark throughout the European Union and to prevent un-authorised use of an identical sign in relation to identical goods/services or similar signs in relation to identical and/or similar goods/services.
- If an EUTM has a reputation within the European Union, its holder may also be able to prevent the unauthorised use of an identical or similar sign in relation to similar and dissimilar goods if use of the sign, without due cause, (i) takes unfair advantage of, or (ii) is detrimental to, the distinctive character or reputation of the EUTM.
- An EUTM is an ‘all or nothing’ right. An EUTM cannot be effective in some EU Member States and not others. However, it may be possible to convert an EUTM into applications in EU Member States. These converted applications will retain the same date of application as the EUTM.
- An EUTM lasts for an initial period of 10 years, but can be renewed indefinitely for further 10 year periods.
- An EUTM is always open to challenge on two grounds:
- Revocation – it is recommended that an EUTM is put to genuine use in at least two to three EU Member States within five years of registration and use must be continuous for an uninterrupted period of five years.
- Validity. The validity of an EUTM can be challenged on
- Absolute Grounds – at the time registration was applied for, the EUTM was not distinctive enough to warrant registration.
- Relative Grounds – it clashes with the existence of an earlier right elsewhere in the European Union.
The Madrid System – International Registration
- The Madrid System allows Trade Mark owners to protect their Trade Marks on an international basis by filing one application with the World Intellectual Property Office (WIPO) in Geneva, Switzerland.
- The Madrid system is divided between countries that are members of the older Madrid Agreement and those that are members of the newer Madrid Protocol, e.g. Ireland, the United Kingdom and the United States of America.
- A Madrid application must be based on a Trade Mark application or registration from the home country of the applicant and it must be filed through the owner’s national or regional Intellectual Property Office.
- An applicant for a Madrid application simply has to designate the other countries of either the Agreement or Protocol where protection of the Trade Mark is required. Please see attached list of Madrid Agreement/Protocol countries.
- Under the Madrid Protocol, designated countries have 18 months to notify WIPO of any objections to the application for protection. A refusal of protection can be made after 18 months if it is based on a third party opposition. The national/regional office must however notify WIPO within the 18 month period that oppositions can be filed after that period. If an opposition has been filed within the relevant territorial opposition period, the national/regional office must notify WIPO within seven months from the beginning of that opposition period. If the territorial opposition period ends before the seven month deadline, the national office must then notify WIPO within one month from the end of the opposition period that an opposition has been filed.
The renewal, transfer and licence of an International registration can all be managed by means of submitting a single application with WIPO.
- A design constitutes the appearance of the whole or part of a product which results from features such as lines, shape, contours, texture. A design can also include the materials of the product itself and/or its ornamentation.
- In Europe, a design can be protected by:
- An unregistered Community design. Protection automatically starts from the moment the product/s bearing the design are first made available to the public within the European Union. An unregistered Community design is deemed to be made available to the public if it has been published, exhibited or disclosed to circles specialised in the sector concerned. Protection of an unregistered Community design is only limited to three years and it only prevents copies of original designs.
- Registered Community design. This is a single registration that is protectable in all 28 Member States of the European Union. Unlike an unregistered Community design, a Registered Community Design can potentially give protection for twenty five years, provided it is renewed every five years. A Registered Community Design can be used to stop both deliberate and innocent replication anywhere in the European Union.
Requirements for a valid Design
For a design to be valid in Europe, it must:
- Be new, i.e. no identical design has been made available to the public:
- in the case of an un-registered design, before the date of claimed protection.
- in the case of a registered design, before the date of application for registration.
- Have individual character, i.e. if the overall impression it produces on an informed user is different to designs that are already known:
- in the case of an un-registered design, before the date of claimed protection.
- in the case of a registered design, before the date of application for registration.
Procedures & Systems for Registering your Design
As with Trade Marks, most countries throughout the world run and maintain their own national Design Registers.
Some countries also offer limited un-registered protection for designs.
To be protected in most countries, designs must have some aesthetic feature. Generally, functional designs are not capable of protection.
To be registered, most countries require that a design must be ‘new’, although the interpretation of this requirement varies from country to country.
In some countries designs can also be protected under Copyright law, although certain qualifications may apply.
