Policy information
Trade marks
From Department of Enterprise, Trade and Employment
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A trade mark is a sign which distinguishes the goods and services of one undertaking or company from those of another. As indicators of origin, trade marks can be words, logos, devices or other distinctive features, or a combination of any or all of these. Through the use of trade marks, business can be identified, and retain customer loyalty and create value and growth. Trade mark registration is one of the most effective ways to build and defend a trade marks right.
Trade marks are territorial rights. The Intellectual Property Office of Ireland is responsible for the registration of Irish national applications. Once the trade mark is registered it lasts for a 10 year period. This period can be extended indefinitely on payment of a renewal fee every 10 years.
European and international application systems also exist. The European Union Intellectual Property Office (EUIPO), based in Alicante in Spain, provides applicants with the option of applying to register their trade marks across the EU using a single registration procedure. The system is based on filing one trade mark application and the payment of one set of fees. This is a cost-effective system for businesses that trade across the EU.
International trade mark applications can be made through the 'Madrid System', which is administered by the World Intellectual Property Organisation (WIPO) in Switzerland. This provides a mechanism for registering a trade mark in several countries by means of a single application, filed in one language, with one set of fees. A single international application replaces the need for an applicant to file a series of applications with different national Offices in which it wishes to obtain trade mark protection.
The official State emblems of Ireland are the Harp and the Shamrock. The use of the State emblem of the Harp is reserved for official use by government departments and State agencies. Authorisation to use the Shamrock is restricted to goods or services of Irish origin.
Any queries regarding the use of a State emblem or permission to use the emblems must be directed to the Intellectual Property Unit of this department. Application for Ministerial consent to use a State emblem may be made to the Intellectual Property Unit.
A certification trade mark is a mark that 'certifies' goods or services as being of a certain standard or possessing certain qualities such as of origin, material, mode of manufacture of goods or performance of services, quality, accuracy, 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.
An application for a certification mark is made to the Controller of Intellectual Property.
In December 2015, following a process of negotiations between Member States and the EU institutions, the European Parliament and Council approved the European trade mark reform package. The new trade mark Directive and the new European Union trade mark regulation were published in the Official Journal of the European Union on 23 and 24 December 2015 respectively.
In Europe, a trade mark can be registered at national level at the industrial property (IP) offices of Member States, or at EU level as a European trade mark at the European Union Intellectual Property Office (EUIPO).
The transposition of this Directive into Irish law in conjunction with the European Trade Mark Regulation (EU) 2017/1001, (which entered into force on 23 March 2016), aims to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for business in terms of lower costs and complexity, increased speed, greater predictability and legal certainty. The four statutory instruments giving effect to the EU reform package introduce new provisions and amend certain existing provisions in Irish trade mark law. They came into effect on 14 January 2019.
These Regulations, made pursuant to thecc European Communities Act 1972, amend and extend certain provisions of the Trade Marks Act 1996 to give statutory effect in the State to Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 amending Directive 2008/95/EC relating to trade marks and to certain provisions of Council Regulation (EU) 2017/1001 of 14 June 2017, on the European Union Trade Mark.
This Statutory Instrument primarily transposes procedural matters laid down in Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 and thereby amends and extends certain provisions of secondary Irish trade mark legislation namely, the Trade Marks Rules 1996.
These Regulations amend certain technical provisions in the Community Trade Mark Regulations 2000 (SI 229/2000) (“the CTM Regulations”). The amendments are for the purpose of giving effect to technical changes in certain provisions and changes in terminology arising from Regulation (EU) 2017/1001 of the European Parliament on the European Union Trade Mark.
This Statutory Instrument introduces amendments to the Patents, Trade Marks and Designs (Fees) Rules 2001 (SI No 482 of 2001), including the introduction of a new fee of €125 for the division of a trade mark registration (which is required by Article 41 of the Directive).
Guidance Notes on SIs to give effect to Directive (EU) 2015/2436 and Regulation (EU) 2017/1001 on Trade Marks
Considered together as a package, the main common objective of the Directive and the Regulation is to foster innovation and economic growth by making trade mark registration systems all over the EU more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security. These adjustments dovetail with efforts to ensure coexistence and complementarity between the Union and national trade mark systems.
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For ease of reference, a link to the text of EU Directive 2015/2436 and EU Regulation 2017/1001 are provided below.
A certification mark is a mark indicating that the goods or services in connection with which it is to be used are certified, by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
The Second Schedule of the Trade Marks Act 1996 has provisions which allow for the registration of certification marks.
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.
In general, associations make applications for certification trade marks. However any person or organisation that will authorise traders to use it in relation to certain goods or services and who certifies that those goods or services possess certain characteristics can make an application.
