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Intellectual Property

The Trade Marks Act, 1996 defines a trade mark as “any sign capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of other undertakings”.

trademark-law

A trade mark is the means by which a business identifies its goods or services and distinguishes them from the goods and services supplied by other businesses and the registration of a trade mark is an important task for any small business owner.

A trade mark may consist of words, (including personal names), designs, logos, letters, numerals or the shape of goods or of their packaging, or of other signs or indications that are capable of distinguishing the goods or services of one undertaking from those of others.

 

Trade Mark Registration

 

Not all trade marks are capable of registration. Registration will be refused for a trade mark which:

  • is not capable of being represented graphically or not capable of distinguishing good or services of one business from those of other businesses,
  • does not have any distinctive character,
  • consists exclusively of signs or indications that designate essential characteristics of goods or services (e.g. their quality, intended purpose, geographical origin etc.),
  • consists exclusively of signs or indications which are customary in the language in the trade,
  • consists exclusively of the shape, arising from the goods themselves, or which is necessary to obtain a technical result, or gives substantial value to the goods,
  • is contrary to public policy or principles of morality,
  • is likely to deceive the public, e.g. as to the nature, quality, or geographical origin of the goods or services,
  • is applied for in bad faith,
  • is identical with or similar to a trade mark that is already on the Register in respect of identical or similar goods.

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Trade mark registration creates an official record of your rights as owner of a particular trade mark and makes it easier to prevent others from using it.

 

Trade mark registration grants a statutory right, subject to certain conditions, to prevent others from using the trade mark without the registered proprietor’s permission – i.e. to prevent infringement.

 

Trade mark registration confers an exclusive right to authorise others by means of licensing to use the trade mark for the goods and /or services for which the trade mark is registered.

 

You should consider registering your trade mark if it is important to you that your customers are able to identify your products and services from those of your competition.

 

Unauthorised use of a trade mark means the rightful owner may lose business and goodwill.

 

Although trade mark registration is not obligatory, registration makes it easier to prevent others from benefiting from the reputation established by the use of a trade mark by allowing the proprietor of the registered trade mark to take infringement proceedings before the court.

 

The fraudulent application or use of a trade mark in relation to goods without the authorisation of the proprietor and/or the possession of goods or material bearing a mark identical to or nearly resembling a registered trade mark, may in certain circumstances, be a criminal offence, and criminal proceedings may be initiated under the Trade Marks Act, 1996.

Unregistered Trade Marks

If you use a particular brand for some period of time then you may have an unregistered trade mark. If someone infringes your brand or trade mark you will still have legal recourse to protect your trade mark.

 

However this will involve commencing legal proceedings under the common law heading of “passing off” and the onus of proof will be upon you to establish proof of your ownership of the unregistered trade mark. This can be costly and time consuming and you will not enjoy the protection of registration and the remedies provided by the Trade Marks Act, 1996.

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Benefits of Trade Mark Registration

The principal benefits of trade mark registration are

  1. Without registration you can only rely on a legal action for “passing off” to protect your rights
  2. Registration will help protect your business identity and goodwill
  3. It is proof of your ownership of the intellectual property rights of the trade mark
  4. Protection against other businesses whose products/services are defective who trade in the industry
  5. Protection against others using similar trade marks.

 

Types of Trade Mark

Ordinary or standard trade mark

The majority of all trade marks fall into this category. They consist of words, slogans, logos, etc. whose purpose is to distinguish the goods and services of their proprietors from those of other undertakings.

 

Collective mark

A Collective trade Mark is a mark that distinguishes the goods or services of the members of an association from those of others.

 

Certification mark

A Certification trade Mark is a mark that “certifies” goods or services as being of a certain standard or possessing certain qualities or other characteristics.

 

A certification mark can only be registered in the name of the proprietors if they themselves do not produce or provide the goods or services to which the mark is applied.

 

Series of trade marks

A series of trade marks is a number of marks, which resemble each other in their important features and differ only in respect of non-distinctive elements that do not substantially affect their identity.

 

Three-dimensional mark

A three-dimensional trade mark is a trade mark that consists of the shape of a product or its packaging.

Application for a Trade Mark(trade mark registration)

Any person or company etc who uses or proposes to use a trade Mark can apply to register that trade mark.

 

An application may be made either before the trade mark is put in use or afterwards. Generally speaking an application should be made to register a trade mark as soon as possible to ensure priority over anyone else who applies to register the same or similar mark.

 

To apply, complete the application form 1 on Patents Office website. The fee for filing an application may be paid at this time or within one month of that date.

