Many thanks Gráinne. Seeing as the first edition was published over ten years ago, this book was long overdue! It was really necessitated by the amendments to the legislation of trademarks at pan-European level, namely the EU Directive of 2015 and the related European Trade Mark Regulation No. 2017/1001. The Regulation came into force in Member States in early 2019 and, in Ireland, resulted in around five SIs being introduced here at that time which amended the Trade Marks Act, 1996. The European legislation widened the scope of trade marks that could be applied for, introduced new defences, and reshaped infringement for a start.
Trade marks are a badge of origin, be it of an entity’s goods or their services, or both. They are signs and symbols, indicia of quality really. What readers may not realise is the different types of trade marks that exist. Whilst everyone will know of word and figurative (logo) marks, which are the so-called ‘conventional’ trade marks, readers may be interested to know that the following can also be applied for as a registered trade mark: shapes, colours, slogans, motion marks, holograms, multimedia marks (comprising images and sounds), pattern marks, position marks and sounds. These are the known as ‘non-conventional’ marks. And, in due course, I have no doubt we will see applications for the registration of more unusual types of trade marks, such as gustatory (taste) marks, olfactory (smell) marks or tactile marks.
Aside from the conventional and less conventional marks outlined above, there are also other forms of trade marks including certification marks (these signify that the goods/services are of a particular standard), collective marks (these distinguish the goods of members of associations) and let us not forget the all-important registered protection for drinks such as Champagne! I find the whole area of Protected Geographical Indications (PGI) and Protected Designations of Origin (PDOs), as well as Traditional Terms for Wine (TTW), very interesting. These protect agricultural products, food, and drink such as Irish Whiskey, the Waterford Blaa, Parma Ham and the like. A new Regulation was recently adopted by the EU Commission which will also see this protection extended beyond food and drink and will cover crafts and industrial products, such as Donegal tweed and Murano glass.
Distinctiveness and non-descriptiveness are key, and this is borne out by the legislation. So many clients come to me and want to apply to register a trade mark that is wholly descriptive. Unless there has been use of the particular mark for years, it is highly unlikely that a mark could ever be distinctive or catchy if it merely describes the goods and services that it is used on. I love any trade mark that is snappy and commands attention straight away, that’s exactly what is needed. So, you should think more along the lines of perhaps a playful nod to the goods and services but steer clear of descriptiveness. It’s a trap so many fall into.
It is also important to know what cannot be registered, such as descriptive or generic terms (for example, geographical terms notoriously difficult to register). Trade marks which are contrary to public policy or morality are also unregisterable. The difficulty is that public policy and morality are not defined in IP law but marks which may be objected to under these headings may include vulgar terms, terms with an ideological slant, drug related marks, marks which have criminal connotations, or which are offensive on grounds of race, religion, sex etc. Applicants seeking registered trade mark protection should also be cautious about the meaning of a particular term because what may be fine in one language in the EU may be hugely offensive elsewhere. There’s a lot to think about when advising a client on trade marks.
In Ireland we have two systems in place for the protection of trade marks:
1. Unregistered rights – these arise when a trade mark is used in trade and these rights are protected by the law of passing off.
2. Registered rights – registrations are protected by statute and are enforced through infringement proceedings.
From the practitioner’s perspective, the bottom line is that registered trade marks are easier to enforce. The test to be met to enforce unregistered rights is a lot harder than that which must be met for infringement proceedings under the Trade Marks Act. I would also stress to clients that a trade mark registration is a property right and an asset and, as such, it can be transferred or exploited through licensing and can also be used as a security interest. As a property right, a registration is technically renewable indefinitely (at ten-year intervals) unless it is attacked. The holder or authorised user of a registered trade mark also has the right to use the ® symbol, which denotes that the mark is registered. This acts as notice and a deterrent to third parties. For those marks that aren’t registered, the ™ can be used.
Their clients will effectively have to decide three things and the advice given to them should start with that:
Costs may dictate a lot too, so it is important to bear the clients budget in mind especially if they are a start-up.
Once a mark has been decided on by the client, they need to be satisfied that it is free to use and/or free to register. You don’t want your client to put a mark to use on the market or to file an application for its registration at an IP office only to find out that someone else has earlier rights which they might avail of to stop your client’s use, be it through opposition to an application for registration at an IP office or through enforcement proceedings in the courts. That is why is it crucial have searches of the trademark registers carried out in the countries of interest to your client, to see if there are any earlier identical or similar clashing applications or registrations. Professional firms carry these out such searches, but they are never exhaustive. Common law searches are also possible too (to try to ascertain if there are any unregistered right holders or whether the trade mark is in use in trade by others) but, unfortunately, these searches are also never exhaustive. However, it is better for your client to try to clear the rights as best it can through searching before it makes any use of the mark in commerce.
