Abandoned
A registered right or application that is no longer live or pending. This happens when the applicant fails to renew a registered IP right or to answer official communications within the allowed time. It may be possible to revive or reinstate an application in certain circumstances.
Absolute Grounds for Refusal
The reasons for refusal of a trademark that relate to the nature of the trademark itself, such as being non-distinctive, descriptive, deceptive or contrary to public policy. They are not related to earlier registered and unregistered intellectual property rights. They,
Accepted
This is the status of a trademark application, after it has been examined by the examiner and has been accepted for publication for Opposition purposes. It does not mean that the trademark has been accepted for registration.
Account of Profits
A legal remedy for infringement where a court orders financial records to be examined to ascertain what profits were made by the infringer and orders the profit to be paid to the right holder as an alternative to damages.
Acquiescence
An implied consent to the loss of rights due to inaction. If an owner of an earlier trademark knowingly allows a later conflicting trademark to be used for a continuous period of five years without objection, they may lose the right to challenge it.
Address for Service
An address for service within the territory where you are applying for a trademark is generally required. This can be an established address of the applicant or the address of their official or legal representative. An exception is that some countries designated in a WIPO Madrid System application may not require an address for service within their territory unless they raise some other objection.
Alteration
The owner of a registered trademark can apply to alter a registered trademark in any way that does not substantially change its character. The application may have to be published for Opposition purposes.
Amendment of Application
An applicant may amend an application to register a trademark by limiting / restricting the goods and services specified or to alter basic holder or agent details. More substantial changes are not allowed. See also ‘limitation’ and ‘restriction’.
Anton Piller Order
A type of court order / injunction allowing premises to be searched without prior notice and materials to be inspected and seized. It is used where there is a real risk that the other side may dispose of infringing items and documents. See ‘Search & Seizure Order’.
Appeal
Final decisions of the IPOI can be appealed to the High Court of Ireland. This is generally a full rehearing of all arguments made. Final decisions of the UKIPO can be appealed to the High Court in England & Wales in the same way, or alternatively can be submitted to an independent intellectual property lawyer appointed by the UKIPO – for a less formal, cheaper, quicker option. In the EUIPO an examiner’s decision can be appealed to an internal Boards of Appeal. Its decision can be further appealed to the General Court of the Court of Justice of the European Union – but this is not a full rehearing. The General Court’s decision can itself be appealed on a point of law to the Court of Justice.
Applicant
The person or persons, partnership or incorporated entity (e.g. company) that applies to register a trademark or design right.
Application
The formal request to register a trademark or a design right. The application process includes filing, examination, publication for opposition, and reiteration. You may have to respond to objections and oppositions at various stages in the process.
Article 6ter
This is a clause of the Paris Convention which permits State emblems to be specially protected. Ireland has protected the Harp and the Shamrock under this article. You need approval from the Department of Enterprise to sue a state symbol, such as a shamrock in your trademark.
Assignment
The legal transfer of ownership of an intellectual property right. Registered trademarks can be assigned with or without the goodwill of the business. Unregistered trademarks can only be assigned alongside the goodwill of the business.
Cease and Desist
A letter written to an alleged infringer, demanding that they stop using a trademark or design right in making, distributing and offering for sale goods and services. This is often the first step in enforcement proceedings and can lead to injunctions or litigation if ignored.
Certification Trademark
A type of trademark used to indicate that goods and services meet certain standards or origin. The rules to meet these standards are set out in the application to register the Certification Trademark. Third parties will license use of the trademark for their goods and services that meet the rules, as certified by or on behalf of the owner of the Certification Trademark.
Classification
Various internationally agreed classifications exist to categorise and search trademarks and design rights. The Nice and Locarno classifications group related categories of goods and services under which trademarks and design rights can be classified. The Vienna Classification is used to classify figurative elements of trademarks (logos and devices).
Clearance Search
A search of trademark or design right registers, conducted to highlight already registered trademarks or design rights that may be the identical or similar to the trademark or design being searched against. Classifications are used to help the search. See also Search and Preliminary Search.
Collective Trademark
A trademark owned by an association and used by its members to indicate membership of the association.
Common Law Rights
Trademark rights acquired through use in commerce rather than by registration. These rely on proof of goodwill and reputation, confusion and damage. The legal action of ‘passing off’ is used to enforce these rights.