Tierney IP is authorised to file and manage Design applications in Ireland and the United Kingdom. If protection is required outside these countries Tierney IP can assist in registering your Design in other countries by using its extensive worldwide network of Design attorneys as well as using the RCD and Hague systems.
Registered Community Design - RCD
An RCD is a unitary design registration that is effective and enforceable throughout the 28 Member States of the European Union.
The RCD Register is run and maintained by OHIM (aka the Trade Marks and Designs Registration Office of the European Union).
Unlike a Community Trade Mark, an application to register an RCD is not examined to assess whether it meets the legal criteria for registration. However, to overcome third party challenges, an RCD must be valid.
To be valid, an RCD must be novel and have individual character.
An RCD can be registered for up to 25 years provided a renewal fee is paid every 5 years.
An RCD gives its holder the exclusive right to use the design throughout the 28 Member States of the European Union and to prevent its unauthorised use by third parties whether by deliberate copying or by independent creation of a similar design.
It is possible to file multiple designs in one application.
It is also possible to keep the RCD confidential for a period of up to 30 months from the date of filing.
The Hague System – International Registration
The Hague system allows owners to protect their Designs on an international basis by filing one application with the World Intellectual Property Office (WIPO) in Geneva, Switzerland.
An applicant for a Hague application simply has to designate the other countries of the Agreement where protection of the design is required.
While some European countries are not members of The Hague Agreement, the European Union is a member. This means it is possible to designate the European Union in an international application for the registration of an industrial design.
An international application is filed directly with WIPO. OHIM has no role in accepting or forwarding applications to WIPO.
An international application that designates the European Union must be examined within six months of publication.
Unlike an international application for the registration of a Trade Mark, there is no provision for third party oppositions against the designation of an international design application.
An international application for the registration of an industrial design can be based on the priority of an RCD.
It is possible to centrally record transfers, licences and changes of name against an International Design by means of one application filed directly with WIPO.
As an OHIM Authorised Representative, Tierney IP can act as a representative for international registrations that designates the EU.
- In Europe, copyright is a property right which generally protects the following types of works:
- Sound Recordings
- Computer programs
- Original databases
- The owner of copyright has the exclusive right to use it and to prevent others from:
- Broadcasting or recording
- Adapting the work
- Unlike Trade Marks, Designs and Patents, rights in Copyright do not arise through registration.
- Copyright protection in the work in question commences automatically when it is created, i.e. recorded in an appropriate material form.
- To assert Copyright, it is necessary to prove ownership and when the work was created.
- It is recommended to mark all copies of the work with the © symbol, the name of the creator and year of creation.
- The term of protection in Copyright in Europe varies according to the type of work. The following is a sample of the terms that apply to the most common works:
- Literary, dramatic, musical and artistic – 70 years after death of creator.
- Sound recordings – 70 years after the sound recording is made or from the time it was first made available to the public.
- Broadcasts – 50 years after the broadcast was fist transmitted.
- Films – 70 years after the last of the following dies:
- Composer of the music created for the film
- Confidential Information is protected in Ireland and the United Kingdom under law of Breach of Confidence.
- In Ireland, an implied constitutional right of privacy may also afford protection in limited circumstances.
- The law of Confidentiality in Ireland and the United Kingdom has its origins in the case of Albert v Strange (1849) where the Lord Chancellor prevented the publication of private correspondence between Queen Victoria and Prince Albert.
- The application of Confidential Information does not apply to:
- Information that has entered the public domain.
- Useless information or trivia.
- Where there is a greater public interest in favouring disclosure.
- Article 8 of the European Convention on Human Rights 1950 affords the right to respect for private and family life, home and correspondence. In England this, and other rights mentioned in the European Convention on Human Rights, have been given effect by the Human Rights Act 1998.
- A trade secret generally encompasses a formula, process, design, instrument, pattern or information which is not known or easily obtained and by which a business can gain advantage over its competitors.
- The criteria for a Trade Secret is:
- Not generally known to the public.
- Confers some sort of economic benefit on its holder
- Is the subject of reasonable efforts to maintain its secrecy.
- Trade Secrets are not protected by means of registration.
- The most effective way a company can protect its Trade Secrets is through non-compete and non-disclosure contracts.
