Trademarks 101 – what you need to know

You may not realise it, but your trademark is a valuable business asset.

It is fair to say however it is an asset that is often overlooked or forgotten about.

Studies show businesses that register their trademarks early on tend to experience higher growth.

Why?

Because it shows that you have faith in your brand and it signifies intention.

Your trademark is also key to establishing your brand, as it helps your business stand out from the rest of the competition.

It can boost consumer trust in your products and services as well.

As your business grows and expands over time, so will the value of your trademark, especially if you have managed to build an excellent reputation for providing top notch products and services.

And here’s something else to consider …

One of the first decisions that you will make for your new business is choosing a business name.

While registering a business name with the Companies Registration Office (CRO) gives you a right to use that name, it does not give you the exclusive use of the name.

It also does not provide the right to stop another business from using the same or a similar name.

Exclusive protection only comes from registering your business name as a trademark.

In this Guide we have set out what it means to have a trademark, the process involved and why it is important to consider trademarking for your business.

Plugged is itself an entrepreneurial business and like many entrepreneurial businesses we want to protect our brand, so we have registered our logo as a trademark.

We think it only right that if we are going to advise you on the registration of a trademark that we have experience of it ourselves.

Remember: You are working hard to develop and grow your business and protecting your name and brand is an important part of that.

Why are Trademarks Important?

Trademarks are seldom talked about by small business; and even less seldom applied for.

The fact is that many companies fail to trademark due to a lack of understanding or a mistaken belief that it’s only for large companies.

But the reality is that trademarks are an important form of your IP protection.

Registering a trademark is key to strengthening your business’ professional image, credibility and reputation.

Almost every business has intellectual property (IP) that they can and should protect.

This could be your business name, logo or slogan.

You should identify and protect your IP assets from the very start of your business’ lifecycle.

Ensuring you have trademarked all relevant aspects of your business’ branding becomes increasingly important as your business grows.

When Google started out it was named after the word for a big number suggested by a child.

The value then was zero.

Now that it represents something to people it is hugely valuable.

The same applies to an Irish brand like Kerrygold.

Its value lies in the mind of the consumer.

If the brand makes consumers pick up a gold-wrapped pack of butter and pay more for it than the parchment-wrapped product, then it’s worth a lot.

This means that this Guide is relevant no matter what stage you are at in your business’ lifecycle: if you have an unprotected IP, you need to think about how you can protect it.

So, What Exactly Is A Trademark?

Quite simply, a trademark is the means by which you identify your goods or services.

It distinguishes them from the goods or services supplied by your competitors.

A trademark may consist of words (including personal names), designs, logos, letters, numerals or the shape of goods or their packaging, or other signs or indications that are capable of distinguishing your goods or services.

A trademark enables you to protect your brand and deter competitors from using similar marks.

Examples of familiar Irish trademarks are Kerrygold, Glanbia and Tayto.

If Kerrygold hadn’t been trademarked, others could have used the name and cashed in on the brand.

You have very limited protection if you don’t register a trademark.

This table provides an overview of the key features of a trademark:

Protecting Your Brand

As businesses we all spend a lot of time, effort and money developing our brand.

You may be doing this directly through a focused brand build from the very start; or indirectly by developing a logo and then slowly developing a brand around it.

Either way your brand is important to you (or should be).

But what is your ‘brand’?

What does this mean exactly?

Well, for the purpose of trademarking we consider your brand to have the following identifying elements:

Your logo, your logotype or script, your tagline or slogan, your colour scheme, your packaging, and brand signature items such as a unique scent.

Now, every brand has to start somewhere, including yours.

‘Little acorns to big oaks’ comes to mind!

That’s why you should be protecting your brand(s) with trademarks.

Yet, we suggest that the majority (if not all) of you reading this guide have done little, if anything at all, to protect your brand.

Why is that?

Perhaps you don’t think your brand is worth protecting (imagine what that says to your customers).

Perhaps it’s on your list but somewhere towards the bottom.

Perhaps you think the cost is too expensive to justify the rewards.

…and perhaps you are right.

Trademarking to protect your brand is not for every business.

The question is ‘Is it right for YOUR business?’