Confidential Information
Information that is private in nature and shared / communicated in circumstances importing an obligation of confidence (secrecy). Often protected by contractual obligations, in the absence of a contract, there may be an equitable right preventing a person who receives confidential information from using it to the detriment of the person who gave it to them.
Consent to Registration
The owner of an earlier registered trademark or design right can consent to a registration, even though that might conflict with their earlier rights.
Copyright
Copyright is an intellectual property right given to the person(s) who create literary and artistic works. These include writing, music, sound, films, works of art and more commercially, designs, text, databases, software, maps, images and drawings. The creator may assign copyright to an employer. Typically, copyright lasts for the lifetime of the creator plus 70 years.
Counter Statement
A formal response filed by an Applicant when a Notice of Opposition is filed against the application to register a trademark. It sets out the applicant’s grounds for why the application should be registered.
Counterfeiting
The intentional imitation of products and their branding without the brand owner’s consent, in order to sell the counterfeit articles as the real thing or as cheap imitations of the real thing taking advantage of the reputation and goodwill of the imitated product.
Customs Action
Intellectual property right owners or licensees can apply to the Customs Authorities to take steps to prevent the import (and export – less common) of goods suspected of infringing their intellectual property rights.
Damages
This is a remedy to infringement proceedings. An assessment of the financial damage and costs caused by infringement is made by a judge and ordered to be paid as compensation. In most cases damages are assessed in order to put the claimant back into the position he would have been in had the acts complained of not occurred. But greater damages can be sought to mark particularly unreasonable behaviours (‘exemplary damages’).
Deferment of Publication
Publication of a registered design can be deferred for a period of up to 30 months from the application date or the date priority is claimed from.
Delivery Up
This is a remedy to infringement proceedings where the infringer is ordered to give infringing goods, material or articles used in the infringement to the IP holder so that they can be destroyed.
Descriptive
A word that merely describes a feature, quality, use case, ingredient or other characteristic of the specified goods and services. Descriptive terms need to be free for others to use and so cannot be registered or relied on as a trademark unless they have acquired distinctiveness through use, or unless there is another distinctive and reasonably dominant element of the trademark. You can promote a descriptive business or domain name but you are boosting the market generally rather than your brand.
Design Rights
These are industrial designs that give the owner an exclusive right to use the design or authorise others to use it. The appearance of the item must be caused by purely ornamental or aesthetic features of the object’s design, such as the lines, contours, colour, shape, surface texture, patterns, ornamentation on the object. But these cannot be part of how the object functions. Design Rights can be registered or unregistered. Unregistered design rights last for three years and prevent direct copying. Irish, EUIPO and UK design rights last for five years but can be renewed for up to four further periods of five years. To be registerable, a design must be new and have individual character.
Designated Office
The national trademark office where a WIPO Madrid System trademark application is filed.
Designation
The countries listed in an application for an international trademark governed by the WIPO Madrid System.
Destruction
A court ordered remedy to infringement proceedings ordering infringing items and materials to be destroyed. This might happen when an infringing mark cannot be removed or it would be impractical.
Device
A graphic symbol which is used as a trademark or as part of a trademark in combination with other elements.
Disclaimer
A statement filed by or on behalf of the owner of a trademark that the owner has no exclusive rights to a specific element of a trademark for all or some of the specified goods and services.
Distinctive
To be registered a trademark must be capable of distinguishing the goods and services of one business from those of others. It cannot be registered if it lacks distinctive character. This can happen when the words and graphic elements in a trademark are too closely associated with descriptions of the goods or service in the mind of the public.
Division
An applicant can divide an application into separate parts for different goods or services. This may happen before the trademark office indicates its acceptance of a trademark or after an opposition has been filed. The divided applications shall retain the same date of filing and/or priority as the original application.
Due Diligence
The process in commercial transactions where the existence, ownership and validity of IP Assets are assessed for commercial risk. This often involves reviewing registers, oppositions, cancellations, assignments / transfers, and licenses
EUIPO
The European Union Intellectual Property Office (EUIPO). A register for European Union Trademarks & Design Rights.
Enforcement Proceedings
Legal or administrative actions taken to enforce a registered right either before a local intellectual property office by way of opposition or cancellation, or through cease and desist letters and litigation.
Erasure
A court ordered remedy to infringement proceedings requiring the erasure, removal or obliteration of an infringing mark from goods. If this is not possible the goods may be ordered to be destroyed.
