One of the most important assets to any company is not only its tangible intellectual property or technical knowledge but its distinctive character. Successful companies can spawn copycat or counterfeit products.
Companies can protect technical knowledge by filing patents. Companies can protect logos by filing Trademarks.
In Ireland, Trademarks and Patents are filed in the Irish Patent Office. In Europe, they are filed in the European Union Intellectual Property Office (EUIPO)
Trademarks are registered under Classes that relate to their use.
Trademarks Classes
The Nice Agreement concerning the International Classification of goods and services for the purposes of the registration of marks is an international agreement under the aegis of the World Intellectual Property Organisation. Its purpose, as the name suggests, is to provide an internationally recognised classification system of goods and services in respect of which trade marks may be registered. Ireland is a member of the Nice Union of countries and this Office applies the Nice classification system. [Rule 6 of the Trade Marks Rules, 1996 refers]
Under the Nice Classification goods and services are categorised in classes, each of which relate to a particular field or fields of commercial activity, for example, food and drink, pharmaceuticals, financial services, etc. The classification consists of 34 classes of goods (classes 1 – 34 inclusive) and 11 classes of services (35 – 45 inclusive). Each class is headed by a ‘Class Heading’ which provides ‘General Indications’ relating to the fields to which goods or services belong (see General Remarks, Nice Classification, 11th Edition). A detailed alphabetical list of items proper to each class is provided under each Class heading. When a trade mark is registered, it may be registered in respect of a particular product or service within a class or for several of the goods or services within a class or, indeed, for goods and services in several different classes. The registration of a mark in respect of specific products or services serves to define the extent of the protection afforded by that registration.
When an application is being searched to determine if there are any earlier marks, which may conflict with the mark that is the subject of the application, it is necessary to identify which other classes of goods or services may contain similar goods or services to those for which registration is being sought. [1]
Enforcing Infringement
When someone infringes, it is a civil act- the tort of passing off applies and the person whom owns the protected intellectual property must sue for the infringement and if successful can be awarded damages for the economic loss which may include orders for profits from the imitation to be passed on.
Recent Case Law
A recent example is a dating site called Muz Match which was sued by the parent company for Tinder and Match.com
Their attempt to file a Trademark in the UK was opposed and rejected by the Comptroller General [2]
They were unsuccessful on appeal in the High Court. [3]
Proceedings also appear to be opened in the US in respect of the matter. [4]
Importance of Searches
At the outset of considering registering intellectual property then searches are of utmost important to mitigate against accidental infringement.
Setanta Solicitors can assist you in relation to your intellectual property matters and are available at info@setantasolicitors.ie
[1] https://www.ipoi.gov.ie/en/types-of-ip/trade-marks/understanding-trade-marks/classifying-your-goods-or-services/
[2] https://www.ipo.gov.uk/t-challenge-decision-results/o08720.pdf
[3] https://www.theguardian.com/law/2022/apr/20/dating-app-muzmatch-may-have-to-change-name-after-trademark-row
[4] https://dockets.justia.com/docket/texas/txwdce/6:2021cv00147/1123410
