An application that is dead and is no longer pending. This happens when the applicant fails to answer official communications within the allowed time. It may be possible to revive or reinstate an application in certain circumstances.
Absolute Grounds for Refusal
These are the reasons for refusal of a trademark that are not related to earlier registered and unregistered intellectual property rights. They relate to the nature of the trademark itself or the manner in which the application is made.
This is the status of a trademark application, after it has been examined by the examiner and has been accepted for publication. It does not mean that the trademark has been accepted for registration.
Account of Profits
This is a remedy to infringement proceedings where a court orders financial records to be examined to ascertain what profits were made by the infringer and orders that to be paid over to the right holder as an alternative to damages.
A consent to something that is implied from conduct or the failure to take steps to prevent the thing happening. This can result in the loss of a right to relief. If an owner of an earlier trademark has acquiesced for a continuous period of five years to the use of a registered trademark in Ireland, while being aware of that use, the owner may no longer be entitled to apply for invalidity of the later trademark or to oppose its use for the goods or services that it has been used with.
Address for Service
An address for service is necessary for applications to register a trademark or industrial design and in some other procedures before the Irish Patents Office. The address can be the address of the applicant or a trademark or design agent if one has been appointed. In Ireland, the address must be within the European Economic Area.
Alternative Dispute Resolution.
An affidavit is a written sworn statement of a person’s evidence made on oath or equivalent. Documents or items referred to in the affidavit can be attached as exhibits, putting them into evidence.
The owner of a registered trademark can apply to the Controller to add to or alter the trademark in any way that does not substantially change it. The Controller can allow or refuse the alteration and can impose conditions on the alteration. The application may have to be advertised in the official journal, allowing others to oppose the alteration.
Alternative Dispute Resolution
An alternative to the court system of litigation used to resolve disputes. In intellectual property disputes it normally involves mediation or arbitration. An ADR process to resolve disputes may be specified in a contract entered into by the parties.
Amendment of Application
An applicant may amend an application to register a trademark by restricting the goods and services specified to which the registered trademark is intended to apply.
Anton Piller Order
This is a type of injunction available in common law countries, such as Ireland and the UK. It allows premises to be searched and material to be inspected and seized without giving prior warning of the search. It is granted where there is a real risk that the other side, if on notice, would dispose of infringing items and documents relating to the infringement. Same as ‘Search & Seizure Order’.
In Ireland, a final decision of the Irish Patents Office can be appealed. This is normally made to the High Court. A decision of the High Court can be appealed to the Supreme Court.
An application is the formal request to register a trademark or an industrial design (a design right).
Application for Customs Action
In Ireland, an intellectual property right owner or authorised/licensed user can apply to the Revenue Commissioners to take action to prevent the import, export and re-export of goods suspected of infringing their intellectual property rights, if the goods are being imported from or exported outside of the European Union.
The person or incorporated body (e.g. company) that applies to register a trademark or an industrial design (a design right).
A method of alternative dispute resolution (ADR). An independent person agreed by both sides resolves the dispute. The decision is binding, except in very narrow circumstances relating to procedure. The decision maker can be an expert in the area and procedures and timeframes can be more informal than court rules.
This is a clause of the Paris Convention which permits State emblems to be specially protected. Ireland has protected the Harp and the Shamrock under this article.
This is how the ownership of an intellectual property right is transferred by one person (the assignor) to another (the assignee). Assignments should be notified to the Controller (recordal). If a trademark is unregistered, it must be assigned with the goodwill of a business, but a registered trademark can be assigned without having to assign the goodwill of the business.
Authorisation of Agent
This is the formal appointment by an applicant of an Irish or European Trademark or Design Right Agent or Attorney to act on their behalf. It is normally done on a specified form or section of an application form.
A Caveat is a request made to the Controller to be notified when a trademark is accepted or registered, or when a design is registered.
Cease and Desist
A letter written to an alleged infringer, demanding that they stop using a trademark or design right in making, distributing and offering for sale goods and services. This letter is usually the first letter written in enforcement proceedings and can lead to injunctions or litigation if ignored.
A type of trademark that indicates that the origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics of goods or services are certified by the owner of that trademark.
