Trade Marks

 

The proprietor of the mark, individual or corporation; two or more parties can apply jointly.

 

International 45 classes of goods and services. Multiple class applications are not admissible, applicant must file an application to cover each class.

 

Automatic, timing is dependent on official workload

(Typically 12-14 months). Expedited examination is not possible. If a conflict has emerged Judge must wait for official decision.

 

After acceptance by the Trade Marks Office a final fee is payable, to obtain the trademark certification.

 

The trademark is published after a formal exam by Trade Marks Office (typically 3 months).

 

Opposition is possible if a notice of opposition is filed within 30 days from the publication date.

 

Marks are subject to revocation if not used for continuous periods of five years since the date of registration.

 

The initial term is 10 years renewable indefinitely for periods of 10 years.

 

A 'trade mark' is any sign capable of distinguishing your goods or services from other goods and services. It may consist of words, logos, the shape of the goods or their packaging, or a combination of all of these.  

A registered trade mark gives the owner a monopoly right to prevent use of identical or similar marks on the same or similar goods or service.  

Details of how to register a trade mark are available at the Intellectual Property Office's website. The process of registration can take 9 to 18 months, before which only the limited protection of unregistered trade marks applies. 

A registered trade mark needs to be renewed every 10 years to keep it enforceable.

Slogans can be notoriously hard to register as trade marks as they often fail for being devoid of any 'distinctive character'. Take the slogan for Kit Kat as an example. The words "have a break..." when taken by themselves are hardly distinctive.

This is where the 'acquired distinctiveness' provision of the Trade Marks Act comes into play. Where a slogan has been used over a length of time so that it could be said to have acquired distinctiveness then a trade mark will not be refused registration by virtue of it being devoid of distinctive character. Guidance suggests that a mark is possible of acquiring distinctiveness if it has been in use for 10 years, however this is not the be all and end all as it must still be recognizable in the minds of the public. 

 

What does ™ mean? 

The TM symbol is used to illustrate that a word, phrase, slogan, color or other graphical representation is being used as a trade mark, although it has not been registered as such.  

An unregistered trade mark does not have the same protection as a registered trade mark; however, there can be legal consequences for anyone who attempts to 'pass off' goods using someone else's unregistered trade mark as their own, provided that the unregistered mark has achieved a sufficient reputation. Even unintentional use of an unregistered trade mark can leave a person open to legal action. 

However, trying to bring a claim for infringement of an unregistered trade mark can be both difficult and expensive. It is therefore generally advisable to register a trade mark if possible.

The presence of an ® symbol signifies that the trade mark has been registered, and warns others not to use it without the necessary permission. 

 In order to use the symbol, companies need to apply to have the trade mark registered at the Trade Marks Registry, where it will be examined to ensure it meets the requirements of a trade mark.   Using the ® symbol where a trade mark has not been registered is a criminal offence.