- Unlike Patents, a Trade Secret may, under certain circumstances, be protected indefinitely.
- In Europe, databases are protected by virtue of EC Council Directive 96/9/EC on the legal protection of databases.
- A database is “a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means”.
- The Directive harmonises the national law of the EU Member States and creates a new sui generis right for the creators of databases.
- Sui generis right – specifically protects the “qualitatively and/or quantitively substantial investment in either the obtaining, verification or presentation of the database contents”.
- A database right is deemed to be owned by the person or corporation which made the substantial investment provided:
- the person is a national or domiciliary of a Member State, or
- the corporation is formed under the law of a Member State and has its registered office within the European Union.
- A computer program used to create a database is not protected under the Directive – see “Computer Programs”.
- Databases can be protected in the following ways:
- Copyright – As a literary work if the selection and/or arrangement of their contents is original.
- Database Right – Protects the database from un-authorised extraction of contents. This right lasts for 15 years from
- When the database was created, or
- If database was published, 15 years from publication.
The protection of computer programs comes within the area of Copyright law.
Computer programs are protected in the European Union by virtue of Council Directive 209/24/EC on the legal protection of computer programs.
The Directive requires that a computer program must be protected under Copyright as a literary work.
Under the Directive, the owner of the computer program has the exclusive right to authorise
1) the temporary or permanent copying of the program, including any copying which may be necessary to load, view of run the program.
2) The translation, adaptation or alteration of the program.
3) The distribution of the program to the public by any means, including rental. This is subject to the doctrine of first sale.
The legal owner of a program can create any copies of the program which are necessary to use the program and to alter it so as to rectify errors.
The legal owner of a program is authorised to make backup copies for his or personal use.
A computer program can be decompiled to ensure it operates with another program or device. However, the decompiled version must not be used for another purpose which would lead to the copyright in the original program being infringed.
Trade Mark Disputes – Out of Court
- A contentious process where an application for the registration of a Trade Mark application can be opposed by a third party, e.g. the holder of an earlier conflicting right.
- In some cases, an opposition may lead to an oral hearing. This is particularly common in Ireland and the United Kingdom.
- Revocation is a process where a Trade Mark registration can be revoked (removed from the relevant register) upon application from a third party.
The typical grounds for revocation are:
- The Trade Mark has not been genuinely used for a continuous period of five years.
- The Trade Mark has not been put to genuine use within five years of registration.
- The Trade Mark has become generic through the action or lack of action from the Trade Mark owner.
- The use of the Trade Mark has rendered it misleading and deceptive.
- If a Trade Mark is challenged on the grounds of non use, the burden is on the proprietor to prove that the Trade Mark has been genuinely used.
- To avoid revocation on the grounds of non use, a Trade Mark should be used in the form in which it was registered.
- Invalidity is a process where the validity of a Trade Mark registration is called into question upon application from a third party.
The typical grounds for revocation are:
- The Trade Mark was registered in breach of the conditions of registration, e.g. not distinctive, descriptive, deceptive.
- The Trade Mark conflicts with an earlier right.
- The Trade Mark was registered in bad faith.
- In the United Kingdom and Ireland an application for invalidity can either be determined before a court or out of court. If the Trade Mark is the subject of proceedings before court, only a court can hear and determine the application for invalidity. Whether the process is court or out of court will vary in other countries depending on the countries’ laws and regulations.
Trade Mark Disputes - Court
- A Trade Mark registration gives its holder the exclusive right to use the Trade Mark in relation to the goods and/or services for which it is registered in the territory where the Trade Mark is registered.
- It is not possible for the owner of an un-registered Trade Mark to bring infringement proceedings.
A Trade Mark registration allows its holder to prevent the unauthorised use of:
- An identical sign in relation to identical goods.
- An identical sign in relation to similar goods/services where use would give rise to a likelihood of confusion (including a likelihood of association).
- A similar sign in relation to identical and/or similar goods/services where use would give rise to a likelihood of confusion (including a likelihood of association).
- An identical and/or similar sign in relation to similar and/or dissimilar goods/services where use would, without due cause, take unfair advantage of, or be detrimental to, the distinctive character or reputation of the Trade Mark.
