How To Register A Trademark

Trademark Registers - Application and Fees

• Irish Trademark +

  After the application is properly lodged, it will first be examined by the trademarks office. This takes two months, but can be extended if objections are raised. The examination checks that the trademark satisfies the basic requirements for a trademark and includes a search for existing Irish, Community trademarks and any international trademarks that designate Ireland in the specified and related classes of goods or services.

  If the trademarks office objects it will give the applicant an opportunity to make written submissions. If these are unsuccessful, the applicant can ask for an oral hearing before a decision to refuse registration is made final.

  If the proposed trademark passes the examination stage, it will be advertised by the trademarks office in its Official Journal. There are then three months for oppositions to be lodged. If no oppositions are lodged the application proceeds to registration, on payment of the registration fee and the application process takes about six or seven months overall.

  If an opposition is filed, you can withdraw your application without incurring costs to the opponent. After that, there are set time frames requiring you and the opponent to file statements of your case, replies and evidence. Some of these time frames can be extended more than once. An opposition will add at least 12 months to the process, possibly even longer. During this time, you may be able to negotiate with the opponent and enter into a co-existence agreement. At the end of this process there will be an oral hearing or exchange of written submissions at the trademarks office. The decision of the trademarks office can be appealed to the High Court in Ireland.

• UK Trademark +

  In the UK, the examination process takes only 15 days if the trademarks office does not object. The examination checks that the requirements for a trademark under UK law are met and will search against conflicting trademarks in the UK and Community Trademark Registers as well as international trademarks designating the UK.

  If it passes the examination, the application will be published in the trademarks office Official Journal the following week. Any person who wants to oppose the application must do so within two months, although they can apply to extend this period by one month. If there is no objection the application will proceed to be registered. The trademark application process takes about three months to complete if there are no objections or oppositions.

  If an opposition is made, you can apply for a cooling off period to try to negotiate or to withdraw the application before incurring further costs.

• Community Trademark +

  An application for a Community trademark can be made in English, but must nominate a second language in which opposition proceedings can be taken. The opponent can decide to bring opposition proceedings in English or that second language.

  The Community Trademark Office aims to complete the registration process for applications which are not opposed within 26 weeks. That is about the same time as the Irish application process takes.

  The process is similar to the Irish process, as the trademark will be examined for formalities first. If it passes, the trademark is searched in the 27 national trademark offices. If these are clear the application is then published.

  An opposition can be filed within three months of the publication. The opposition can be from the owner of an earlier Community trademark or a trademark registered in any of the EU Member States. If an opposition is filed there is a formal cooling off period. During this period the parties can negotiate and either one can withdraw from the application without incurring additional costs. An opposition could add 12-24 months to the application process.

• WIPO International Trademark +

  Because the length of time it takes to register trademarks in different trademark offices, this process can take at least 18 months to complete and often even longer.

• Claiming Priority +

  One advantage of applying for an Irish trademark is that it allows an applicant to claim priority for a period of six months from the date of the Irish application, in a country that is a signatory of the Paris Convention or for a Community or International Trademark. The UK is a member of the Paris Convention and WIPO International and Community trademark systems are also part of the Paris Convention. This can help your business manage your trademark budget by proceeding with the cheapest option first and assessing the likelihood of facing challenge internationally.