As to how you register an application, this is done predominantly online nowadays although it is still possible to file a hard form and, if an applicant meets the criteria for registrability and they aren’t stepping on any other party’s toes, registration isn’t that difficult to do.
The EUIPO is the European Intellectual Property Office which is tasked with the registration of pan-European trade marks and design rights. I would advise any solicitors or any applicants to read the EUIPO Guidelines on that website (www.euipo.europa.eu) or to look at the website of the Intellectual Property Office of Ireland (www.ipov.gov.ie). The World Intellectual Property Organization (WIPO) also has a lot of useful information on its site (www.wipo.int) but that is mainly for international Marks.
Too many to mention! The main thing to consider is what is registrable and what is not. If your client’s mark is descriptive or is devoid of distinctive character, it will likely be officially objected to and then you will have to demonstrate to the relevant IP Office why you think it should be registered and that could be an uphill battle. Also, in some IP Offices (such as the Irish one), if your application is identical or similar to earlier registrations or applications, the earlier rights can be cited as an objection against your client’s application and your client will have to jump through hoops to try to have those objections waived such that their application can be accepted. That is why the searches I spoke about above are so important.
It is also vital to ensure that the applicant can legitimately hold property. Whilst several IP Offices are vigilant in this regard, others won’t check.
There have been a few interesting decisions in recent years, both at the EUIPO and before the Irish Courts.
An example of an Irish-related case before the EUIPO was Supermacs v Mc Donalds where the Irish fast-food chain sought to cancel McDonalds European trade mark registration for BIG MAC on the basis that the mark wasn’t used on all the goods and services for which it was protected. The registration dates back to 1998. As Supermac’s application for revocation was filed in 2007, McDonald’s was then obliged to file evidence showing the use of its BIG MAC mark on the relevant goods and services during the five-year period prior to the revocation proceedings, from April 2012 to April 2017. Quite bizarrely, McDonald’s played its cards close to its chest and the evidence filed on its behalf was not as voluminous or weighty as one would have envisaged, given the notoriety of the BIG MAC.
The evidence filed included affidavits signed by representatives of McDonalds in Germany, France and the UK setting out sales figures for 2011–2016, promotional brochures, menus, samples of packaging and advertising posters showing the BIG MAC sandwich, print outs from several McDonald’s websites in various Member States showing the BIG MAC mark thereon and an extract from Wikipedia outlining the history of the BIG MAC.
The Cancellation Division of the EUIPO found that the evidence submitted was insufficient to establish genuine use of the BIG MAC mark by McDonalds and the mark was revoked in its entirety.
On appeal, McDonalds mended its hand somewhat and filed additional evidence including consumer surveys for Germany, France, and the United Kingdom regarding public awareness of the BIG MAC mark, photographs of the packaging of BIG MAC products, audited reports detailing the number of BIG MAC units sold and affidavits detailing of sales of BIG MAC in France and advertising expenditure relating to BIG MAC in Germany.
The Board of Appeal of the EUIPO found that the evidence showed that the BIG MAC was ‘the flagship burger of the fast-food chain’ and that McDonald’s had tried to keep a significant commercial position in relation to the mark in the relevant market. The appeal was allowed for various goods in Classes 29 and 30, including meat and chicken sandwiches, and for services relating to the operation of restaurants and for drive-through facilities, amongst others.
In terms of a well-known Irish passing off case, I was lucky enough to devil with the junior counsel who appeared for McCambridges in the passing off proceedings that it launched against Joseph Brennan, the owner of Brennan’s Bread in Ireland, in McCambridges v Joseph Brennan.
McCambridges business dates back to 1945 and it was incorporated in the 1970s. It is best known for is whole wheat bread and has 30 per cent of the market for same. In 1998, it began to use the resealable plastic-type pack that we have all come to know. The pack was predominantly transparent save for a dark green panel which featured the ‘John McCambridge’ signature in a stylised script, together with the graphical element of a sheaf of wheat.
Brennans was founded in the 1960s and has been selling white and brown bread in Ireland since that time. It is the market leader. The yellow, red, and white colour scheme used by Brennan’s is extremely well-known and it adorns all its packaging and livery. In 2010/2011, Brennan’s introduced packaging which was hugely similar to that used by McCambridges but, in addition to using a dark green colour, Brennans retained its yellow and red colouring.
McCambridges claimed that Brennans passed off its packaging for its whole wheat bread and sued Brennans. At the hearing in the High Court, McCambridges argued that Brennans had copied various elements of its packaging including:
Both parties accepted that their respective packaging consisted of features that were generic such as the resealable transparent packaging, the size of the packaging, and its shape.
In order to mount a successful passing off challenge, a three-step test must be met by a claimant and it must show (1) goodwill/reputation (2) misrepresentation (3) damage. Brennan’s did not deny that McCambridges has the requisite goodwill needed to meet the first part of the test. The issue to be determined by the court was whether a reasonable member of the public was likely to be confused into buying Brennan’s whole wheat in error, believing it to be McCambridges, because of the close resemblances in the get up.
