Trademark services

Trademark FAQ

Below are some of the most common questions we get. If you have a question that isn’t covered below contact us at kayanne@khorgansolicitors.com  or by phone at +00 353 (0) 91- 865367 where we would be happy to assist you!

What is a trademark?
A trademark is a word, phrase, symbol or design, or a combination of these, that identifies and distinguishes the source of your goods from those of others. It can sometimes even be a shape, smell or sound! It gives the trademark owner a monopoly to use the trademark and stop anyone else from using it or even from using a trademark that may be confusingly similar. It is the safest way to protect your name and goodwill.
Why register a trademark?
Registration gives you a Certificate of Registration and makes it easier to protect a trade mark i.e. to prevent others from using the trade mark without the owner’s permission. If you don’t register your trademark then you have to rely on your unregistered rights which means proving to a Court by way of evidence that you were using the trademark first and anyone else should not be allowed to use your trademark. This can be very costly.
What is a patent?
A patent is a registered property right relating to an invention. It is not a name or brand and sometimes there is confusion between it and trademarks. Patents are a separate area of protection and law. If you have a patent that has not been made available to the public and may be eligible for protection contact us and we can put you in touch with a Patent Attorney.
What is the difference between using TM and ®?
Anyone can use the ‘TM’ letters after their unregistered trademark. However, the use of the ® symbol means the trademark is registered and therefore has the full protection of legislation as well as common law behind it. Failure to use the ® symbol does not invalidate your registered trademark. Conversely, it is unlawful to use the ® symbol for an unregistered trademark.
If I register my logo in black and white does that mean that the registered trademark will cover all colours or do I need to specify the colours I intend to use?
If you register a trademark in black and white your registered rights are for black and white. If you file it in specific colours then you will have protection in those colours.
Does my Irish registration protect the trademark abroad?
No. The rights conferred by registration of a Trade mark in Ireland do not extend beyond Ireland. It is necessary to register your trademark in each country in which you do business and wish to protect the mark. If you are interested in protecting your mark in other European (EU) countries you should consider applying for a Community Trade Mark which give you protection in 27 EU countries with one application to OHIM. International protection can be obtained by way of an application to WIPO (the World Intellectual Property Organisation) under an international treaty called the Madrid Protocol.
What is an International trademark registration?
An international registration is administered by the International Bureau of the World Intellectual Property Organisation (WIPO) using the Madrid protocol system. It gives the you the option to apply to protect a trade mark in several countries World-wide by filing one application form, in one language, with one set of fees in Swiss francs. Unlike the European Community Trade Mark where you must choose all the EU countries, an applicant for an international trade mark may designate any countries that have ratified the Protocol. An International application must be based on either a previous national or CTM.
How much does it cost?
Irish Trademark Application: If you only trade in Ireland then an Irish trademark will cost €70.00 government application fee for one class. If an application contains more than one class then there is an additional government fee of €70 for each additional class. Once the application is accepted for registration, a government registration fee of €177 is payable. A renewal fee of €250 per mark and €125 for each additional class is payable every ten years. Our professional fees are set at €250.00 per trademark plus VAT.

European Trademark Application:
If you sell your goods and/or services in Europe then a European trademark application would be the best option as it gives you protection in all 27 EU Member States from just one filing. The government application fee is €850.00 for one class (i.e. type of goods or service e.g. confectionary would be one class). If your application is for two classes then there is an additional government fee of €50.00 so €900.00. If your application is for three classes then there is an additional government fee of €150.00 so €1,000.00. For fourth and subsequent classes it is and additional €150.00 per class. There is no final EU registration fee payable. The trademark registration lasts for ten years and can be renewed by payment of renewal fees. This does not involve a new application. Our professional fees are set at €500.00 per trademark plus VAT.
What is a Class?
Insert a keyword for what you will use the trademark for. In other words describe your product or service as it will allow us to know what ‘Class’ it is in. The Nice Classification system is a list of all goods and services according to what they are. E.g. If you have a trademark for a ‘ ‘ then it would come under Class 9 for There are 45 Classes under the Nice Classification system. The first 35 Classes relate to goods and the remaining ten Classes relate to services. Once you choose the class(s) that apply to you at the time of filing they cannot be amended later so it is important to seek advice on what class or classes might apply to you prior to registration. If you do not use your mark for the products or service within your registered classes within five years of registration, others may seek to revoke your registration; this is why it is important to select the right Classes at the time of filing.
How Many Classes Should I register?
You should register your trademark in classes for the product that you now are selling and also for any products you hope to sell in the future.So for example if you were selling a soft drink and you wanted to register the name ‘Coke’ then you would chose class 32 which covers ‘Mineral and aerated waters and other non-alcoholic drinks, except non-alcoholic wines and non-alcoholic sparkling wines; fruit drinks and fruit juices; syrups and other preparations for making beverages’. However, if in the future you wanted to sell tee-shirts or merchandise with the trademark name on it you should also register in class 25 for ‘Clothing, footwear, headgear’.
What are Classifications?
They are the international system used to categorise goods and services for trademark registration. The system is called ‘Nice Classifications’. When an application is made to register a trademark you must tell the registration office what goods or services your trademark will be used for.