An application for a certification trade mark must meet the basic criteria set out in section 6 of the Trade Marks Act 1996. In other words it must be capable of being represented graphically and must be capable of distinguishing the goods or services that are certified from those which are not certified.
A certification trade mark may be registered if it consists of a sign or indication, which may serve, in trade, to designate the geographical origin of the goods or services.
An applicant for a certification trade mark must also supply a copy of the regulations governing the use of the mark within six months of the date of authorisation to proceed and pay the prescribed fee (€125).
These regulations must show:
- who is authorised to use the mark
- the characteristics to be certified by the mark
- how the certifying body is to test those characteristics
and to supervise the use of the mark
- the fees to be paid in connection with the operation of the mark
- the procedures for resolving disputes
A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified.
European Commission evaluation on the implementation of EU Trade Mark Regulation (EU) No 2017/1001
The Better Regulation agenda is the European Commission's regulatory approach to designing and evaluating EU policies and laws transparently, which is evidence based and duly informed by the views of citizens and stakeholders, such as businesses, public administrations, researchers and experts.
The purpose of Better Regulation is to make EU laws simpler, more targeted and easier to comply with, and tailor policies better to those who may be affected. With a view to achieving this, European Commission opened up policy and law-making to citizens, businesses and stakeholders with the Have Your Say website giving access to all public consultations.
On the website, the European Commission publishes roadmaps, proposals for EU legislative acts. When these documents are published, stakeholders and citizens alike have the opportunity to provide feedback for a specified amount of time on various initiatives. The portal allows stakeholders to provide feedback in an open format, which means they can highlight topics or issues regarding a particular initiative they want to bring to the attention of the Commission in their feedback response.
The responses received to the evaluation of the European Union Trade Mark Regulation (EU) No 2017/1001 are available on the European Commission website.
An unofficial consolidated copy of the principal trade mark legislation Trade Marks Act 1996 and supporting Trade Mark Rules 1996 which identified each amendment by separate colour is produced here as a reference document only.
Primary legislation:
Secondary legislation on trade marks consists of statutory instruments (SI) that fall into one of the following categories:
- Trade Marks Rules and subsequent amendments
- Regulations implementing EU trade marks legislation into Irish law
- Commencements Orders, fee changes, and so on
SIs, Rules, Fees and Commencement Orders made under the primary legislation are available to view under the Principal Act on the Irish Statute Book: Trade Marks Act 1996
- Trade Marks Act 1996 (Community Trade Mark)(Amendment) Regulations 2018 (SI No 563 of 2018)
- European Union (Trade Marks) Regulations 2018 (SI No 561 of 2018)
- European Communities (Provision of Services concerning Trade Marks and Industrial Designs) Regulations 2007 (SI No 622 of 2007)
- European Communities (Enforcement of Community Judgments on Trade Marks and Designs) Regulations 2006 (SI No 646 of 2006)
- Trade Marks (Madrid Protocol) Regulations, 2001 (SI No 346 of 2001)
- Trade Marks Act (Section 66) Regulations 2001 (SI No 9 of 2001)
- Trade Marks Act (Community Trade Mark) Regulations 2000 (SI No 229 of 2000)
- European Communities (Community Trade Mark) Regulations 1996 (SI No 10 of 1996)
- Council Regulation (EC) No 422/2004 of 19 February 2004 amending Regulation (EC) No 40/94 on the Community trade mark
- Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs)
- Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark
- Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs)
- Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark
- [external-link https://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=CELEX:31989L0104:en:HTML | First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks
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Singapore Treaty on the law of trade marks
The objective of the Singapore Treaty is to create a modern and dynamic international framework for the harmonization of administrative trade mark registration procedures. Building on the Trade Mark Law Treaty of 1994 (TLT) , the Singapore Treaty has a wider scope of application and addresses more recent developments in the field of communication technologies.
Madrid Agreement concerning the International registration of marks
The Madrid Protocol is an international agreement under the aegis of the World Intellectual Property Organisation (WIPO). Its effect is to allow people and companies to submit a single application for a trade mark, through their own national Offices, designating any or all countries that are party to the agreement.
Nice Agreement concerning the International classification of goods and services for the purposes of the registration of marks
The Nice Agreement establishes a classification of goods and services for the purposes of registering trade marks and service marks [external-link https://www.wipo.int/classifications/nice/en/index.html | the Nice Classification . The trade mark offices of Contracting States must indicate, in official documents and publications in connection with each registration, the numbers of the classes of the Classification to which the goods or services for which the mark is registered belong.