 

An applicant may pursue his or her application personally or choose to employ the services of a registered Trade Mark Agent or solicitor.

 

If an application meets the criteria for registration, it is registered with effect from the date of application.

The Application Process

When an application (which contains the minimum information required) is received, a filing date and application number is assigned and a filing receipt is issued.

 

The Minimum requirements for a filing date are –

 

  • A request to register the Mark (completion of the prescribed application form meets this requirement),
  • The name and address of the person requesting the registration,
  • A representation of the trade mark,
  • A statement or list of the goods and/or services for which registration of the trade mark is sought.

 

The application is then examined as to its registrability. The examination process includes a search of relevant databases to ascertain whether the trade mark or a similar mark has previously been registered. If this is found to be the case, then the Office may refuse to register the trade mark.

 

The examination also addresses other obstacles to trade mark registration such as, for example, whether the mark is simply a laudatory statement of a product’s quality (e.g. “Best Quality”) or a sign that has become generic within a particular field of commercial activity. These are among a number of grounds on which an application for registration may be refused.

 

If it is proposed to refuse registration in a given case, the Applicant will be informed of the reasons why and will be afforded an opportunity to make arguments in support of the application. Before any decision to refuse becomes final, the Applicant will have a right to attend an oral hearing before a senior official of the Patents Office.

 

If the application is accepted for registration, details of the mark will be published in the Official Journal. Within 3 months of the advertisement of a trade mark, any person who objects to its registration may send a notice of opposition to the Office accompanied by the prescribed fee and the Office will copy this to the Applicant.

 

Each side (the Applicant and the Opponent) is then given an opportunity to file evidence in support of its case and the question of whether the mark should be registered is ultimately decided by a senior official of the Office.

Length of time

A trade mark registration can last indefinitely provided the registration is renewed. Registration is initially for a period of ten years (from the date of filing of the application) and it can subsequently be renewed every ten years on payment of the renewal fee.

 

If you need a trademark registered of if you are the victim of infringement of your trade mark please use the contact form to contact Solictitors Dublin.

By Terry Gorry Google+

The huge growth in use of the internet in the last few years has thrown up many issues which should be of concern to website owners and in particular small business owners who market their business online.

There are a wide range of areas in which you can fall foul in your promotion of your business on the internet.

illegal-use-of-the-internet

The potential areas of concern for website owners are extensive and include

  • Direct marketing and email marketing
  • Electronic commerce
  • Defamation
  • Copyright infringement
  • Trade mark infringement
  • Domain name disputes
  • Selling online and European Communities directives and regulations
  • Child pornography
  • Liability of internet service providers
  • Employees use of the internet in the workplace
  • Data protection

Three of the most common and serious areas of potential legal difficulty for website owners, individuals and small businesses include

  • Criminal behaviour on the internet
  • Intellectual property rights infringement
  • Infringement of the privacy rights of individuals.

Some of the most common activities on the internet which are or may be illegal (depending on jurisdiction) include hacking, framing, deep linking, harvesting and infringement of trade mark through the use of meta tags.

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Hacking

Hacking broadly breaking into another’s computer or websites to steal information or cause damage. Whilst it can be difficult to prosecute in Ireland the Criminal Damage Act, 1991 contains a number of provisions to combat hackers.

Sections 2(1), 2(2), 3, 4 and 5(1) criminalises

  • Damage to property with property including “data” and damage including erasing, corrupting and altering data;
  • Threat to damage property even if the attempt to damage is unsuccessful;
  • Possession of anything with the intent to use it to damage property;
  • Unauthorised access with the intent to access “any data”.

 

The Data Protection Acts criminalizes unauthorised access to personal data.

Unlawful use of a computer is criminalized by the section 9(1) of the Criminal Justice (Theft and Fraud Offences) Act, 2001 and other illegal behaviour on the internet is covered by the Copyright and Related Rights Act, 2000 and the Electronic Commerce Act, 2000.

 

Harvesting

Harvesting is the activity of the collection of email addresses for spamming purposes and taking of information from databases of third parties without the latter’s consent.

Harvesting is criminalized by the Data Protection Acts 1998 and 2003 and possibly also by the Criminal Damage Act, 1991 and the Copyright and Related Rights Act, 2000.

Deep Linking

Deep linking to other websites can be unlawful in certain circumstances where those links infringe the rights of the owner of the website to which the link goes. (See Shetland Times Limited v Dr. Johnathan Willis [1997])

It is also possible that a simple link to another website which contains a registered trade mark term can be a breach of the intellectual property rights of the site to which you link. Playboy (www.playboy.com) in the United States won a case in relation to this activity when it discovered a pornographic site linking to it with it’s trade mark term.

