Your trade mark’s essential function is to be a badge of origin. It distinguishes your goods or services from those of other undertakings or competitors in the same market, thus if a member of the public buys a packet of Tayto, they are entitled to assume that they are buying the well-known “Original Irish Crisp” (a registered word mark in of itself!) and not an imitation.
There are rules around what can and cannot be registered as a trade mark in Ireland however, and these rules are set out in an act of the Oireachteas called the Trade Mark Act, 1996, as amended.
- A trade mark must be capable of being represented on the trade mark register in a manner which enables the Controller and the public to determine the clear and precise subject matter of the protection afforded to its owner. In other words, a word, logo, colour, shape and even sounds can be registered as a trade mark so long as they ban be easily conveyed to the public exactly what it is you are registering. In practice, this means a jpeg file of a logo, a Pantone reference of a colour and an MP3 file of a sound (not exceeding two megabytes!)
- The trade mark must be distinctive. For example, you couldn’t register a random word in common usage such as ‘PREMIUM’ or the letter ‘I’ or a ‘@’ symbol.
- The trade mark cannot describe what the goods or services are or what they do or where they originate. For example, you could not register “FREE RANGE” or “Cork” as part of your trade mark.
- The trade mark can’t be generic. Vaseline was struck off the register in the UK due to it becoming the commonly used term for all forms of petroleum jelly. We often refer to ‘Taytos’ when referring to any form of crisps in Ireland, or indeed the ubiquitous ‘hoover’ rather than the vacuum cleaner. It’s important or businesses to properly police the use of their trade marks in order to minimise the risk of applications being refused.
- A trade mark cannot be the functional shape of the goods. For example, Lego has been refused trade mark protection for construction bricks for the shape of it’s red brick on the basis that it’s shape emanates from it being necessary to achieve a technical result!
- The trade mark registration cannot be contrary to public policy, deceiving, made in bad faith, contrary accepted principles of morality (for example a mark incorporating a swastika or swear word).
- A trade mark cannot consist of a State emblem of Ireland or any insignia that closely resembles such emblem, for example ‘Taoiseach’, ‘Dáil Éireann’ the national flag or a representation of it, or the seal of the President.
All of the lawyers at Briffa are experts in trade mark law and offer a free consultation to advise you on the best way to proceed. Feel free to get in contact to arrange a consultation to determine whether a word mark or a logo/figurative mark is registrable in Ireland or in the EU. Just email, call or fill in a contact form to book a free consultation meeting.
Written by Mark Eiffe, Solicitor