Various internationally agreed classifications exist to categorise and search trademarks and design rights. The Nice and Locarno classifications group related categories of goods and services under which trademarks and design rights can be classified. The Vienna Classification is used to classify figurative elements of trademarks (logos and devices).
A search of trademark or design right registers, conducted to highlight already registered trademarks or design rights that may be the identical or similar to the trademark or design being searched against. Classifications are used to help the search. See also Search and Preliminary Search.
This is a trademark covering the goods and services of the members of an Association, which is the owner of the trademark.
Community Registered Design
This is a single industrial design right registered with OHIM that grants exclusive rights to its owner to use the design and to prevent others from using the design throughout the EU. The right protects the outward appearance of a product or part of it, resulting from the features (in particular, the lines, contours, colours, shape, texture and/or materials) of the product itself and/or its ornamentation. The protection is against both deliberate copying and the later, independent development of a similar design. The right lasts for five years and can be renewed for four further periods of five years.
A single registered trademark right that gives uniform trademark protection in all 25 member states of the EU. It is granted by the European Community Trademark & Design Office (The Office for the Harmonisation in the Internal Market) (OHIM). The trademark lasts for ten years and can be renewed indefinitely.
Community Unregistered Design Right
This unregistered right can be used to prevent unauthorised copying of an original design. The right is owned by the creator of the original design. It comes into existence automatically when a new design is first made available to the public within the European Community. It lasts for three years from that date. The right protects the appearance not the functionality of an article.
Common Law Rights
In relation to intellectual property, these are legal rights in intellectual property that do not need to be registered to be enforced by the courts. It must be proven to the court through independent evidence that the applicant is entitled to own the right and that the applicant’s use of the right has built up sufficient goodwill and reputation in the right to be protected from the acts the applicant is complaining about.
Information that is private in nature and that is communicated in circumstances importing an obligation of confidence. Usually, this is information stated to be confidential in contracts, either in a non-disclosure letter or agreement or as a clause in a larger contract agreed between the parties. In the absence of a contract, there may be an equitable right preventing a person who receives confidential information from using it to the detriment of the person who gave it to them.
Consent to Registration
The owner of an earlier registered trademark or design right can consent to a registration, even though that might conflict with their earlier rights.
The address to which a trademark or design right registry is to send correspondence in respect of an application. In Ireland this is known as the ‘address for service’.
Contempt of Court
A failure to comply with an order of the courts. In Ireland, the penalty for contempt of court can be committal to prison for an indefinite period of time until the contempt is remedied, or reasonable steps taken to remedy the contempt.
In Ireland, the Controller of Patents, Trade Marks and Designs. This is the person in charge of the Irish Patents Office and decisions of that office are made in the name of the Controller. If you appeal a decision the appeal will be issued against the Controller.
Copyright is an intellectual property right given to the person(s) who create literary and artistic works. These include writings, music, sound, films, works of art and more commercially, databases, maps, technical drawings and computer software. The duration of copyright depends on the type of creation.
An application made to correct a registered trademark or design right. It can be granted insofar as it does not affect the validity of the registration of those rights in the first place. If court proceedings about the registered right have been issued, then the application is made to the court. If approved it will mean that the error will be considered to have never been made, unless otherwise ordered by the court or the Controller. The Controller can also decide to correct an error on notice to an affected party. Also known as rectification.
The intentional imitation of articles, including their branding without the brand owner’s consent in order to sell the counterfeit articles as the real thing or as cheap imitations of the real thing to take advantage of the reputation and goodwill of the imitated product.
A Counter Statement is filed by an Applicant when a Notice of Opposition is filed against the application to register a trademark. A counter statement should be filed within three months of receipt by the applicant of the Notice of Opposition.
This is a remedy to infringement proceedings. An assessment of the financial impact caused by infringement is made by a judge and ordered to be paid as compensation. In Ireland, in most cases damages are assess in order to put the claimant back into the position he would have been in had the acts complained of not occurred.
Deferment of Publication
Publication of a registered design can be deferred for a period of up to 30 months from the application date or the date priority is claimed from.
This is a remedy to infringement proceedings where the infringer is ordered to give infringing goods, material or articles used in the infringement to the prosecuting right holder.
A word used to describe trademarks that merely describe an ingredient, quality, use, feature or other characteristic of the specified goods and services. Because of this it cannot be registered.