European Union Trademark (EUTM)
A single registered trademark right that gives uniform trademark protection in all 27 member states of the EU. It is granted by the European Union Intellectual Property Office (EUIPO). The trademark lasts for ten years and can be renewed indefinitely.
Evidence in Reply
An opponent may, following receipt of the evidence filed in support of an application file submissions, observations or a statutory declaration (as the case may be) with exhibits replying to assertions made on behalf of the applicant.
Evidence in Support of Application
If an opponent files evidence in support of the opposition, an applicant must file submissions, observations or a statutory declaration (as the case may be) with evidence that they wish to rely on to support their application.
Evidence in Support of Opposition
An opponent who contests an application to register a trademark must file submissions, observations or a statutory declaration (as the case may be) to support the opposition filed by them. These can exhibit particular items that the opponent wants to rely on.
Ex parte
A hearing or application made without notice to the other side. In the court system it is relevant when applying for injunctions or similar court orders. Ex parte applications are made due to urgency or where giving notice could undermine the intended action.
Examination
The process by an official (the Examiner) of the trademark registry to assess compliance with legal requirements and the acceptability of a trademark, including for distinctiveness and conflicts with earlier registered trademarks.
Examiner
A trademark office official who examines trademark applications to ensure that they comply with various legal provisions.
Geographical Indication
A legally granted sign used on goods that originate from a specific geographical location when goods from that location possess qualities or a reputation due to that location. For example, Parma Ham or Champagne.
Goodwill
This is the value to a business of having its good name and reputation, and the connections that goodwill and reputation makes in the minds of its customers and others it does business with. It is the intangible quality that attracts customers to buy from the business. Goodwill can have a significant financial value.
Groundless Threats
Where a person threatens proceedings for infringement of a registered trademark, a recipient can ask the courts for a declaration that the threats are unjustifiable, for an injunction preventing the threats continuing and for damages. The person on whose behalf the threats were made must show that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trademark.
IP, IP Rights and IPR
These are acronyms for Intellectual Property and Intellectual Property Rights.
IPOI
The Intellectual Property Office of Ireland maintains the registers for patents, trademarks, and design rights in Ireland. It is also a designated office for filing applications with the World Intellectual Property Organization (WIPO).
Infringement
Infringement refers to the unauthorised use of another party’s protected intellectual property rights. A person infringes a registered trademark if, in the course of trade, they: [1] use a sign identical to the trademark for identical goods or services; or [2] use a sign that is identical or similar to the trademark for similar goods or services, where there is a likelihood of confusion on the part of the public (including a likelihood of association); or [3] use a sign that is identical or similar to the trademark for dissimilar goods or services, where the trademark has a reputation in the country or region and the use takes unfair advantage of, or is detrimental to, its distinctive character or reputation.
Infringing Use
This includes applying a sign to goods or packaging, offering goods for sale, offering or supplying services under the sign, importing or exporting goods, and using the sign in advertising and on business papers and publications.
Injunction
A court order requiring a party to do, or refrain from doing, specific acts. Breaching an injunction may lead to committal for contempt of court.
Intangible Asset
An asset that has a value but is not a physical thing, such as an intellectual property right, brand, or business goodwill.
Intellectual Property
An umbrella term for rights that protect creative works, inventions, designs, software, logos, words, and artistic expressions. These include patents, trademarks, registered designs, and copyright. Copyright arises automatically, while other rights must be registered to obtain protection.
Invalidity
A legal challenge to a registered trademark on grounds that could have been raised during the application process. A successful invalidity action can remove the mark from the register from the date it was registered so it is as if it was never registered.
Lapse
Where a registered intellectual property right is no longer protected due to non-renewal. It may be possible to restore the registration within a limited period of time.
Licence
A contract in which the owner (licensor) of an intellectual property right grants permission to another party (licensee) to use the right under agreed conditions and for a defined period.
Likelihood of Association
A factor in trademark law where the public may believe that the goods or services of the alleged infringer are connected to those of the trademark owner. It is one element of the broader test for likelihood of confusion.
Likelihood of Confusion
A key test in trademark infringement and opposition cases. It considers whether the public may be confused as to the origin of goods or services. This includes confusion arising from a likelihood of association between the respective businesses. Relevant factors include the similarity of the marks, the similarity of the goods or services, and the perception of the average relevant consumer.
