Trademark Applications in Kilkenny, Ireland

Lisa Wright,

Did you know that Kilkenny has been ranked as the “friendliest city in Europe”? As well as being a draw for tourists from all over the world to visit its famous castle and crafts hub, the city is also home to all Irish trademark applications at the Irish Patents Office. The Patents Office is the official Irish government body responsible for intellectual property (IP) rights including patents, designs, trademarks and copyright. It manages, oversees and processes all trademark applications in Ireland. 

The Patents Office also acts as an information hub for trademark applicants and provides helpful and innovative in-house customer service. Applicants can call in and chat to a trademark specialist about their trademark candidates. If you need to search further afield, our own international trademark search and clearance tools cover Ireland as well as 179 other countries! 

On January 14 2019, the Irish Minister for Business, Enterprise and Innovation, Heather Humphreys, introduced a reform of Irish trademark law that reduces the cost and increases legal certainty for businesses. This recent overhaul of Irish trademark law follows an EU Directive which has been transposed into Irish law. It is the first major reform of trademark law in Ireland for more than twenty years. The changes include the opportunity to now register non-traditional mark types. They also include the introduction of a new cooling off period for oppositions in Ireland.

TrademarkNow also has a presence in Kilkenny! We opened an office here in 2015 to house our business development, sales and account management teams, as well as product management and strategy. We called into the Patents Office this month to talk to them about the recent changes to Irish trademark legislation and to find out about the work that they do to assist trademark professionals and the business community in Ireland.

Irish Patents Office - Interview with TrademarkNow

What do the recent changes in Irish trademark law actually mean in real terms for businesses who wish to apply to register a trademark today?

The main changes to Irish trademark law arising from the transposition of the EUTM Directive  (EU) 2015/2436 are:

  1. Removal of the requirement that marks must be capable of being represented graphically –  it is now possible to register non-traditional mark types, e.g. sound, multi-media, hologram.
  2. No longer possible to oppose on absolute grounds.
  3. Cooling-off period for oppositions.
  4. Burden of “Proof of use” on anyone relying on an earlier mark.

How many clients use your online databases annually?

We have two trademark databases available to the public, one is for searching by number (Quick Search) and the other searching by details (Advanced Search). In 2018, there were over 25,200 users of both databases.

National Trademarks Filed In Ireland (2008- 2018)

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Have you noticed any increasing trends towards filing in any particular classes?

There has not been any change in the trend since 2008, with the most popular classes consistently being in classes 41, 35, 9, 30 and 5:

  • Class 41: Education; training; entertainment; sporting and cultural activities.
  • Class 35: Advertising; business management; business administration; office functions.
  • Class 9:  Scientific instruments; computers; electricity apparatus; recording, reproduction and transmission of sound and images.
  • Class 30: Coffee, tea, sugar, rice, flour, bread, pastry and confectionery, ices, salt, sauces, spices.
  • Class 5: Pharmaceutical and veterinary preparations; food for babies; disinfectants; preparations for destroying vermin; fungicides, herbicides.

You have an extensive in-house intellectual property library. Can you give us a short overview of your facilities?

Our office houses search facilities, IP Books & legal texts, Annual Reports, official journals etc. Most are available online via our website, (apart from physical books and legal texts).

Can you outline the steps that you recommend a first time trademark applicant to take? (It is recommended that a first time trademark applicant also seeks a legal opinion on their candidates from a trademark attorney).

The first and most important step is to establish if the mark you intend applying for conflicts with an already registered mark. Conduct a search to identify any identical or similar marks that may be a barrier to the registration of your mark. So, do not launch products, design or order packaging or prepare advertising campaigns incorporating your mark, until you are sure no-one else is using it or something too closely similar.

The second most important step is to identify precisely what goods and services you will be trading under your mark and only seek to register your mark in respect of these goods and services. In other words, only for the goods and services which will generate income for you. Many applicants over protect their marks, resulting in additional unnecessary cost. For example, they will seek registration in respect of Class 16 for printed matter, because their mark will appear on stationery, invoices, brochures and other advertising materials. But they are not actually trading in these goods, they are being used by the applicant on behalf of the applicant itself.

Are there any common pitfalls for applicants that you have noticed that have resulted in an application being rejected? 

The two most common reasons for refusal are (i) that the applicant’s mark is identical with or too similar to an earlier registered mark, which is registered for the same goods or services, or similar goods or services; and (ii) that the mark is not distinctive because it describes characteristics of the goods or services, or is merely laudatory, or it is in common use in the trade. 

What can an applicant expect after application?

To have their application examined within 3 months and to receive notification of acceptance or be given reasons for and time to remedy any objections to registration raised by the Office.

And how long does the process typically, from application to successful registration, take in Ireland?

Examination Process

If the Office does not raise any objections, applicants will be notified of the Controller’s intention to register the mark. This normally takes about three months.

Publication

The mark is then advertised in the Official Journal to alert the world that the registration of the mark will happen if no third party lodges an opposition within the two months allowed for doing so. If no oppositions are lodged the applicant will be requested to pay a registration fee within a month. 

So, where no objections are raised or oppositions lodged the typical time from application to registration is about 7 months.

Opposition

If an opposition is raised it typically takes about two years to complete. There are statutory time frames for the filing of evidence which must be adhered to. The parties can seek a formal Hearing of the case. Once the Hearing takes place the parties are normally informed of the Hearing Officer’s decision within a month. 

Once successfully registered, what tips can you share with our readers on best trademark management practice when maintaining and monitoring their trademarks?

Registration

The Office protects registered marks by not registering any marks that are identical with or similar to the registered mark. Therefore, the Office is the first line of defense against third parties encroaching on your mark. The identity test is fairly straight-forward, but the similarity test is subjective and there are times the Office may not deem it appropriate to cite an early mark against a later application. So, it would be wise to monitor what marks are being considered for registration and to take action, if necessary, to stop the registration. This is not easy for a small or medium sized business to do, so trademark proprietors often employ an agent to keep watch on their behalf.

Renewal

Renewals fall due every ten years, so the renewal date is not something that people are particularly conscious of or put in their diary. The Office notifies proprietors of the impending renewal date by writing to the recorded address for service. So, this alerts most proprietors. But many proprietors will change their address during the ten-year period, so it is important to notify the Office of any such change so that renewal correspondence can be delivered. Some proprietors use the services of an agent to ensure their marks are renewed in time.   

Maintaining Trademarks

The most important thing to note is that if you do not use your mark you risk losing it. Proprietors are given five years to put their marks to genuine use and if they fail to do so, a third party can seek its revocation. The Office itself does not check that marks are put to use, but will adjudicate on revocation actions taken.

Also, a trademark is an important asset, which can be licensed or sold. It also adds real value to the worth of the business. So, owners should recognize its value in terms of reputation and goodwill.

You run a busy office. How many staff work at the Patents Office?

We have 46 staff, representing 42.58 Full Time Equivalents. 

What does a typical day look like at the Patents Office?

A mixture of all of the following: receiving applications, examining and making decisions on Patent, Trade Mark and Design applications, corresponding with applicants and agents, information dissemination, working on EUIPO projects and working groups, representing the Office abroad, managing the ICT infrastructure and systems, data exchange, ongoing monitoring and planning for the future.

Going Global?

If you are planning to export your good or service outside of Ireland, you will need to search and clear your marks in each territory that you will serve. 

You can save time and resources by starting your international trademark search today with our on-demand trademark screening and clearance tools. 

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