The national trademark office where an international or Community trademark application is filed.Design Rights
The countries listed in an application for an international trademark governed by the World Intellectual Property Organisation (WIPO).
See also Industrial Designs. These are registered industrial designs that give the owner an exclusive right to use the design or authorise others to use it. Irish and Community design rights last for five years but can be renewed for up to four further periods of five years. To be registerable, an industrial design must be new and have individual character. The appearance of the item must be caused by purely ornamental or aesthetic features of the object, such as the lines, contours, colour, shape, surface texture, patterns on an object. But these cannot be part of how the object functions.
This is a remedy to infringement proceedings where infringing items and materials related to the infringing items are ordered by the court to be destroyed. For example, this might happen when an infringing make cannot be removed from items or it may not be practical to do so.
A logo or symbol, which is used as a trademark. This is also called a figurative mark.
A statement filed by or on behalf of the owner of a trademark that the owner has no exclusive rights to a specific element of a trademark. A trademark application form will have a section to disclaim.
You cannot register a trademark that is devoid of any distinctive character. The words used in a trademark may be so closely associated with what the product or service actually is that they do not have any distinctive character to mark them apart from competitors supplying those same goods or services.
An applicant can choose to divide an application that has already been submitted, specifying the different goods or services applied for each division. This may happen before the trademark office indicates its acceptance of a trademark or after an opposition has been filed. The divided applications shall retain the same date of filing and/or priority as the original application.
The process in commercial transactions where an investor will investigate aspects of and representations made by the target company before concluding the investment agreement. For intellectual property an investor may examine registrations and recordals, searches against third parties and correspondence relating to the registered rights.
Actions taken to enforce a registered right either before a local intellectual property office by way of opposition or through cease and desist letters, litigation or alternative dispute resolution.
This is a remedy to infringement proceedings where a court order requiring an infringer to erase, remove or obliterate an infringing mark from goods. If this is not possible the goods may be ordered to be destroyed.
Evidence in Reply
An opponent may, within two months of receipt of the evidence filed in support of an application file a statutory declaration with exhibits replying to assertions made on behalf of the applicant.
Evidence in Support of Opposition
An opponent who contests an application to register a trademark must file evidence in the form of a Statutory Declaration to support the opposition filed by them. This Statutory Declaration can exhibit particular items that the opponent wants to rely on. The declaration must be filed within three months of receipt by the opponent of the counter-statement filed by the applicant. Unless the Controller directs, an opponent who fails to file evidence under this Rule shall be deemed to have abandoned the opposition.
Evidence in Support of Application
If an opponent files evidence in support of the opposition, an applicant has three months to file the evidence that they wish to rely on, by way of a statutory declaration to support the application. This Statutory Declaration can exhibit particular items that the opponent wants to rely on.
The study by an official (the Examiner) of the trademark or design right registry to assess the acceptability of a trademark or design.
An Examiner examines trademark and design applications to ensure that they comply with the various legal provisions.
An exhibit is a document or object included as part of the evidence in proceedings before the trademarks office or the courts on appeal. It can be included as part of an affidavit, statutory declaration or oral testimony.
Ex parte means without notice to the other side. In a hearing before a trademark office it means that the issue only involves one party and the trademark office itself deciding on the issue. In the court system it is relevant when applying for injunctions or similar court orders. Ex parte applications are made where there is a risk that if the other party involved was given notice of the intention to making the application, they could take steps to nullify the effect of the order.
The date of receipt in the registry of an application containing the minimum requirements for requesting the registration of a trademark or design right. If multiple dates then the latest.
A commercial agreement where one party (the Franchisor) provides a package of intellectual property rights relating to trademarks, designs, copyrights, patents, utility models, know-how; shop signs and fit outs; guidance and assistance such as manuals, back office services, training and support services and centralised functions which can be exploited by the other party (the Franchisee) for an upfront and/or annual fee.
A sign used on goods indicating a specific geographical origin and that the goods possess qualities or a reputation associated with that location. For example, Parma Ham for cured ham produced in the Parma region of Italy.
This is the value to a business of its good name, reputation and its connection in the minds of its customers and others it does business with. It is what attracts customers to buy from you. Goodwill has a financial value and can form a significant part of the value of a business.