Framing

Framing, which is the division of a website into “frames” where a website’s text is displayed next to linked third party material in the same window may be a breach of copyright law.

Meta tag trade mark infringement

Many cases in the United States have been taken successfully where a website owner sues a competitor for the use of a trade mark term as a meta tag in the competitors website, even though such meta tags may not be visible to surfers or visitors to the site.

Conclusion

Clearly there are many potential infringements in the area of internet law with remedies provided for in the statute books. It is an area where you would be well advised to assess your current engagement on the internet to ensure you or your business is not storing up problems for the future.

By Terry Gorry Google+

Domain names, which are intellectual property just like trade marks and other forms of intellectual property, have seen an increase in disputes in the last few years.

domain-names-law

 

Terms like ccTLD (country code top level domain such as .ie, .co.uk and .fr) and gTLD(generic top level domain such as .com, .net and .org) can be confusing to the small business owner who simply wants to get his business up on the internet and market his/her business to the world via the internet.

Hopefully what follows will help clear up some of the confusion as to what to watch out for in the whole area of domain name registration, domain name disputes and the value of doing a domain name search prior to registration.

 

However domain name disputes are becoming an increasing problem for business with the proliferation of website, eCommerce and new businesses going online and trading on the internet.

 

And infringements occur regularly in the shape of trade mark disputes, cybersquatting and related issues.domain-name-law

 

It is crucial for any business to have a smart commercial strategy regarding their trade marks and domain names.

 

Domain names can usually be registered quickly and inexpensively. Top Level Domain(TLD) is the suffix such as ie or uk or fr-it denotes the country.

 

 

Within TLDs there are 2 sub-categories

 

1. Generic TLDs (gTLD) such as .com,.net,.org,.biz. These domain names do not have to be distinctive and do not indicate geographic origin.

 

2. Country Code TLDs (ccTLD) which are administered by the domain registry of the relevant country; in Ireland this is IE Domain Registry ltd (www.iedr.ie).

 

In Ireland you must display a real and substantive connection with Ireland when applying for a domain name before iedr will approve your application. You may also need to show a connection with the business that you are referring to in your domain name application.(Check out IEDR.ie)

 

Domain name disputes

 

Domain name disputes have been resolved generally in one of 2 ways-either in court or by reference to the alternative dispute resolution procedure provided by ICANN.

 

This body has adopted the UDRP (Uniform Domain Name Dispute Resolution Policy) which apples to generic TLD name disputes.

 

Some country code administrators have incorporated this procedure into their registration agreements.

 

This UDRP procedure has been very successful and has resolved many domain name disputes; however it does not provide for damages and so a company that needs immediate injunctive relief and damages will be advised to head for court rather than the UDRP procedure.

 

Generally the relief provided is simply to have the domain name transferred to the plaintiff.

 

To win relief at the UDRP you will need to show 3 things

 

1. the complainant must show that the name is confusingly similar to the name in which the complainant has rights

2. the existing holder has no legitimate interest or rights in the domain name

3. the complainant must show bad faith on the part of the holder of the domain name.

 

The holder of the domain name can reject the complainant’s case if he could show bona fide use of the name, non commercial use with no intention to profit, evidence that the respondent is known by the domain name.

 

UDRP also recognise the phenomenon of ‘Reverse Domain Name Hijacking’ which is the occasion when the plaintiff uses the policy in bad faith in an attempt to deprive a registered holder of a domain name of that name.

 

In ccTLD disputes the domain name registry require further proofs before they cancel or transfer a domain name.

 

They would need to see some aspect of passing off or trade mark infringement also.

domain-name-disputes

These disputes can be litigated before the appropriate courts as occurred in Jan. 2009 when Sean Dunne, Property Developer went to court in a dispute to obtain D4Hotels.com from John Brennan who had registered the domain name in his own name whilst running D4 hotels group in Ballsbridge.

 

The IEDR introduced a dispute resolution procedure in 2003 in respect of .ie disputes which you can learn more about on their website.

Conclusion

It is clearly impossible to register all domain names and trade marks which they may feel they need to protect their intellectual property.

 

Sometimes it is more cost effective to purchase the name from the ‘offender’ rather than go to court or UDRP.

 

It is important to recognise the difference between trade marks and domain names and it is prudent for a company to register each of their domain names as a trade mark.

 

Because otherwise their domain name could be registered as a trade mark by a 3rd party.

By Terry Gorry Google+

In contentious business a solicitor may not calculate fees or other charges as a percentage or proportion of any award or settlement.
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