There are 45 classes. 1-34 are for goods and 35-45 are for services.
See the list here: http://www.wipo.int/classifications/nivilo/nice/index.htm
If you require assistance in deciding which class(s) you want your trademark to cover please contact us on +00 353 (0)91- 865367.

What is a Search?
We can search the databases before filing your application to find out whether or not a similar trademark has already been registered. If a similar trademark has been registered then the owner of that trademark could oppose your application and perhaps stop your application.
Trademark Protection in the UAE
The United Arab Emirates (UAE) has been a member of the Paris Convention for the Protection of Industrial Property since September 19, 1996. The International Classification of Goods and Services for the Purpose of the Registration of Marks under the Nice Agreement (9th edition) is followed in the UAE and the revision of class 42 with the creation of classes 43 to 45 has been adopted as of January 1, 2002.

Federal Law No. 8 for the year 2002 amended some articles of the Federal Law No. 37 for the year 1992. The law covers the seven Emirates of Abu-Dhabi, Dubai, Sharjah, Ras Al-Khaimah, Ajman, Fujairah and Umm Al-Quwain. A separate application has to be filed with respect to each class of goods or services. A certified translation of the trademark is to be submitted as well.

Once a trademark application is filed, it is examined as to its registrability. Trademark applications accepted by the Registrar are published in the Trademark Journal as well as in two local daily Arabic newspapers and the cuttings of the notices are to be submitted to the Trademark Office. Any interested party may file a notice of opposition to the registration of the mark within 30 days from the date of any publication. The Registrar’s decision concerning the opposition may be appealed to the Committee and the Committee’s decision to the competent court. In the absence of opposition, a trademark is registered and the relative certificate of registration is issued.

According to Decree No. 12 for 2002 issued by the Ministry of Trade and Commerce on February 3, 2002, payment of registration fees should be made within 60 days from the date of expiry of the opposition period or the date of receiving a decision from the Trademark Office regarding an opposition (if any). Based on this, our invoice covering registration charges will be issued at the filing stage in order to attend the payment of the official fees to the Trademark Office.

A trademark registration is valid for 10 years as of the date of filing the application renewable for similar periods. The renewal fees of a trademark registration can be paid during the final year of the protection period.

A grace period of 3 months is allowed for late renewal with a fine. The renewal of a trademark is also published in the Trademark Journal and in two local daily Arabic newspapers. The ownership of a registered trademark can be assigned with or without the goodwill of the commercial enterprise. Unless an assignment has been recorded in the register and published in the Trademark Journal, the assignment shall have no effect vis-à-vis third parties. Changes in the name and/or address of the registrant must be recorded in order to protect rights. Registered user agreements, license and amendments which do not affect the identity of the mark substantially, limitation of the list of goods and/or services covered by a trademark registration can be recorded as well.

Use of a trademark is not compulsory for filing application for registration or for maintaining the registration in force. However, any interested party may request the court to cancel a trademark registration, if the owner fails to use such a trademark in the UAE for 5 consecutive years from the date of registration.

Illegal and/or unauthorized use of a registered trademark by any third party, use of a fake or counterfeit trade/service mark, application to one’s goods a registered trademark belonging to another party in bad faith, dealing in goods bearing a fake or counterfeit trademark, rendering services under a fake or counterfeit service mark, and use of a trademark that falls under certain categories of unregistrable marks are offenses punishable under the law in the UAE.

If you have a question regarding trademark protection or registration in the UAE please contact us and we will provide assistance through our linked firms.

In addition if you wish to incorporate a new company in the UAE or set up a branch office we can refer you to our company incorporation specialists.

W. W. F. World Wildlife Fund for Nature (formerly World Wildlife Fund) and World Wildlife Fund Inc v. World Wrestling Federation Entertainment Inc.
Chancery Division – UK

Facts

This case concerned a trademark dispute in relation to the acronym WWF and action brought by the World Wildlife Fund. It sought to prevent conflict and confusion between the two parties involved both of which had global presence.

Both parties have been involved in various trademark disputes involving consumer confusion. The Claimant had brought action in the court against the Defendant in relation to trademark issues and its potential association with the World Wrestling Federation’s reputation of violence, harassment, paedophilia and rape.

The two parties previously entered into a complex agreement relating to the limitations of the Federation’s use of the acronym WWF. The Federation agreed and complied with the terms of the contract until it had registered the domain www wwf.com in 1997.