In Ireland, where a person threatens proceedings for infringement of a registered trademark, except when it relates to applying the trademark to goods, importing goods with the trademark applied, or supplying services under the trademark, the recipient can ask the courts for a declaration that the threats are unjustifiable, for an injunction preventing the threats continuing and for damages. The person on whose behalf the threats were made must show that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trademark.
A hearing is the stage of an opposition process or appeal by an applicant of a decision of the registry, where the applicant or the agent and legal experts presents their evidence and make their submissions. A hearing before the Controller can now by agreement be replaced with written submissions instead of oral testimony.
This is the appearance of the whole or part of an object, caused by the purely ornamental or aesthetic features of a product. These features can include the lines, contours, colour, shape, surface texture, patterns on an object. Registering a new industrial design that has individual character gives the owner an exclusive right to use the design or authorise others to use it. Once registered this is called a ‘design right’.
Infringement is the improper use of someone else’s protected intellectual property rights. In Ireland, a person can infringe a registered trademark if in the course of trade they use a sign identical to the trademark for the same goods or services; or because the sign is identical and is used for similar goods or services (or vice versa) there exists a likelihood of confusion on the part of the public; or uses a sign that is identical or similar to a registered trademark for goods or services which are not similar where the trademark has a reputation in the State and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the trademark.
Includes using a mark on goods or packaging, offering for sale, stocking goods for sale, offering or supplying services under the sign, importing or exporting, using the sign on business papers or advertising.
A court order that requires a party to do something or to refrain from doing something specified in the Order. An injunction is enforced by committal for contempt of court, if on warning the party continues to defy the Order. See also ‘Contempt of Court’ and ‘Penal Endorsement’.
Something of value that is not a physical thing, such as an ipr right, a brand, franchise, or goodwill.
Intellectual property rights, ipr and ipr rights are umbrella terms covering creative inventions, words, logos, designs, software and artistic creations given protection by law. These rights include registered patents, designs, trademarks and copyright. Only copyright does not have to be registered in order to be protected by legislation.
Inter Partes Proceedings
These are proceedings involving two or more parties in conflict which are decided by an independent decision maker. Proceedings in the local trademarks office and the courts can be inter partes.
Similar to an opposition procedure it is when a registered trademark is challenged after it has been registered on grounds normally used to challenge it during the application process.
Irish Patents Office
The Irish Patents Office governs the registers for patents, trademarks and design rights in Ireland. It can also be the designated office for making applications to OHIM and WIPO. See also ‘Controller’.
In some trademark or design right registers this word indicates that a registered intellectual property right is no longer protected because the owner failed to renew the right. It may be possible to restore the registration within a limited period of time.
This is a contract between the owner(s) (the Licesnor(s)) of an intellectual property right gives permission to others (the Licensee(s)) to use the right in their business for a certain period of time and on condition that the terms of the contract are complied.
Likelihood of Association
This can form part of the test of likelihood of confusion when an allegation of trademark infringement is made. It is where customers might think that the infringer’s goods or services are actually associated with the trademark holder or the holder’s goods or services.
Likelihood of Confusion
The test used to assess the merits of the claim for infringement or opposition of a trademark is the “likelihood of confusion” about who is the source of the goods or services among end-users. This confusion includes where there is a ‘likelihood of association’. In deciding whether end-users are likely to be confused, factors such as the similarity of the marks; the similarity of the goods or services; and the end-user market will be taken into account.
The classification system used to classify and search goods relating to registered designs.
Madrid Agreement/Madrid Protocol
The Madrid Agreement/Protocol is an international system of trademark registration, administered by the World Intellectual Property Organization (WIPO). A single application can be made to register a trademark in any number of designated signatory countries to the Madrid Agreement or Protocol, as long as the applicant is resident or established in a signatory country to either the Agreement or the Protocol. Ireland is a signatory of the Madrid Protocol.
A method of alternative dispute resolution (ADR) in which all sides agree the appointment of a mediator to help them reach an agreement. A mediator has no right to force a decision on the parties.
An applicant with separate trademark applications or registrations in respect of the same mark may choose to merge them before notification of acceptance of any of the trademarks, subject to consent by persons having an interest in the trademark(s) and the Controller.
