Trade mark
explained.

A trade mark can be a word, logo, slogan, colour, shape, sound, or combination of these — provided it is distinctive and capable of identifying the goods or services of one business from another.

Marks that are descriptive (e.g. "Fresh Bread" for a bakery), generic, purely geographic, or contrary to public policy cannot be registered. Marks that are confusingly similar to an existing registered mark will also face objection.

A clearance search and registrability assessment is always recommended before filing. It is much cheaper to identify a problem before filing than after.

An EU trade mark (EUTM) filed with the EUIPO covers all 27 EU member states — including Ireland — with a single application and a single fee. For most businesses, the EU trade mark is the more cost-effective and strategically sound choice.

A separate Irish filing is only necessary in specific circumstances: for example, where an EU application has been refused and you wish to protect the mark in Ireland alone, or where the business trades exclusively in Ireland with no plans to expand.

We advise on this during the strategy consultation stage. In the vast majority of cases, the EU trade mark is the right starting point.

In a straightforward case — no objections, no opposition — both Irish (IPOI) and EU (EUIPO) trade mark registrations take approximately 8 to 12 months from filing to registration.

Both offices examine the application, and if satisfied, publish it for a three-month opposition period. If no opposition is filed and no substantive objections arise, the mark proceeds to registration on payment of the registration fee.

If the registry raises objections or a third party files an opposition, the process takes longer. We keep you informed throughout and advise on all developments as they arise.

A clearance search examines the Irish, EU and international trade mark registers for earlier marks that may conflict with yours. It is an essential first step before filing any application.

Filing without a clearance search risks filing against an existing registered mark — which can result in a registry objection, an opposition from the earlier mark owner, or (in serious cases) an infringement claim after you have been using the mark.

The cost of a clearance search is modest. The cost of resolving a conflict is almost always substantially higher. We recommend it in every case.

Learn more about our Clearance Search service →

Trade marks are registered in respect of specific goods and services, organised into 45 classes under the Nice Classification system (Class 1 to Class 34 cover goods; Classes 35 to 45 cover services).

Selecting the right class or classes — and drafting an accurate, appropriately broad specification of goods and services within those classes — is one of the most important aspects of a trade mark application. The scope of your protection is determined by what you register.

Many clients under-specify their mark and end up with weaker protection than they expected. Others over-specify and face objections from the registry. Getting this right requires experience. We advise on class selection as part of every registration.

Yes. Both IPOI and EUIPO accept direct applications without a professional agent. The process is online and the forms are straightforward.

However, errors in class selection and specification drafting are common in self-filed applications — and they are difficult or impossible to correct after the filing date. A poorly-drafted specification may provide narrower protection than you intended, or lead to a refusal on examination.

A fixed-fee agent service typically costs less than the time and expense of resolving a badly-filed application — and considerably less than a conflict or infringement dispute that a clearance search would have identified.

During the three-month opposition window after publication, any third party — typically the owner of an earlier similar mark — can file an opposition.

If this happens, there is a formal procedure: both parties file written submissions and evidence, and the registry makes a decision. In many cases, oppositions are resolved by negotiation — through a co-existence agreement, a consent arrangement, or a limited amendment to the specification.

As both a Trade Mark Agent and a practising solicitor, we handle opposition proceedings directly without referral to separate counsel. Where an opposition arises, we advise on the options and provide a cost estimate before any further work is undertaken.

A registered trade mark is valid for 10 years from the date of filing. It can be renewed indefinitely for further 10-year periods on payment of the renewal fee to IPOI or EUIPO.

Unlike patents, trade marks do not expire as long as they are renewed and remain in genuine use. A well-maintained trade mark can become one of the most valuable assets in a business.

We manage renewal deadlines and notify clients in advance. See our renewals service →

The Madrid Protocol is an international trade mark system administered by WIPO (the World Intellectual Property Organization). It allows you to file a single international application — through a base national or EU mark — and designate protection in multiple countries simultaneously.

It is the most cost-effective route for extending trade mark protection outside the EU. Fees vary depending on the countries designated and the number of classes. We advise on international filing strategy and provide fixed-fee quotations for Madrid applications.

Learn more about international trade mark filing →

Your options depend on whether you have a registered trade mark, whether the other party has a registration, when each party began using the mark, and the territories involved.

With a registered trade mark, you have the clearest legal basis for action: a cease and desist letter, opposition proceedings at the registry, or infringement proceedings in the High Court. Without registration, you may have rights under the common law action of passing off, but these are harder to establish and more expensive to pursue.

As a solicitor and trade mark agent, enforcement matters — from initial correspondence through to litigation — are handled directly. Contact us to discuss your situation.

Learn more about trade mark enforcement →