- The above grounds of infringement are similar to those that form the basis of an opposition to the registration of a Trade Mark.
- An EUTM registration is enforceable throughout the European Union. In some cases, it may be possible for a court in one Member State to grant an order prohibiting use of the offending sign in other Member States.
- In Ireland and the United Kingdom, the holders of both registered and un-registered Trade Marks can seek protection under the Common law tort of Passing off.
Passing off can be relied on if:
- A misrepresentation has been made in course of trade by another person to customers or prospective customers of the aggrieved party.
- The misrepresentation is calculated to injure the goodwill/reputation that has been built up under the aggrieved party’s name in respect of the goods/services supplied by him.
- The misrepresentation is such that it has damaged, or is likely to damage, the goodwill/reputation that the aggrieved party enjoys under his name.
Design Disputes – Out of Court
Design Right Proceedings before UK Intellectual Property Office
- Under the Copyright, Designs and Patents Act 1988, the UK Intellectual Property Office (UKIPO) has the jurisdiction to hear the following types of dispute:
- The subsistence of design right
- The term of design right
- The identity of the person in who design right first vested.
- The decision of the UKIPO in relation to the above disputes is binding on the parties
- The validity of a Registered Design may generally can be challenged either before a court or out of court on the following grounds:
- It lacks novelty, i.e. it was not new at the time registration was sought
- It lacks individual character, its overall impression is the same as that of an earlier design
- It is a functional design
- It is contrary to public policy or morality
- The registrant is not entitled to it
- It is in conflict with an earlier published design.
- Unlike Trade Marks, it is not possible for third parties to challenge an application for the registration of a design.
Design Disputes – Court
- The holder of a Registered Design has exclusive rights to use it throughout the relevant territory and to prevent third parties from both deliberately copying and independent development of a design with the same overall impression.
- Protection of a Registered Design extends to all products, e.g. if your registration is registered in respect of toys, you can prevent the use of a design of the same overall impression on biscuits.
- The rights in a European Registered Design (RCD) can be enforced in any of the designated Design Courts throughout the European Union.
- The holder of an un-registered Design can only prevent the deliberate copying of the protected design and protection only lasts for three years from when the design was first made available.
Copyright disputes – Court
A copyright owner of a work has the exclusive right to:
- Copy the work
- Publish the work
- Make an adaptation of the work
- To broadcast the work
- If any of the above acts are carried out by a third party without authorisation, the copyright owner has the right to pursue a claim for Copyright Infringement.
- Infringement can take place where both the whole of the work is copied or a substantial part.
- Infringement can also be Direct and Indirect. For example if a photograph is taken of a painting, the copyright in the painting will be indirectly infringed.
- Primary Infringement – this takes place where a person commits an infringing act or authorises others to do so.
- Secondary Infringement – this takes place when persons commercially deal with infringing copies or articles or premises used to commit the infringement.
Copyright disputes – Out of Court
- In the United Kingdom, certain types of disputes between parties relating to Copyright may be heard before the Copyright Tribunal which is a division of the United Kingdom Intellectual Property Office.
The Copyright Tribunal has the authority to:
- Hear cases from parties that have been unreasonably refused a licence by a collecting society.
- Rule whether the terms that have been offered by a collecting society are unreasonable.
- Settle disputes regarding royalties payable by TV listing companies to broadcasters.
- In Ireland, disputes in relation to copyright licensing schemes are heard before the Controller of Patents, Designs and Trade Marks. A Register of Copyright licensing bodies is maintained by the Controller.
Domain Name disputes
- Disputes involving the top-level domains (TLD) are managed under the Uniform Domain-Name Dispute Resolution Policy (UDRP). This is a process that was established by the Internet Corporation for Assigned Names and Numbers (ICANN).
- ICANN (Internet Corporation for Assigned Names and Numbers) is a body that is responsible for overseeing a number of Internet related tasks, e.g overseeing Internet Protocol (IP) address allocation and management of the top-level domain name system.
A complainant who wishes to use the UDRP process must establish:
- The domain name is identical or confusingly similar to the complainant’s Trade Mark or Service Mark.
- The person applying for the domain name (registrant) does not have any legitimate rights to the name.
