Trademark registration in Ireland

Ireland is an important gateway between Europe and the United States and has a large domestic market of more than 450 million people, which has a great advantage in economic development. Ireland has many developed service industries such as a thriving information and communication technology (ICT) industry or a pharmaceutical and life sciences industry with a high global position. Ireland has a favourable business environment and in a free, stable and transparent market economy, a competitive tax rate system, especially the 12.5% corporate tax. Effective business support policies, simple administrative procedures. Therefore, there are many businesses expanding their business scope here, to be able to distinguish their brand from other competitors, businesses need to pay attention to trademark registration procedures. Viet An Law Firm would like to guide customers through the preliminary procedures for trademark registration in Ireland through the article below.

Legal basis

• Trademark Act of 1996
• Other relevant legal documents

General overview of trademarks in Ireland

Definition of trademark

A trademark in Ireland is a mark that distinguishes one business’s goods or services from another. This sign can be:

• Words: Include brand names, product names, slogans, and even personal names used as trademarks (e.g., Coca-Cola, Adidas, “Just Do It”).
• Logo: A visual symbol that represents the applicant’s brand (e.g. Apple logo, Nike comma).
• Design: Can be two-dimensional (like a logo) or three-dimensional (like a product shape).
• Mark and Lid: Use on packaging or documents for brand identification.
• Sound: Less common, but sounds associated with trademarks, such as trademark music or product sound effects, are likely to be trademarked in Ireland (e.g. Intel trademark music).

Conditions for trademark registration in Ireland

To successfully register a trademark in Ireland, the applicant’s trademark needs to meet a number of conditions:

Distinguishability

• The most important condition is that the applicant’s trademark must be able to distinguish the applicant’s goods or services from the products/services of other enterprises.
• A trademark should not merely describe the characteristics, functions or quality of goods/services.
• For example, “Sneakers” is a generic term that cannot be registered as a trademark, but “Adidas” is a distinguishable registered trademark.

Legitimacy

• A trademark must not infringe the intellectual property rights of others, such as registered brand names or copyrights.
• Trademarks must not confuse consumers. For example, an applicant cannot register a trademark that is too similar to another well-known trademark.

Visual representation

• A trademark needs to be visual, meaning it should be able to be represented by images, symbols or other methods that allow for a clear reproduction.
• For example, logos, slogans, packaging designs can all meet this condition.

Exclusions under the law

• Certain types of marks are excluded from the ability to register a trademark under Irish law.
• For example, national symbols, religious symbols or those signs that are considered to lack distinction.

Trademark filings in Ireland

To register a trademark in Ireland, the applicant needs to submit an application to the Irish Intellectual Property Office (IPOI). Here is a list of required documents:

Application: The application must be filled out in Gaelic or English. Applicants can download the official form from the IPOI’s website

Information about the owner:

• Full name, address and nationality of the owner.
• If the owner is a company, please provide the full name, address, nationality, and business registration number of the company.

Trademark information:

• Detailed description of the trademark: Include clear images (if applicable), wording, and any specific colors used.
• A list of goods or services for which the trademark will be used. Classify these goods/services using the International Classification of Goods and Services (Nice Classification).

Registration fee: The registration fee depends on the number of groups of goods or services the applicant wants to protect. Applicants can find the fee table on the IPOI website.

Additional materials:

• If the applicant is not a citizen of Ireland, the applicant needs to appoint an authorised local representative.
• If the trademark is already registered in another country, please provide a copy of the foreign registration certificate.

Trademark registration fees in Ireland

The fees under Article 3, Table 3 relate to fees under the Patents Act 1992 (No. 1 of 1992) and the Patent Regulations 1992 (S.I. No. 179 of 1992) (as amended).

Some other fees may be incurred during the filing of a trademark application such as verification, issuance of diplomas, objections or modifications

How to file a trademark application in Ireland

To file for trademark protection in Ireland, you can file using the following filing methods:

• Direct submission: You can visit the office of the Irish Intellectual Property Office (IPOI) at Government Offices Hebron Road Kilkenny R95 H4XC to file your application and related documents.
• By Post: You can send your application and all required documents via postal or courier service to the address of the Irish Intellectual Property Office (IPOI) at Government Offices Hebron Road Kilkenny R95 H4XC.
• Submit online via website:

https://efiling.ipoi.gov.ie/sp-ui-tmefiling/oneform.htm?execution=e1s1

When applying online, you should pay attention to the payment of the relevant fee in accordance with the instructions of the Intellectual Property Office of Ireland

Trademark registration in Ireland through the European Union (EU) System

• The EU trademark provides uniform protection across all member states of the European Union.
• The European Union Intellectual Property Office (EUIPO) in Alicante (Spain) is responsible for registration.
• The initial term of protection of the EU trademark is ten years. It can be renewed indefinitely according to subsequent ten-year terms.
• Regulation (EU) No 2017/1001 of the European Parliament and Council of 14 June 2017 contains all legal provisions relating to European Union trademarks.

Trademark registration documents in the European Union (EU)

Application form: The application form is downloadable from the European Union Intellectual Property Office (EUIPO) website. The applicant needs to complete information about the owner, trademark, and list of goods/services.

Brand image: Clear, sharp, fully branded images in JPG or PNG format, up to 2 MB in size.

List of goods/services: A detailed description of the goods/services for which you want to protect your trademark through the Nice classification system.

Registration fee: Basic fee: €850 for each additional group of goods/services the fee will increase by €150

Trademark registration in Ireland through the Madrid System

The Madrid system is a convenient and cost-effective Irish league for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Ireland accessed the Madrid Protocol on 19 October 2001.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Applications consist of the Madrid Singles of Vietnamese origin and the Madrid Applications with Irish designations.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or Irish;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of groups of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Ireland of Viet An Law Firm

• Carry out the search and notify you in writing of the results of the trademark search in Ireland;
• Draft the application and directly file and monitor the status of the trademark application in Ireland on behalf of the trademark owner;
• Inform, advise and handle deficiencies/refusals of competent State authorities (if any) in the process of monitoring trademark applications in Ireland;
• Assist in monitoring, representing the resolution of objections and responding to intellectual property representatives carrying out procedures in Ireland.
• Receive dispatches, certificates and hand over to customers (if any).

If you want to file a trademark application in Ireland, please contact Viet An Law Firm for the most effective support.