The aim of the Trade Mark Law Treaty (TLT) is to standardize and streamline national and regional trade mark registration procedures. This is achieved through the simplification and harmonization of certain features of those procedures, thus making trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable.
[external-link https://www.wipo.int/treaties/en/ip/tlt/ | More on the Trademark Law Treaty (TLT) (1994)
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The Paris Convention, adopted in 1883, applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models, service marks, trade names, geographical Indications and the repression of unfair competition. This international agreement was the first major step taken to help creators ensure that their intellectual works were protected in other countries.
TRIPS relates to the inclusion of certain intellectual property rights, including trade mark protection, under the auspices of the World Trade Organisation (WTO). It ensures a minimum threshold of IP rights applies in all member states that are members of the WTO.
The official State emblems of Ireland are the Harp and the Shamrock. The National Flag is not a State emblem but is protected under the Irish Constitution. As the Department with overall responsibility for Intellectual Property, responsibility for the State emblems in the context of their use as trade marks and otherwise falls within the Department’s remit.
A person or company, who wishes to obtain registration of a trade mark containing a State emblem or to use a State emblem in connection with any business must first obtain consent from the Minister for Enterprise, Trade and Employment. Any queries regarding the use of a State emblem must be directed to the Intellectual Property Unit of this department. Application for Ministerial consent to use a State emblem may be made in writing or by email to the Intellectual Property Unit. There is no formal application form. Each request for consent will be considered on a case-by-case basis in accordance with the applicable provisions of the Trade Marks Act 1996.
The minister is also empowered to take lawful steps against any person outside the State in the event of misuse of trade marks that would falsely indicate that the goods on which the trade mark is used were of Irish origin.
Ireland has the distinction of being the only nation to have a musical instrument as a national emblem. The Harp was first recorded as the arms of Ireland in medieval times. It is depicted as such alongside the coats of arms of a dozen or more medieval European kingdoms on a single folio of the Wijnbergen roll of arms (a Flemish roll of arms) compiled about 1270. The model for the current standard representation of the heraldic Harp is the 14th century Harp now preserved in the Museum of Trinity College Dublin, popularly known as the Brian Boru or Brian Borumha Harp.
The State coat of arms is a gold Harp with silver strings on an azure field. This is adapted in flag form as the Presidential Standard, which is flown at the president's residence, Áras an Uachtaráin. The government, its agencies and its representatives at home and abroad, also use the Harp as the ordinary emblem of the State. It is the principal element of the seals of the office of president and all government ministers. The Harp is also found on the obverse of Euro coins minted in Ireland.
Tradition holds that St Patrick used the Shamrock, a green trefoil, when preaching the Christian gospel in Ireland to explain the concept of the Trinity. The first records of it being used as a badge on St Patrick's Day date from the 17th Century. Today the Shamrock is also used extensively as a badge by Irish sports teams and, to a lesser extent as a component of the logos of some Irish State organisations and companies, both semi-State and private. It is also displayed on the uniforms of Irish troops serving abroad.
The need to provide protection at international level for armorial bearings, flags and other State Emblems was recognised in the 1925 Act of the Paris Convention for the Protection of Industrial Property. Article 6ter of the Convention has as its objective, to protect, inter alia, armorial bearings, flags and other State emblems of the States party to the Paris Convention. Under this provision, the State emblems of Ireland, namely the heraldic arms, the Harp and Shamrock symbols and escutcheons in various forms as used by the State, were notified to the World Intellectual Property Organisation in January 1985.
In terms of national law, the Trade Marks Act, 1996 sets out the current position in terms of use of the State emblems in a trade mark context. The relevant sections of the Trade Marks Act, 1996 are sections 9, 62, 97 and 98. Section 9 imposes a prohibition on registration of a trade mark consisting of, or containing, a state emblem of Ireland without the minister’s consent. The prohibition extends also to marks that so nearly resemble the emblems that they may be mistaken for such.
Section 97 of the Trade Marks Act 1996 confers enabling powers on the minister to take action in the event of unauthorised use of the State emblems, or those closely resembling them, by any person in the course of business and in a manner which suggests that the use of the State emblems is authorised.
Section 98 of the Trade Marks Act 1996 Act confers extraterritorial powers on the minister to pursue relevant actions outside the State. This provision is designed to prevent, restrain or secure punishment for the registration, use or application in relation to goods not produced in the State, of any trade mark or other mark or description which is either falsely indicative of, or likely to lead to the belief, that the goods are of Irish origin.
Applications for consent to use a State emblem or any queries relating to such use should be directed to the Intellectual Property Unit of this department.