- The registrant is using the domain name in bad faith.
Factors that may lead to a finding of bad faith would be:
- The registrant registered the domain name primarily for the purpose of selling, renting or transferring the domain name to the complainant.
- The registrant registered the domain name to prevent the complainant from using their trade mark in a corresponding domain name.
- The registrant registered the domain name to disrupt the complainant’s business.
- By using the offending domain name, the registrant has attempted to attract Internet users to its site.
- In Europe, the management and responsibility of the .eu domain is carried out by European Registry for Internet Domains (EURid).
- Disputes involving the .eu domain name can be challenged in a court of any EU Member State, but most disputes are settled using the Alternative Dispute Resolution process. Disputes are heard by the Czech Arbitration Court. Rulings are legally binding.
- The Internet registry for United Kingdom Domain Names is Nominet.
- The Internet registry for Irish domain names is IEDR.
Trade/Company Name disputes
- In England, disputes relating to the registration of opportunistic company names are handled by The Company Names Tribunal, which is a branch of the Intellectual Property Office.
- The Company Names Tribunal does not deal with complaints against the registration of company names that are similar to an existing company name unless it can be shown that the registration was opportunistic.
- Non opportunistic Company Name disputes can, in certain circumstances be dealt with by Companies House.
- A Company Names Tribunal challenge to the registration of a company name will fail if the Registrant can successfully raise the following defences:
- The name was registered before the Complaint started its activities.
- The alleged offending company is already operating under the name or is planning to do so and has incurred substantial start up costs.
- The alleged offending company was operating under the name but is now dormant.
- The name was adopted in good faith.
- The interests of the Complainant are not adversely affected.
- It is not necessary to own a registered company name to initiate a dispute before the Company Names Tribunal. However, the Complainant must prove a reputation/goodwill in the name at the date that the name complained about was adopted.
- Decisions of the Company Names Tribunal can be appealed to the English High Court.
- Ireland does not have the equivalent of a Company Names Tribunal. The Irish Companies Office will refuse to register names that are identical to existing company names. Otherwise disputes relating to Company Names in Ireland are dealt with under the Common law tort of Passing off.
Transfer of Ownership
- The majority of legal systems in Europe recognise Intellectual Property rights as forms of personal property.
- Intellectual Property rights are intangible and are generally the most valuable assets a business can own.
- As personal property, ownership in most forms of Intellectual Property can be transferred.
- It is always recommended that the transfer of ownership in Patents, Designs and Trade Marks is recorded on the respective register where the right is located.
- Failure to record the transfer of ownership can lead to difficulties in subsequently enforcing the IP right in question, e.g., reduced award of costs in litigation concerning the IP right.
- By licensing the use of its Intellectual Property Rights to other parties, a business can secure an additional and regular source of income.
- Licensing of Intellectual Property may also facilitate increased market penetration.
- Registered Intellectual Property Rights are generally easier to license than un-registered rights.
- Licences involving Intellectual Property should always be in writing.
- It is also possible for Intellectual Property rights to be sub-licensed.
- Intellectual Property licences can be exclusive or non-exclusive.
- Intellectual Property licences can also be Sole, i.e. only the Licensor (the IP owner) and the Licensee can use the IP.
- Licenses involving Patents, Designs and Trade Marks can be recorded on the relevant IPR Registers.
- Failure to record a Licence may mean that the Licensee’s rights will not be recognised in the event that the Licensor transfers the IPR to another party.
- As most forms of Intellectual Property Rights are regarded as Personal property, they can be used as security for loans and other forms of developmental capital.
- A Security Interest is where the holder of a financial interest (Grantee) has the right to resort to some property or fund for the satisfaction of a demand, e.g. a debt, mortgage, charge.
- A Security Interest may be secured or un-secured.
- Intellectual Property Rights are secured when the Grantee of the interest has the right to realise the property of the IPR holder (the Grantor) without the need for legal proceedings.
- To copper fasten its interest, it is always recommended that the Grantee of a security interest records it on the relevant IPR register. Failure to record may render the financial interest ineffective against subsequent charges.
- In the UK and Ireland it is also recommended to record a financial charge on the relevant corporate registers where the owner of the IPR is a company.