McCambridges succeeded at trial. The decision is interesting because McCambridges opted for an account of profits rather than damages by way of relief. An account of profits is an equitable remedy which can be refused by the court if the result is unfair. The profits that Brennan’s made from sales of bread in the disputed packaging was over €600,000.00. The court also looked at the proportion thereof that was attributable to the packaging and ordered an account as to what profits of Brennan Bakeries were attributable to same. Although the case settled, the decision is one to note as regards an account of profits. The appropriate remedy is the apportionment of profits that a defendant earned because of the unauthorised use rather than the entirety of the profits.
These are just a sample of two well-known decisions on Irish shores. For more recent Irish decisions on trade mark infringement and passing off, readers can look at the following:
One other case warrants a mention and it may interest readers as it relates to the additional reliefs which are available for an infringement of IP rights beyond the standard injunctive relief and damages. The IP Enforcement Regulations 2006 [SI 360/2006] introduced additional remedies for IP owners including orders for the disclosure of information concerning an infringing product, orders for the recall, removal, or destruction of goods from the channels of commerce and orders for the publication of judgements.
As far as I am aware, no order for the publication of a judgement has been made in Ireland under these Regulations. However, such an order was made in the United Kingdom in 2021 in the case of HRH The Duchess of Sussex v Associated Newspapers Limited.
As readers may be aware, this was a case taken by Meghan Markle (the Duchess of Sussex) against The Mail on Sunday over its publication of extracts from a letter she wrote to her father, Thomas Markle, in advance of the royal wedding in May 2019. The Duchess claimed that the publication was a breach of her copyright and a misuse of her private information and one of the reliefs sought was an order for the publication of the judgement. The UK High Court determined that a publication order was appropriate, and it considered when the statement should be published and the form it should take. The Judge accepted there should be a Notice inside the paper and a Statement on the front page, leading the reader to the Notice.
As with an account of profits, an order for the publication of a judgment is a discretionary remedy but we know from this UK decision that a factor which weighed in favour of granting a publication order was the deterrence aspect. I look forward to the Irish courts considering applications for similar orders in IP cases here in due course.
There have been great advances in trade mark law and practice in the last ten years, so it is difficult to know what the next decade holds. Personally, I’m excited to see how trade marks in the Metaverse are going to be treated and if/how they can be enforced. Questions that one would love the courts to address include whether use of a trade mark in the Metaverse constitutes genuine use of a mark and where that use is deemed to be. Also, if one wants to bring infringement proceedings for unauthorised use of a mark in the Metaverse, what jurisdiction applies and how far would any order stretch?
Regarding the Irish courts, and as stated above, I look forward to seeing whether orders for the publication of judgements might be made in IP matters but also whether we will see any web-blocking orders, based on trade mark rights, being directed against ISPs to block access to infringing websites as was seen in the UK decision in Cartier International v British Sky Broadcasting Limited.
Because of technological advances, there is also the whole area of AI to consider and how that impacts on IP generally but, more importantly, on trade mark rights. Hopefully, there is lots to look forward to and plenty of work to keep IP lawyers busy!
It is not particularly difficult to qualify, and more and more solicitors qualify as trade mark agents in Ireland.
The IPOI hold an annual exam in April and there are further details of the exam on the IPOI’s website. It is a three-hour plus paper, with six questions to be answered from three sections. The three sections relate to trade mark law and cases, trade mark practice and European trade marks. The pass mark is 50 percent and, if you pass, you can be entered on the register of trade mark agents in Ireland and you must renew this annually upon payment of a fee to the IPOI. A registered trade mark agent in Ireland can apply to be entered on the list of professional representatives at the EUIPO also.
The Law Society’s Diploma Centre run a Certificate in Trade Mark Law most years and its program prepares exam candidates. My book is also specifically tailored for those who intend to sit the exam.
There is so much information regarding trade marks online, especially at the EUIPO and WIPO and our domestic legislation (the Trade Marks Act, 1996) has been amended on many occasions that it is difficult to know where to start if you are a practitioner looking to advise a client in this area. I wanted to consolidate as much trade mark information as I could so the reader would have a one-stop shop for the fundamentals of trade mark law and practice. There are specialist firms who can file applications for trade marks for you or your client but there is no reason why you can’t do it yourself. This book brings the reader through the process, starting out with pre-filing considerations and working through the filing of applications and hurdles that may be faced along the way. I wanted readers to know how to apply for a trade mark registration, how to oppose an application that comes to close to their own trade mark, how to enforce a registration or defend a claim for infringement, and how to exploit their trade marks. I hope I have made a good start in departing such information in this book.
It was definitely long over-due and, whilst it was not without its challenges, I am delighted that it has been published and I look forward to working with Bloomsbury in the future.
