Where you have used a brand but have failed to register this as a trademark you have an unregistered trademark.

If an unregistered Trademark is used by another competitor, the only form of redress against the competitor is by way  of the common law action of

PASSING OFF

There are certain characteristics that must be present in order to bring an action for passing off.

A misrepresentation made by a trader in the course of trade to prospective customers of his or ultimate consumers goods or services supplied by him which is calculated to injure the business or goodwill of another trader (in the sense that it is a foreseeable consequence) and which caused actual damage to a business or goodwill of the trader by whom the action is brought or will probably do so.

The underlined terms above are important elements which must be established in order to have a case in passing off.

1. Allows Territorial protection and Exclusive rights

Only you are permitted to use the trademark within the territory (i.e. Ireland or the EU). You therefore acquire a legal monopoly in that brand.

2. Allows Licensing of the Trademark (by Franchising or otherwise) to Third Parties

The registered trademark itself can be sold or assigned to other parties. This can be particularly valuable when selling on a business, and may have attractions from a capital asset or taxation point of view.

3. Increases the Value of Goodwill and TM becomes an Asset

When buying or selling a business, significant value can be attached to goodwill (i.e. your repeat business from happy customers who like your product or service). A registered brand helps increase the valuation of goodwill.

Registration is also a concrete way you can demonstrate to a potential investor or bank that you believe there is value in your trademark.

4. Provides Evidence of Title

It is an easy way to prove your ownership of the trademark - similar to registering your ownership of land in the Land Registry. Registered trademarks can be bought, sold, licensed, assigned, and conveyed. They can even be mortgaged.

5. Prevents copying by competitors

A registered trademark is a property right and any infringement is taken very seriously by the courts. The onus of proof will lie on any imitator of a registered trademark.

What protection do I obtain through a CTM?

A CTM confers on its proprietor an exclusive right. The proprietor is entitled to prevent all third parties, who do not have his consent, from using the same or confusingly similar signs for identical or related goods and/or services as those protected by the CTM.

Can a CTM be valid just in some Member States?

No, a CTM has a unitary character. A CTM application and a CTM are valid in the European Union as a whole. The application and the ensuing registration extend automatically to all 27 Member States of the European Union indivisibly. It is not possible to limit the geographic scope of protection to certain Member States.

Can a trademark be registered individually in each Member State if protection throughout the whole EU is not sought?

Yes, a national registration can be obtained. However, if registration has previously been refused by the OHIM, it is likely that registration will not succeed in those Member States where the Community trademark application has not been considered to be eligible for registration.

Does the CTM prevail over national trade marks?

The CTM system leaves the national trademark systems of Member States unaffected. Business enterprises are free to file national trademark applications, a CTM application, or both. The large number of national trademarks already existing and registered in the Member States remain valid. It is entirely up to the strategy of the applicants and proprietors of trademarks whether they want to rely exclusively, or in addition to national trademark rights, on the CTM protection.

Which kind of signs may be registered as CTM?

A CTM may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Therefore, signs which may be registered as a trademark include the following:

• word marks including letters, numbers or combination of letters, numbers and words;
• figurative marks, whether or not including words;
• figurative marks in colour;
• colours or combinations of colours;
• three-dimensional marks;
• sound marks;

The application must contain a graphic representation of the mark.

Which signs may not be registered as CTM?

Although fulfilling the definition of a trademark, a sign may not be registered as a CTM if an absolute ground for refusalapplies, namely if the sign:

• is devoid of any distinctive character;
• exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
• has become customary in the current language or in the bona fide and established practices of the trade;
• is contrary to public policy or to accepted principles of morality;
• is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.

Other absolute grounds for refusal may relate to the shape of the goods, the origin of alcoholic beverages, agricultural products and foodstuffs, and certain official emblems.
For cases where the CTM lacks distinctive character, serves to designate the kind, quality, quantity etc., of the goods or services, or has become customary in the current language or in the practices of trade, the objection may be overcome if it is shown that the trademark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
If the trademark is refused for registration on these grounds, it will not be published.

What is Seniority?

If an owner of a similar CTM or national trademark which is earlier than your CTM application is aware of your later use of the CTM, and he fails to take an action against you within 5 years, he is deemed to have lost his opportunity. However, this may not be the case if your later CTM was applied for in bad faith.
Thus, provided that your CTM is being widely used, it will be difficult for a third party to take action against it after five years. Seniority will have less importance for a well used mark, once a CTM has been registered at least five years.

How do I oppose a CTM?