Limitation of Goods and Services
An applicant may narrow the scope of goods or services in a trademark application to avoid or resolve an opposition. See also ‘Restriction’.
Locarno Classification
The official international system for classifying goods in registered design applications. It aids in searching and registering designs.
Madrid Agreement / Madrid Protocol / Madrid System
An international system for registering trademarks, administered by the WIPO. It allows a single application to cover multiple countries that are signatories to the Madrid Agreement or Protocol. Ireland is a member of the Madrid Protocol. These applications must be grounded on a standalone national or EUIPO trademark.
Nice Classification
An international system categorising goods and services for trademark registration. There are 45 classes: 34 for goods and 11 for services.
Non-Use
In Ireland, the UK and the EUIPO a registered trademark may be revoked if it has not been put to genuine use within five years of registration and there are no valid reasons for the non-use. This also applies where use has ceased for five consecutive years. A third party must apply for revocation. Non-use for five years is also a defence to a trademark opposition or trademark infringement action.
Notice of Opposition
A formal objection filed with the trademark office by a party who believes a pending trademark application would harm their rights. In Ireland and the EUIPO, the opposition must be filed within three months of publication. In the UK, the period is two months, extendable by one further month in certain cases. The notice must include grounds for the opposition.
Official Journal / Trade Marks Journal / EUIPO Bulletin
These are publications issued by the IPOI, UKIPO or EUIPO, respectively, listing trademark and design applications, decisions, and other official notices.
Opponent
A party who files an opposition to a trademark application.
Opposition
The process by which a third party asks the trademark office to refuse a trademark application. It includes filing a Notice of Opposition and any subsequent proceedings.
Paris Convention for the Protection of Industrial Property
An international treaty that sets common standards for the protection of intellectual property rights. A key feature is the right of priority, allowing applicants to rely on the date of an earlier filing in another member country.
Passing Off
A common law tort (court action) protecting business goodwill. It arises when one party misrepresents their goods or services as those of another, leading to consumer confusion. It requires proof of goodwill, misrepresentation, and resulting damage.
Penal Endorsement
A warning added to a court order where non-compliance is suspected. It states that further breach may result in imprisonment for contempt of court.
Preliminary Search
An initial check of trademark or design registers to identify existing registered rights that may conflict with a proposed application. It can indicate the risk of opposition. Searches are guided by goods and services as well as the trademarks themselves. See also Clearance Search and Search.
Priority
Under the Paris Convention, an applicant who files a trademark or design application in one member country can claim that date as the filing date in other member countries, if filed within six months.
Priority Date
The date of the earlier valid filing in a country that is a signatory to the Paris Convention, dated in the previous six (6) months, and relied on to claim a right of priroity.
Publication
After examination and acceptance, a trademark application is published by the trademarks office for opposition purposes. Publication allows third parties to oppose the application within a specified time frame, often three (3) months.
Recordal
A record of transactions and dealings involving registered trademarks, maintained by the intellectual property office. For example, assignments or licenses of IP and changes in owner details should be recorded in the official register.
Rectification
An application to correct an entry in the trademark or design register. Rectification is permitted provided the correction does not affect the substantive validity of the original registration
Refusal
The formal rejection by the intellectual property office of an application to register a trademark or design right.
Register
A public database (official register) maintained by the governmental intellectual property office that contains details of registered trademarks or design rights. It may also refer to the act of registration itself.
Registration
The process of securing legal protection for a trademark or design right. The registration date is the date of publication of the trademark as registered. This date starts the five-year period for potential revocation on grounds of non-use. From this date, infringement proceedings can also be brought. However, rights accrue from the application date for Irish, UK and EUIPO trademarks.
Regulation (EU) 2017/1001 on the European Union Trade Mark (EUTMR)
The primary legislation governing European Union trademark law. Also known as the European Union Trade Mark Regulation or EUTMR.
Relative Grounds for Refusal
Grounds for refusing a trademark application due to earlier conflicting rights, mainly registered trademarks, but can also include unregistered trademarks or other legal rights in a name or likeness. The assessment usually considers the similarity of the marks visually, phonetically and conceptually as well as the similarity of the goods or services in a global assessment.
Remedies
Court orders available to a successful claimant, such as damages, account of profits, injunctions, and orders for the delivery up or destruction of infringing goods.