And we say that because only you as the business owner know what you want to achieve with your business.

For example, are you considering franchising your business in the future?

Are you considering licensing the use of your business name to a distributor?

Are you considering getting equity or venture capital investment?

Are you considering selling your business?

In all these scenarios you should be considering the merits of trademarking because each of the above scenarios could put your plans at risk if you do not have a trademark.

The extent to which you protect your name legally really hinges on the vision you hold for your business.

Why Register a Trademark?

One of the main issues we see coming up time and again concerns the naming of a business, either in a start-up business or in an already established business.

In a start-up business, the owners normally choose a name and then take the domain name.

They then build their logos around it and spend money on business cards and all sorts of branding, only to be told later that they are infringing the rights of a third party.

You then find yourself being sued and engaged in expensive legal action.

On the flip side of that, you don’t have any aspect of your branding trademarked and you find a competitor using a similar name, logo, colours to achieve the same purpose and competing against you.

Let’s look at an example.

I love duck, so let’s work with ducks shall we.

Let us say that you have been selling a product (say duck food – yum yum) in a blue box with a logo of a duck on it and called “Duck-foods are us”.

Then another person comes along and sets up shop and puts a logo of say a goose on his inferior product, also with a blue box and he calls his product “duck-foods-r-us”.

He sells it for half the price of your product.

Your customers could easily confuse his and your product.

Because his product is of an inferior quality you may lose those customers and, possibly, your entire business over time.

Luckily however, by using the law of ‘passing off’ you can stop an unscrupulous trader from using that name and logo etc and you can protect your business and your livelihood.

However, for you to take a passing off action would be extremely expensive.

The point is that had you registered your business name OR your logo OR your tag line OR your packaging it would substantially reduce the likelihood of just such an occurrence.

And it would be substantially cheaper – just a pittance of what a legal action would cost.

The simple reality is that trademark registration makes it easier to prevent others from benefiting from the reputation you have established.

However, there is a lot more to look out for than just whether the domain name is available.

Legally speaking, domain names are not actually an intellectual property right.

They are simply a contractual right that entitles you to use the domain name for a period of time.

Note: You cannot register a domain name as a trademark.

That’s why in this internet-based business world brands are susceptible to infringement by competitors who use disarmingly similar names or logos.

And here’s a common mistake….

You assume that since you made up a name or logo that you own it and a trademark is unnecessary.

Nope.

Even if you make up a word, you still need to register it as a trademark to be able to fully protect it and enforce your rights to it.

Trademark registration is similar to registration of title in property.

Once it is registered, it cannot be used by anyone else for similar goods and services without the permission of the trademark holder.

If used properly, your trademark can become one of the most valuable assets of your business.

Types of Trademarks

There are various types of trademarks available to you as a business.

13, in fact.

So, let’s quickly familiarise you with these.

1. Word Mark

A trademark consisting exclusively of words or letters, numerals, other standard typographical characters or a combination of these

Examples:  7Up; Just Do It! (Nike)

2. Figurative Mark

A trademark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements or a combination of verbal and figurative elements

Examples:    Nike symbol; Starbucks symbol

3. Combined Mark

A trademark that contains a mix of standard characters and figurative element(s).

Examples: Tayto logo; Kerrygold logo

4. Shape Mark

A trademark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or their appearance.

Example: Coca Cola bottle

5. Position Mark

A trademark consisting of the specific way in which the mark is placed or affixed on the product

Example: Levi jeans stitching; Adidas stripes

6. Pattern Mark

A trademark consisting exclusively of a set of elements which are repeated regularly.

Examples: Louis Vuitton; Gucci

7. Colour Only Mark

A trademark that consists (i) exclusively of a single colour without contours; or (ii) exclusively of a combination of colours without contours

Example: Cadbury Milk Chocolate

8. Sound Mark

A trademark consisting exclusively of a sound or combination of sounds

Example: Harley Davidson, which in 1994 filed a sound trademark for its distinctive V-twin engine sound

9. Motion Mark

A trademark consisting of, or extending to, a movement or a change in the position of the elements of the mark

Example: Terrys Orange – open, half open, closed

10. Multimedia Mark

A trademark consisting of, or extending to, the combination of image and sound

Example: Netflix ‘opening’

11. Hologram Mark

A trademark consisting of elements with holographic characteristics

12. Collective Mark

A collective mark is a mark that distinguishes the goods or services of the members of an association from those of others

13. Certification Mark

A certification mark is a mark that ‘certifies’ goods or services as being of a certain standard or possessing certain qualities or other characteristics.