Some of the main aspects of involved in opposition proceedings before the Community Trade Mark (CTM) Office are as follows;

• In the case of directly filed CTM applications, opposition must be filed within three months of advertisement.
• There is an initial "cooling off" period of two months after the opposition is filed, which is extensible by 22 months.
• The opponent must file evidence in support of the opposition within two months, after the cooling off period expires. The applicant will be given a further period of two months to respond.
• A final decision is usually made by a three member opposition division and costs may be awarded to the successful party.
• There is also the possibility of an appeal.

What is the Madrid Protocol?

The Madrid Protocol for the international registration of marks is a treaty administered by the International Bureau of the World Intellectual Property Organization ("WIPO") in Geneva . It has been in operation since April 1996 and has been ratified by many countries around the world, including most European countries, the USA , Japan , Australia , China , Russia , and, in October 2004, by the European Community as such.
The Madrid Protocol offers trademark owners the possibility to have their trademarks protected in several countries by simply filing one application directly with their own national or regional trademark office.

What does the link between the Madrid Protocol and the CTM system mean?

Since the European Community's accession to the Madrid Protocol, the Community Trademark ("CTM") system and the so-called Madrid system are linked - it is now possible to either file an international application based on a CTM or to designate the EC in the international application.

* If colour is claimed, 12 colour representations should be furnished (not necessary for word mark in block capitals)

* Specification of goods/services ( international classification)

* Priority document (if priority claimed)

The act provides four categories of Trademarks which would fail the Absolute Test:

1. Trademarks that are not distinctive;

2. Trademarks that indicate the kind, quality, quantity, intended purpose, value, geographical origin, the time manufactured or other characteristics of the goods or services;

3. Trademarks that have become customary; and,

4. Trademarks that are contrary to public policy or morality.

If you are in any doubt about a potential Trademark, consult with a Trademark Agent who will be able to talk you through the application of these rules in practice.

1. Unitary nature and protection of exclusive rights

The Community trademark is unitary in nature, i.e. it is valid everywhere in the European Community, and gives proprietors exclusive rights enabling them to prohibit any third parties from using the sign in their commercial or industrial activities.

2. Option of claiming seniority

The Community trademark has been designed to complement the national systems of protection. If applicants or proprietors of a Community trademark already hold a prior identical national trademark for identical goods and services they may claim the seniorityof that mark. This allows them to preserve their prior rights even if they surrender their national trademark or do not renew it.

A seniority claim allows the owner of a CTM or a CTM application to claim the prior rights of his existing national registrations in the European Union if the national registrations have lapsed. Please note however:

-The CTM and the national registration must be in the same ownership; ownership by a related company is not sufficient;

-Seniority can be claimed only for goods/services in the national registration that are also in the CTM;

- The mark in the CTM and the national registration must be identical;

- If the national registration ceases before the CTM is granted that seniority is lost.

3. Right of priority

The Community trademark complements the national systems of trade mark protection. The filing date accorded to a Community trademark is recognised as constituting a date of priority for both national and international trademarks.
This applies equally where applicants decide to convert their application or registered Community trademark into national applications. There is therefore no risk involved in deciding immediately to opt for a Community trade mark.

4. Obligation of use which is easy to meet

A Community trademark may be maintained in all the countries of the European Union by using it effectively and genuinely in a single Member State. Any company, even if it wishes to use its trademark in one or in a few Member States only, may therefore validly obtain a Community trademark without having to fear revocation proceedings on the grounds of lack of use.

5. Broadened legal protection which is accessible to all

Infringement proceedings may be brought before the Community trademark courts, which are national courts designated by the Member States to have jurisdiction in respect of Community trademarks. Decisions have effect throughout the EU. This avoids the need to prosecute infringers in each Member State. Only the Community trademark has such protection in the whole of the European Union.

6. An extended range of options for exercising rights under the trademark

The option to transfer and assign Community trademarks is essential for the management of companies.
A Community trademark may be transferred, separately from any transfer of the undertaking which is its proprietor, in respect of some or all of the goods or services for which it is registered.
A Community trademark may also be licensed for the whole or part of the European Union. A licence may be exclusive or non-exclusive.

7. Community trademarks as prior rights in all the countries of the European Union

Community trademarks constitute prior rights in relation to all subsequent trademarks and other conflicting rights in all Member States. This allows proprietors of Community trademarks not only to protect their exclusive rights at Community level but also to prevail over later national rights.

8. The prospect of enlargement

The enlargement of the European Union to include new Member States will result in a European Union of 27 Member States. It is provided for the automatic extension of all existing Community trademark applications and registrations, while limiting the possibility to attack them on grounds that become applicable merely as a result of the accession.
The Community trademark therefore is not only a gateway to the existing single market but also to a market in the process of expansion.