In copyright, moral rights are the rights of an author to be identified as the creator of a copyright work. This is called a ‘paternity right’. An author also has a right to object to an alteration to a copyright work that will alter it in a way that would prejudice the author’s reputation. This is called an ‘integrity right’.
‘Moron in a hurry’
How can we not include this phrase in our glossary? From English it describes a defence to claims of trademark infringement and passing off on the grounds that the opposing items could not be reasonably considered likely to confuse when ‘even a moron in a hurry would notice the difference’.
Up to 100 industrial designs can be combined in one application to register industrial designs as design rights, if they apply to the same class of products and services under the Locarno Classification. This does not apply to ornamental features. The process of multiple applications is designed to make registration of designs cheaper and more attractive.
An internationally agreed classification system used to classify related products and services for which a trademark can be applied. A number of different versions of the Nice Classification are used depending on the local trademark office. There are 45 classes of goods and services, 34 for goods and 11 relating to services.
In Ireland, a registered trademark can be revoked if within the period of five years following the date of publication of the registration, it has not been put to genuine use in the State, by or with the consent of the owner in relation to the goods or services for which it is registered, and there are no proper reasons for non-use. The rule also applies to a suspension of use for an uninterrupted period of five years.
Notice of Opposition
A notice filed in the trademarks office by a trademark owner who believes that their trademark will be damaged by the trademark application. A notice of opposition must be filed within a specified time period after details of a trademark application have been published by the trademark office. In Ireland this is three months. In the UK this is two months, but can be extended up for a third month in certain circumstances. The notice must include a statement of grounds on which the application is opposed.
Office For The Harmonization In The Internal Market
The Office For the Harmonization in the Internal Market (OHIM) is the EU body that controls the register of Community trademarks and designs.
The Irish Patents Office and OHIM have Official Journals in which they publish details of applications and other matters relating to trademarks and design rights are published.
The Office For the Harmonization in the Internal Market
A person who opposes an application to register a trademark.
See Notice of Opposition. The process of asking the trademark office to refuse to register the trademark application. Opposition can refer to the Notice of Opposition and the process of the opposition through to hearing by the trademark office.
Paris Convention For The Protection Of Industrial Property
This is an international treaty on intellectual property that provides common rules between state parties for the administration of intellectual property rights. One important rule is the claim for priority.
These are the fees payable to the Controller for various applications made to the Controller in respect of trademarks and design rights. They are set by statute in Ireland.
Wording added to a court order in circumstances where it is suspected that the party to whom the order is addressed has not complied with it or has taken steps to defeat its purpose, warning that continuing failure to comply or failing to remedy the steps taken to defeat the order will result in an application being made to jail the person.
See also Search and Clearance Search. A search of trademark or design right registers, conducted to highlight already registered trademarks or design rights that may be the identical or similar to the trademark or design being searched against. It may indicate likely oppositions to the application. Classifications are used to help the search.
When an applicant files an application for a trademark or design right in a country that is a party to the Paris Convention for the Protection of Industrial Property, an applicant can later claim the right to use the same application date as the first application if applying to register the trademark or design right in any other countries that are also signatories of the Convention. The priority period lasts for six months for trademarks and design rights.
The date of first filing in a country, party to the Paris Convention for the Protection of Industrial Property.
Details of a trademark application are published after it has been examined by the trademarks office if it has been found to be acceptable following that examination. Publication allows third parties to file Notices of Opposition to the application because they allege it would damage their own intellectual property rights.
A record of transactions and dealings involving registered trademarks maintained by a trademark office.
An application made to correct a registered trademark or design right. It can be granted insofar as it does not affect the validity of the registration of those rights in the first place. If court proceedings about the registered right have been issued, then the application must be made to the court. Otherwise the application can be made to the Controller. If approved it will mean that the error will be considered to have never been made, unless otherwise ordered by the court or the Controller. The Controller can also decide to correct an error on notice to an affected party. Also known as ‘Correction’.
The final, formal rejection by the trademarks office of the application to register a trademark or design right.
A register of trademarks or design rights. The act of registering a trademark or design right.
