Registered trademarks - Frequently Asked Questions

How to get registered trademarks

Registered trademarks are obtained by formal registration under the laws of the country where trademark registration is applied for. To obtain a registered trademark, there are certain requirements to be met, and certain advantages gained for the trademark owner when the trademark is registered. As trademark agents, we deal regularly with queries from customers about registering trademarks, and we summarise a few of the frequently asked questions about registered trademarks below based on the following:

•   the legislation is based on the current trademark law at time of preparation, and relates mainly to Trade Marks legislation in the Republic of Ireland (which is similar in many respects to UK trademark law and practice, and to trademark law in several other countries),
•   the answers in general about registered trademarks apply to sole traders, firms, partnerships and companies, and
•   we hope the answers give those interested in registered trademarks some insight into the value of registered trademarks, and why they should appoint us as their trademark agents.

We can also act as trademark agents even where there is another trademark agent working with a company, on other aspects of trademark registration.

Sample frequently asked questions Involving Regstered Trade Marks

Click on trademark question list item to go to answer

A registered trademark is a property right obtained by registration of the trademark under the laws of the country where the trademark is used. Trade mark agents can help in structuring an application to register a trademark, and in meeting the trademark registration legal requirements involved.

What trademarks can be registered?
FAQ list

A trademark can be registered if it is a sign capable of being represented graphically which is capable of distinguishing the goods and services of one undertaking from those of other undertakings.

Logos, brands, signs, can be registered as registered trademarks when they meet the trademark legal requirements for trademark registration.

What can a registered trademark consist of?
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A registered trademark may consist of words (including personal names), designs, letters, numerals of the shape of goods or their packaging. There are certain exclusions also that can block a registered trademark, where the term may be in common use in the trade, or where the trademark refers, inter alia, exclusively to the quality of the goods or services.

What rights do a registered trademarks confer to an owner?
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The owner of a registered trademark shall have exclusive rights in the trademark and such rights shall be infringed by the use of that trademark in the country without the owner's consent.

When do the rights attaching to a registered trademark take effect?
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The rights of the owner of a registered trademark shall have effect from the date of registration.

What is the nature of a registered trademark?
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A registered trademark is personal property. In the case of a business, it forms part of the assets.

Can a registered trademark be assigned?
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A registered trademark is transmissable by assignment, testamentory disposition or operation of law in the same way as other personal property, and shall be transmissable either in connection with the goodwill of a business or independently.

Can you make a partial or limited tansfer of a registered trademark?
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An assignment or other transmission of a registered trademark may be partial. Your trademark agents can advise you further on this.

Can a registered trademark be licensed?
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Yes. A license to use a registered trademark can be general or limited.

How is a licence of a registered trademark effective?
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A registered trademark licence shall not be effective unless it is in writing signed by or on behalf of the grantor and this requirement may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.

Is a licence of a registered trademark binding?
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Yes, unless the licence provides otherwise, it shall be binding on a successor to the grantor's interest.

Can you sub-licence a registered trademark?
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Yes, unless the licence provides otherwise, a sub-licence may be granted by the licensee.

To what goods and services does a registered trademark apply?
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Goods and services shall be classified for the purposes of registration of trademarks according to a prescribed system of registration; and every trademark shall be registered in respect of particular goods and services or in respect of classes of goods or services.

Are registered trademarks examined?
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When application is made to legally register a trademark, the trademark is examined from a number of aspects to ensure that it conforms to the legislation. This is especially where the services of a trademark agent can help, with their know-how of the trademark registration procedures, knowledge of trademark regulations, and expertise in dealing with the technical aspects of the procedures.

Can an application to register a trademark be rejected?
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An application to register a trademark can be rejected, withdrawn or opposed. A trademark agent will usually indicate their views on such technical aspects.

What does opposing a trademark registration mean?
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Assuming an application to register a trademark passes through the initial phases involved in examination, rectification and observation, the trademark, following acceptance, is then open to objection from third parties, for a limited period.

Third parties can bring opposition proceedings to protect their own brands and market positioning, depending on the circumstances. Trade mark agents assist their customers with completion of opposition proceedings. Assuming successful conclusion on opposition matters, the trademark then progresses towards formal registration (subject to payment of relevant fees).

How long does trademark registration last?
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A registered trademark lasts at least 10 years. Registered trademarks are renewable indefinitely for successive 10 year periods on payment of renewal fees. [This may vary somewhat for certain countries].

What is the role of a trademark agent?
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A trademark agent or representative acts on behalf of the owner of a trademark. The trademark agent deals with the registration procedures. The trademark agent suggests ways that the registered trademark application can be structured to assist with the technical examination, deals with the regulatory authorities queries, handles trademark classification issues, helps to provide evidential requirements provided to regulators, and represents the owner of the trademark on their behalf.

Trade mark agents also can help in trademark opposition. Trade mark agents, through negotiations, can help to settle trademark opposition cases. Trade mark agents can help owners of registered trademarks to oppose applications that may copy or conflict with existing registered trademarks. The trademark agents can prepare the appropriate documentation. Trade mark agents can advise on prior precedent trademark dispute cases. The trademark agents often can advise on trademark registration strategies in circumstances where a trademark application is challenged or opposed.

How many registered trademarks can my business have?
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A business can have register as many registered trademarks as it requires. Several businesses will not use a trademark in advertising or packaging until it has been registered. This is to ensure the registered trademark is fully protected so that others cannot copy it. It is important, though, that the registered trademark be used within 5 years of the application.

How do you recognize a registered trademark?
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Once registered, the owner of a registered trademark is entitled to use the symbol for registered trademarks, as in TRADE 'n MARK ^® .

How do you change trademark agents?
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It is quite easy to change trademark agents. Let us do the paperwork for you, or visit our how to change trademark agents page.

Can the same trademark be registered in more than one country?
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Trade marks once registered apply throughout the territory of the country where it is registered, but only for the goods and services specified. It is possible to extend the trademark registration from your home country to other countries where you intend to use the trademark. The Republic of Ireland is a party to the Madrid Protocol for the international registration of trademarks. The Madrid Protocol makes it possible to designate additional countires over time, subject to no other prior or similar trademark registrations in those countries involved.

Can I keep the trademark agents for previous trademarks, and use BATTLE for new applications?
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Yes. You can appoint BATTLE as your trademark agents for new applications to register your logos, brands or trademarks in Ireland or, indeed for other countries, for a Community Trade Mark or for the UK.

"JAGUAR" is a registered trademark for cars, can I register it as a trademark for watches?
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In 2006, the High Court in the Republic of Ireland dismissed a claim by Jaguar Cars to prevent the registration of a similar trademark for watches. This was because trademarks are registered only for the goods and services specified at the time of application for trademark registration, and in use therafter. Watches technically belong to a separate classification under the Nice Classification system, and the High Court held that it was possible for another business to register the trademark "JAGUAR" for watches.

What is the difference between trademark registration and business name registration?
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In the Republic of Ireland, businesses are required to register their trading names, mainly for regulatory purposes under the Business Names Registration Act. Business names are not protected under this act from copying or from duplicating. Business owners do not get any brand protection or name protection under that legislation.

In contrast, for protection of business names, logos brands or trademarks, they must be registered as trademarks. Applications for registration of brands or logos as trademarks can be made under the Trade Marks Act, 1996 and under the EU legislation governing Community Trade Marks.

The main difference is that trademark registration is similar to registration of title in property, and confers significant powerful rights to owners of registered trademarks.

Quality trademarks services - for registered trademarks

We are proud of our trademarks service record.
BATTLE aims to provide customers with
high quality trademark services,
so that they will repeat their trademark business
with us again in the future.