A certification mark can only be registered in the name of the proprietors if they themselves do not produce or provide the goods or services to which the mark is applied.

Example: Guaranteed Irish

So, whatever you’re thinking of registering you probably can, provided your application fulfils certain requirements.

Can I Register My Trademark?

To quote the theme song from Malcolm in the Middle, “Yes, no, maybe, I don’t know, can you repeat the question”

To know whether or not you are likely to succeed in registering a trademark really requires a detailed assessment of your proposed mark/sign in the context of the law, and existing marks … which is why you should really call us.

Basically, if your sign is capable of distinguishing your goods/services from those of other people, then you are entitled to register a trademark, unless you fall foul of one of the grounds of refusal (oh no!)

Despite all our goings on about trademarks we do want you to understand that not all trademarks are registrable.

So, though you may want to register a trademark, it still needs to meet certain tests before it will pass muster.

In very short summary, the Absolute Grounds for refusal are that a proposed Trademark

• Lacks any distinctive element
• Consists only of terms used in your business area or trade to describe what the goods or services are
• Consists of words or images that have become customary to use
• Consists exclusively of the shape of the goods
• Is a specially protected emblem (Irish Harp)
• Is deceptive about the actual qualities of the goods or services
• Is considered offensive, contrary to public policy or morality; or
• Promotes a service that is against the law.

If your proposed trademark falls foul of any of these problems, it will be refused outright, case closed.

There is a huge amount of law on all of these specific grounds.

But if you were to ask yourself the question, “would it be fair if I was allowed exclusive use of this word to the exclusion of everybody else” and the answer is “no”, then you probably won’t be able to register it.

Important point here…

When you make application to register your trademark you need to ensure that you apply under the right class(es).

Under the Nice Classification, there are 45 different classes that a trademark can be registered under.

The classification consists of 34 classes of goods (classes 1-34 inclusive) and 11 classes of services (35-45 inclusive).

Identifying the correct class or classes can be a time-consuming process.

It is important to obtain professional advice from a trademark specialist because you will be unable to enforce a trademark registered in the wrong class.

How Do You Apply?

An application must be made to the Intellectual Property Office of Ireland (IPOI).

There are 10 sections to the Application Form which must be completed.

You can apply for just one trademark or a series of trademarks.

If applying for a series of trademarks a maximum of six is permitted for each application.

The mere fact of filing a trademark application does not mean that it is, or will be, registered.

When an application is received, a filing date and an application number is assigned, and a filing receipt is issued.

Who Can Object To Your Application?

After IPOI accepts your trademark, it will move to the advertising period.

This is a three-month period during which third parties can notify IPOI that they oppose the approval of your trademark.

Third party objections are rare.

However, it is important to deal with any objections quickly and correctly to ensure that your application is accepted.

Doing so can be time consuming and complicated, but a trademark lawyer can help guide you through the process.

Renewal of Your Trademark

In order to keep your trademark protection in place your trademark must be renewed every 10 years.

This date is calculated from the date of registration.

The fee for renewal of a trademark registration is currently €250.

It is also important to note that applications can also be made for change of ownership and for the registration of a licence.

A licence is a legal agreement in which the owner (licensor) of the trademark grants a third party (licensee) certain rights to use the trademark.

A license may be general or limited and can be exclusive or non-exclusive.

An exclusive licence means a licence (whether general or limited) authorising the licensee, to the exclusion of all other persons, including the person granting the licence, to use the registered trademark in the manner authorised by the licence.

So How Much Will A Trademark Cost?

Currently, it costs €70 per class per mark initially, with a further fee of €177 payable only if the applications are accepted.

If there is no objection to your trademark application, it will take at least 3 months (possibly up to 6) to obtain your trademark.

This is because there is a 3-month period from the publication of the acceptance of your application within which any party can object to your application.