Legal

Coca-Cola is not just a soft drink, it is a brand that is readily identifiable by millions of people all over the world and is of immense financial importance to the Coca Cola Corporation.

Brand identity in the consumerist society that we live in is of paramount significance and, in the majority of cases, we buy the brand rather than the product. In recent years many players in the Irish construction industry have recognised that their name, reputation and image are bankable commodities when it comes to selling construction services and properties. So how do you ensure that your brand is as safe as houses? You do so by registration of your brand and enforcement of your rights against infringers.

Trade Mark Registration

Above all else, you should register your brand as a trade mark if it is capable of trade mark protection (as discussed below). A trade mark registration permits the proprietor to prevent all third parties not having its consent from using an identical or similar mark in respect of identical or similar goods or services where such use would create a likelihood of confusion. More importantly, a trade mark registration is potentially renewable indefinitely. A registered trade mark can therefore be a very valuable asset. Frequently people assume that their valuable assets are their land or buildings or their plant and machinery but certain intellectual property has the potential to be of far more value than any other assets. Look at Coca-Cola for example!.

Distinctive Trade Marks and Clearance Searches

In order for a brand to be registered as a trade mark it must be distinctive or capable of being distinctive. It is important that any brand chosen is not descriptive as descriptive brands are in general not capable of trade mark protection. It is equally important to ensure that no other entity has rights in whatever name or brand you choose to register as a trade mark. Ascertaining this can be done by carrying out pre-clearance searches, which consist of at a minimum searches of the Irish and Community Trade Mark Registers and may also include what are known as common law searches. Common law searches would include searches of the Company and Business Names Registers, domain names registers and trade directories. In the event that no such searches are carried out, you run the risk of a trade mark infringement action or an objection to your trade mark application (in the form of a Notice of Opposition) should a third party have rights which predate your rights. Searches can therefore help avoid legal difficulties down the road.

Specification and Jurisdiction

Once searches have been completed and assuming there are no insurmountable problems revealed, your professional trade mark advisers will prepare what is known as a goods/services specification which sets out the goods and services on which the mark is or will be used eg building and construction services. The registered trade mark will only give you protection for the goods and services included in the specification. It is therefore very important that the goods and services specification is considered very carefully and all of the goods and services on which you use or are likely to use your brand included eg if you wish to protect your name for use on clothing, you must register the mark for clothing. Another important decision at this point is ascertaining the jurisdictions in which you wish to register your trade mark. Trade marks are territorial in nature and consequently an Irish registered trade mark will only confer protection in Ireland. If you require protection in other jurisdictions, protection should be sought in those countries. There is the option of a Community trade mark which confers registered trade mark protection in the 25 EU Member States and if you require protection in a few EU countries, a Community trade mark may be the most viable option. There is also the possibility of securing an International trade mark, however this is a system whereby you must choose the countries in which you would like to seek protection rather than a single registration that gives protection in a number of countries.

Time Frame

A simple Irish trade mark application that encounters no difficulties or objections from either the Irish trade mark registry or third parties normally proceeds to registration within six to nine months. The time frame in respect of applications to registries in other countries vary. An objection from a third party can occur during the three month period when the trade mark is published for opposition purposes. A third party with a prior identical or similar mark can lodge a Notice of Opposition, which unfortunately results in costs and delays. The matter can be settled amicably between the parties or alternatively the matter can proceed to a hearing in the Irish Trade Marks Office in respect of an Irish trade mark application or to the Office for Harmonisation in the Internal Market in relation to a Community trade mark application.

Enforcement

In many circumstances it is easier to enforce your trade mark rights against infringers if your rights are registered. However, there is little point registering a trade mark if you allow other parties to use the mark without objection. It is imperative that immediate legal advice be sought should you become aware that your mark is being used without your permission. The principle reason you should enforce your trade mark rights is that if you countenance an infringer you may find at a later stage that you are actually estopped from enforcing your trade mark rights. Therefore, notwithstanding the likely cost and management time, a decision not to pursue an infringer (assuming you have been advised on your appropriate chances of success) should not be taken lightly. More often than not, in cases of trade mark infringement and depending on the circumstances of the case, a letter known as a "cease and desist" letter is sent to the infringer putting the infringer on notice that your rights are being infringed and demanding that such infringement stop. In the event that a cease and desist letter does not remedy the problem, appropriate legal action for trade mark infringement and other appropriate legal remedies may have to be initiated.

Overall, the registration and enforcement of your brand is key. Otherwise, you could find yourself in a situation where there exist a number of traders using an identical or similar name and you have to rely on the law of passing off to protect your business (passing off is a remedy at common law and has been defined over the years as a misrepresentation made by a trader in the course of trade to prospective customers of his or ultimate consumers of goods or services supplied by him, which is calculated to injure the business or goodwill of another trader and which causes actual damage to a business or goodwill of a trader by whom the action is brought or will probably do so). A trade mark infringement action is perceived as an easier action to take than a passing off action because in a passing off action you must prove reputation and goodwill whereas with a trade mark infringement action, you merely produce your registration certificate and establish that the other mark is identical or confusingly similar. Making a trade mark application can be a relatively painless task, so go on, get yourself registered and cross this item off the snag list!.

Áine Matthews is an Associate in the firm's Litigation and Dispute Resolution Department. Her practice focuses on advising clients on both contentious and non-contentious aspects of intellectual property. Áine is a registered Irish Trade Mark Agent and European Trade Mark and Design Attorney.

amatthews@lkshields.ie