The Federation claimed that it had breached the contract as the clauses were both restrictive on trade at common-law and also restraints in breach of Article 81 of the Treaty of Rome. The Claimant applied for a summary judgment in relation to the enforcement of the contract.

Held

The Court granted a summary judgment stating that there was a restraint of trade but that the restraints were justified and therefore the Federation had a duty to comply with the terms set out in the agreement.

Contracts are a restraint of trade and void if they are unreasonable in all circumstances. It is unlikely that the court will interfere if the contract has been agreed by both parties and has equal bargaining strengths and powers.

It is imperative to understand that a trademark right is a restraint of trade in its very nature. The settlement agreement will cause problems especially when the restrainee agrees not to infringe (as it is almost useless) as a restrainee can argue that its acts fall outside the scope of the rights and it is therefore left for the restrainor to prove otherwise. In practice it is essential that for a settlement agreement to succeed it must specifically state what the restrainee can and cannot do.

However, the general rule of thumb when restrictive trade is imposed by an settlement agreement, for there said to be a breach of a restraint of trade in must be shown:

A. A fetter of trade; B. The restraint extends beyond the general scope of monopoly awarded by the intellectual property rights in question.

The Court asked the question whether there was a restraint on the Federation, the court found that there was as the federation had been using the initials WWF in the USA and at an international level.

What was essential to the case was whether the restraint was justified. The court found that it was essential for the Fund to have an agreement in place restraining the Federation’s use of the letters WWF to prevent any confusion or association with the Federation’s criminal proceedings and general reputation.

Another duty of the court was to ascertain whether the parties had equal bargaining powers. The Court found that they did, and that just because the federation faced criminal proceedings and financial difficulties, at the time of the agreement both parties have been represented and had the opportunity to negotiate matters at hand. The Federation was also a profitable and multinational business, which also benefited from the agreement in question. It had also been claimed by the Defendants that the agreement became onerous and as the results was in breach of Article 81. However it was held that the agreement had only become onerous as a result of the Federation’s breach.

Although the agreement did not expressly prevent the Defendant from registering the domain in question, the domain could not be registered as it was clear that the use of WWF in the domain name would be inconsistent with the rest of the general agreement. The .com is a worldwide domain and is therefore directed at the whole world and would therefore encompass the whole of the agreement.

Unsolicited Letters Seeking Fees
Brand owners beware! If you have filed a trademark application with your own country’s trademark office or OHIM or other office, it is likely that you will be the target of companies that attempt to confuse brand owners into paying unnecessary fees.

Trademark filings are a matter of public record. Therefore, anyone with an Internet connection has access to the particulars of trademark applications and registrations. As a result, some companies try to trick trademark filers into paying fees for unnecessary services. These companies mass mail a very official-looking form requesting the payment of fees (usually an odd amount, such as $677.00) to “publish” or “register” your trademark.

How do I know what notices are legitimate?

Before paying any trademark-related fees, verify that the invoice is from an authorized entity. Of course, many of the companies that try to confuse trademark owners attempt to appear as official as possible. Note that OHIM, the UK Intellectual Property Office, the Patent and Trademark Office in the United States, and in virtually all other countries, do not write directly to the applicant if it is represented by legal counsel or a trademark agent. Accordingly, if you are represented by a lawyer or agent, pay particular attention to any unsolicited mail you may receive that purports to relate to your trademark. When in doubt, contact your trademark counsel about documents of questionable authenticity or merit that are related to your trademarks.

Notification of overseas domain name registrations

Many different entities, primarily based in Asia, have contacted our clients claiming that someone has applied to register domain names which incorporate their logo. Sometimes these entities say they are just checking that you have authorised these registrations, while at If you respond to these entities you may find that they register the relevant domain names themselves and then try to sell them to you at a highly inflated price. Even worse, they could be operating a phishing scam and contacting you as a ploy to obtain your credit card details.

Chinese trademark squatting

China has a first to file trademark registration system, so the applicant who is first to file a trademark application is deemed to be the rightful owner of the mark. Unfortunately, China’s system has encouraged the practice of trademark squatting. Squatters commonly file hundreds of applications for trademarks they never intend to use.

Sometimes they will contact you with an offer to sell the registration, or sometimes you will simply be shocked to find that your logo has already been registered and you need to negotiate its purchase from the registrant. Most concerning are unsolicited approaches by Chinese lawyers apparently offering to litigate on your behalf to retrieve your rightful trademark – these lawyers are often in on the scam, having an indirect connection to the squatter in the first place.

What to do?

If you receive unsolicited IP-related correspondence:

– Be aware that, unless it’s from your usual IP provider, it could be a scam.

– Cotact us in the first instance so we can assess its relevance.

– Don’t engage with the sender.

– Never disclose your credit card or other financial details.