Your TM Registration Strategy

Protection for a registered trade mark exists in the country or territory in which it is registered. You can choose to register your marks in any country in which you do business. Businesses should always consider future territories as part of their registration strategy. The online world alerts your brand to countries in which you might do business in the future. You may not be protected in that country or territory.
 
A common initial registration strategy is to register in Ireland and the UK. Some businesses also choose individual EU countries over and above this. For international brands applications can be made for registration under the Paris Convention through WIPO, the World Intellectual Property Office. Through this process each country is chosen and the applications are filed simultaneously.
 
For the EU territory another possibility is filing in the European Union Intellectual Property Office in Spain (formerly OHIM) for a European Union Trade Mark (EUTM). This one application covers all EU and EEA (European Economic Area) countries. Once registered, your mark will be protected across the EU. It can often be more cost effective to register across the EU rather than with individual country by country applications. The application must be made in two of the official languages of the EU.
 
A successfully filed mark once accepted for registration will be assigned a filing reference. This confirms the date of lodgement of the mark or brand for registration. Once registered, the protection will start from this original filing date. Any applicant can proceed within six months to register in another country or territory and claim the “priority” of this earlier date. This means that brand protection in that other country will start from the earlier first date.
 
Trade marks are protected within their “class”. There are 42 categories of business activity or “class” under which marks must be filed. As your Trade Marks Agents we will work with you and recommend the classes in which protection should be sought. Businesses infringing the mark within the same category of business activity (e.g. Retail) can be liable to action by you as rights owner.
 
A sample of governmental charges in offices are as follows:
 
The Patents Office in Ireland

  • On application – The initial application fee is €70.00. If an application contains goods or services in more than one class then there is a fee of €70 for each additional classification.
  • On registration – If the application is successful, a registration fee of €177.00 is payable (regardless of the number of classes applied for).
  • On renewal – The fee for the renewal of a trade mark registration is €250 payable every ten years from the date of filing the application. If the registration is in respect of several classes, there is a class fee of €125 for each additional class over one being renewed.

The UKIPO (UK Intellectual Property Office)

  • On application – GBP£200.00. This covers registration in one class. Any additional classes will incur filing fees of £50.00 each.
  • There are no additional fees on completion of registration.

EUIPO (European Union Intellectual Property Office)

  • Paper application – €1,050.00. This is a unique fee covering application and registration. It covers registration in up to three classes.
  • Online application – €900.00, again for registration in up to three classes
  • Additional classes (e.g. four or more) – €150.00 for each additional class
  • Additional costs may arise in filing for a EUTM for example the costs of getting certified translations of the application in the second official language.

As Irish and European Union Trade Mark agents we have considerable experience in the registration of trade marks and brands in Ireland, the UK IPO office and EUIPO in Alicante. At the outset we advise on trademarks registerability, registration strategies and the costs. We carry out pre-registration searches and advise on the availability of your brand or product for registration.

Contact:

Martin Moloney
info@abacuslegal.ie