Removal
The deletion of a registered trademark from the register, typically for failure to renew or due to successful revocation proceedings for non-use.
Renewal
The process of extending a trademark or design right registration. Trademarks can be renewed indefinitely in ten-year periods. Registered designs can be renewed for up to four additional five-year periods.
Representation
An image or visual depiction of a trademark or design.
Restoration
The process by which a trademark that has lapsed may be reinstated on the register within a specified grace period.
Restriction of Goods and Services
An amendment by the applicant to narrow the goods and/or services listed in a trademark application, often made to resolve or avoid opposition. See also ‘Limitation’.
Revival
The process of reinstating an abandoned application or re-registering a lapsed registration.
Revocation
The procedure for cancelling a trademark or design registration due to non-use, misleading use, or genericide (when the trademark has become used to identify the goods or services or a feature of them). If successful, the registration is deemed never to have existed, subject to possible defences.
Royalty
A payment made to the owner of an intellectual property right for permission to use that right.
Search
A search of trademark or design registers to identify similar or identical prior rights that may present a conflict. Searches often use classification systems to target relevant goods or services. See also ‘Clearance Search’ and ‘Preliminary Search’.
Search & Seizure Order
Commonly called an Anton Piller Order, this is a form of injunction (available in Ireland and the UK) allowing the search of premises and seizure of materials without notice. It is used where there is a serious risk that infringing goods or evidence may otherwise be destroyed.
Series of Trademarks
A group of trademarks that share the same essential characteristics and differ only in non-distinctive elements. Available in Ireland and the UK, but not the EUIPO, a trademark series is limited to six marks.
Service Mark
A now little used term for a trademark used specifically for services rather than goods. The term can be used interchangeably with 'trademark'.
Similarity
The degree to which two trademarks, designs, or other protected rights resemble one another. This includes visual, phonetic, and conceptual similarity, and is central to assessing the likelihood of confusion.
Similarity of Goods and Services
The extent to which two sets of goods or services are related, which affects whether consumers might believe they come from the same source. Goods in competition or that can be used in substitution or that are indispensable or important in the use of the other goods will be considered identical or closely similar.
Specification of Goods and Services
The list of goods and services covered by a trademark application or registration. It defines the scope of protection and is grouped under international classifications (Nice Agreement / Nice Classification). A clear specification is now required in order to help assess trademark conflicts, similarity, and non-use grounds for revocation.
Statement of Use / Intent to Use
A declaration that a trademark is either already in use in the territory or that the applicant has a genuine intention to use it within a certain number of years of registration, often five (5) years. This is assumed for Irish, EUIPO and UK applications.
Substitute Goods
Goods that can be used in place of one another, like butter and margarine. Their interchangeability may increase the likelihood of confusion in trademark comparisons.
Surrender
The voluntary cancellation of a registered trademark by the owner, in whole or in part.
Trade Marks Act 1994
The UK’s primary legislation (as amended) governing trademark law.
Trade Marks Act 1996
The primary legislation (as amended) governing trademark law in the Republic of Ireland.
Trademark
A distinctive sign such as a word, logo or slogan, or more unusually a colour, sound, or shape - that identifies the goods or services of a business. A registered trademark proves legal ownership and offers broader protection than an unregistered mark. It generally lasts for ten years and may be renewed indefinitely.
Trademark Agent / Attorney
A person registered to represent parties in trademark and design matters. In Ireland, agents are registered with the Intellectual Property Office of Ireland. For EU trademarks, they must also be registered with the EUIPO. Someone registered in both is often referred to as an Irish and European Trademark and Design Attorney.
Trademark Watches
A monitoring service that alerts rights holders to new trademark applications that may conflict with their existing rights. See also ‘Watches’.
Trademark as a Whole
The entire trademark, including all its elements (words, logos, designs), is assessed together. This holistic evaluation helps determine distinctiveness, infringement risk, and the likelihood of consumer confusion with other marks.
Watches
Monitoring new trademark applications to identify those that may conflict with earlier rights. See also ‘Trademark Watches’.
Withdrawn
The status of a trademark or design application that has been formally withdrawn by the applicant, as distinct from being abandoned.
World Intellectual Property Organization (WIPO)
An international organisation promoting the global protection of intellectual property through cooperation between countries. WIPO administers the Madrid System for international trademark registration.