Obtaining trademark or design right protection. The date of registration is the date of publication of the trademark as registered. The five year period for non-use grounding the right to apply for revocation of a trademark will apply from the date of this publication. It is from this date also that a trademark owner may bring trademark infringement proceedings. However, In Ireland the trademark owner will benefit from rights in the trademark from the date of application and it is this date of application that will be recorded by the trademark office as the date of registration.
Relative Grounds for Refusal
These are the grounds for refusal to register a trademark right because of earlier registered rights or unregistered trademark rights and other rights such as passing off, copyright, registered designs or any other law relating to a right to a name, a right of personal portrayal or an industrial property right. In general the test will assess the similarity of the trademark and the goods or services to which it will apply.
These include damages, an account of profits, injunctions to restrain the defendant, orders for the delivery up or destruction of offending articles.
Deletion from the register of trademarks for failure to renew, or similar to an application for revocation for non-use.
Trademarks and Design rights may be renewed for periods of ten years and five years respectively on payment of renewal fees. Trademarks can be renewed indefinitely. Design rights can be renewed for up to four periods of five years each.
A representation is an image or likeness of the design or trademark (also known as a device or figurative mark).
The process by which a trademark that has lapsed can be restored to the register within a certain period of time.
Renewing an application for registration that has been abandoned or to re-register a registration that has lapsed.
Revocation is the process by which a registered trademark or design can be declared invalid either by the Controller or the courts. This will mean that to all intents and purposes the registration never existed. Revocation can be granted, subject to defences, on the basis of non-use or because of the owner the trademark has become descriptive, the common trade name for the goods or services or misleading.
A payment made for the right to use an intellectual property right.
See also Clearance Search and Preliminary Search. A search of trademark or design right registers, conducted to highlight already registered trademarks or design rights that may be the identical or similar to the trademark or design being searched against. It may indicate likely oppositions to the application. Classifications are used to help the search.
‘Search & Seizure Order’
A phrase used to describe an Anton Piller Order. This is a type of injunction, available in common law countries such as Ireland and the UK. It allows premises to be searched and material to be inspected and seized without giving prior warning of the search. It is granted where there is a real risk that the other side, if on notice, would dispose of infringing items and documents relating to the infringement.
Series of Trademarks
This means a number of trademarks which resemble each other as to their main features and differ only in respect of non-distinctive features which do not materially affect the identity of the trademark. In Ireland a series of trademarks is capped at a maximum of six.
A trademark that applies only to the provision of services by the trademark owner may also be known as a service mark.
A registered trademark may be surrendered by its owner. This includes partial surrender in respect of some of the goods or services for which it is registered. The rights of other people having an interest in the trademark must be taken into account when seeking to surrender a trademark.
Statement of Use/Intent to Use
A declaration made by or on behalf of the trademark applicant that the trademark applied for is already in use in the territory or that there is a genuine intention to put it into use in the territory within five years.
Trademark or trade mark. A trademark is a distinctive sign or word(s) or combination of these that identifies certain goods or services as those of a particular business. They may include letters, numbers, words, shapes, colours, sounds, logos, slogans and more. A trademark can be registered, proving ownership and benefitting from additional protections to those provided to unregistered trademarks. Registration is for periods of ten years at a time and can be renewed indefinitely.
Trade Marks Act, 1996
This is the Act (as amended) that governs the law of trademarks in the Republic of Ireland.
A trademark agent/attorney is a person qualified and registered as a trademark agent. In Ireland this is with the Irish Patents Office. For Community Trademarks this is with OHIM. Trademark agents are entitled to represent parties in relation to design rights. An Irish registered trademark agent who is also registered with OHIM as a trademark agent is called an Irish and European Trademark and Design Attorney.
Trade Mark Rules, 1996
These are the rules (as amended) that govern the operation of the Irish Patents Office as a trademarks registry.
The periodic inspection of new applications made to register trademarks that may conflict with a pre-existing trademark. See also ‘Watches’.
The periodic inspection of new applications made to register trademarks that may conflict with a pre-existing trademark. See also ‘Trademark Watches’.
This describes the status of an application where an applicant formally withdraws the application rather than abandons it.
World Intellectual Property Organization (WIPO)
An intergovernmental organisation (spelt with a ‘z’), that promotes the protection of intellectual property rights throughout the world by encouraging co-operation between nations. WIPO governs the international trademark register under the Madrid Agreement and Madrid Protocol.