IRISH TRADE MARKS

Registrability
It is possible to register any sign which can be represented graphically and which is capable of distinguishing goods or services of one undertaking from those of another and includes the shape of goods or their packaging. However, shapes which are purely functional or which are necessary to achieve a technical result or which add substantial value to the goods to be covered by the registration are unregistrable.

Infringement
It is possible to invoke a registered trade mark to prevent the use of an identical or similar trade mark, not only in relation to the particular goods or services covered by the registration, but also in relation to similar goods or services.

Prior Rights
A trade mark cannot validly be registered if it conflicts with any of the following prior rights:

1. A National registration covering the same or similar goods or services.
2. A European Union registration covering the same or similar goods or services.
3. An International registration designating Ireland.
4. A prior trade mark registered in Ireland or the European Community or an International registration designating Ireland and covering dissimilar goods or services, provided the prior mark has a reputation in Ireland as the case may be and provided use of the later mark would take unfair advantage of or be detrimental to the distinctive character or repute of the prior mark.
5. Any trade mark which, at the date of application for registration, was entitled to protection under the Paris Convention as a well-known trade mark.
6. Any unregistered trade mark which, at the date of application for registration, could be invoked to prevent the use of the trade mark by means of a passing-off action.
7. Any Intellectual Property rights or registered designs which would be infringed by use of the mark applied for.

Revocation for Non-Use
A trade mark registration may be cancelled at the request of a third party if the mark has not been used by the registered proprietor or with his consent during the previous five years. The onus to establish proof of use rests with the registered proprietor.

Assignments
It is possible to assign both registrations and pending applications.

Licensing
Use of a registered trade mark with the proprietor's consent will automatically accrue to the benefit of the registered proprietor, even where the user company is not recorded as a licensee. However, only recorded licensees will be entitled to initiate infringement proceedings based on the registered trade mark or to require the registered proprietor of the mark to do so. Furthermore, in an action for infringement, any damages suffered by a licensee as a result of the infringement will be taken into account only if the license has been recorded.

Renewals
Trade marks are renewable after a ten year term.

Multi-Class Applications
It is possible on the basis of a single application to secure protection for a trade mark in respect of goods or services falling within more than one class. It is also possible to divide or to combine two or more applications after filing, and to merge two or more registrations.

FREQUENTLY ASKED QUESTIONS

1. Is it possible to file multi-class applications in the Republic Of Ireland?
   Yes, multi-class applications are allowed.
2. What is the cost of an Irish application?
   An Irish application in one class costs approximately US$920.00 and the likely further costs in processing an application through to registration in a straight-forward case amount to US$1,005.00.
3. Is it compulsory to register a licensee?
   It is not compulsory to register a licensee at the Irish Patents Office although it is advisable for a number of reasons.
4. Can a Trade Mark be registered in respect of retail services?
   Yes, the Irish Patents Office permits registration in respect of retail services provided the precise service (e.g. in relation to automobiles) is identified.
5. What is required to record an assignment?
   An application to record an assignment can be based upon a certified copy of the Deed of Assignment.
6. Can we also register a trade mark at the European Union Trade Marks Office?
   Yes, we can file directly at the EU Trade Marks Office. The cost of an application is approximately US$2,275.00 and the likely further costs in processing an application through to registration in a straight-forward case amount to US$845.00.

Further Information

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