JAMES F.D. McElwee

McElwee Solicitors

O’Connell Square, Mountmellick, Co. Laois

E: jamesmcelwee@eircom.net

T: 057 8624255 F: 057 8644523 M: 087 1693083

PRACTICE AREAS

Civil litigation and commercial litigation

Personal Injuries

Debt Collection

Commercial and Residential Conveyancing

Landlord and Tenant

Company and commercial law including company formation and secretarial work

Intellectual property advices and trademark applications

Wills and probate work

Family law

Employment law

Liquor licensing law

Data Protection

Information Technology advices

Professional and medical negligence

Road Traffic Offences

Private client

Agricultural Law

Intellectual Property

Trademarks

Designs

Copyright

Patents

Passing Off

Domain Name

Protection of Databases and Computer Programs

TRADEMARKS: Guess the Logo?

TRADEMARKS

Protect names used in the course of trade and

in the provision of services.

Trade Marks Act 1996: “any sign capable of being represented

graphically which is capable of

distinguishing the goods or services of one undertaking from those of other undertakings”

Includes: Logos

Pictures

Shapes

Smells (if it can be described in words e.g. The smell of grass)

Slogans (if distinctive character)

Trademarks - Ireland

Search

Nice Classification

10 years protection (renewable)

Exclusive right of owner to use mark

Infringement vs. Passing Off

Series of Trademarks

Collective & Certification Marks

Refusal Distinctive Character – All

Black’s Silver Fern

Generic terms – ‘Bubble Wrap’

Deceptive terms – ‘Pure Whool’

Descriptive terms - Sweet

Similar /Identical

Kind, quality, intended purpose, geographical area

Customary language

Registration & Refusal Ireland

Trademarks – CTM and Madrid

European Union -OHIM

Refusal in 1 country leads to outright refusal of CTM

Option to convert application to international mark

Madrid Protocol - WIPO

Based on national registration first

Can select countries (circa 70 incl. US, Australia etc.)

Community TM (CTM) International TM

Copyright

Property Right

Subsists in:

1. Original literary, dramatic, musical or artistic works;

2. Sound recordings, broadcasts or cable programmes;

3. Films

4. The typographical arrangement of published editions

5. Original databases

Duration

1. 70 years after the death of the author

2. Sound recordings and broadcasts – 50 years after made or made available to the public

3. Films: 70 years after death of director, screenwriter, composer etc.

Protection of expression of ideas not ideas themselves

Industrial Designs - Definitions

“Design” means the appearance of the whole or a part of a product resulting from the features of, in particular`: the lines,

contours,

colour,

shape,

texture or materials of the product itself or

its ornamentation.

Product Industrial or handicraft

item;

Including parts intended to be assembled into a complex product

Packaging, get up, graphics, symbols and typographical type faces

But not including computer programs

New

Individual Character

Worldwide Novelty

Industrial Designs

Element of Copyright

Registration - Ireland and EU – 25 years

Unregistered protection for 3 years in EU – must be on market or known to public

Protection

Patents

Invention

Susceptible of industrial application

New

An Inventive Step

E.g machines and mechanical

devices

Electronic equipment

Computer hardware

Pharmaceuticals

Manufacturing processes

Biotech Products

Not Aesthetic creations

Discoveries, scientific theory or mathematical equation

Program for a computer

Definition

Patents - Protection

Should be filed before publication

Advantage – Statutory Protection, no need for secrecy

Disadvantage – Publication of invention

20 years protection – 10 years short term patent

Patent pending

Supplementary Protection Certs (SPCs)– 5 years

EU - European Protection Convention (EPC)

World – Patent Co-Operation Treaty

Patent Agent

Intellectual Property Transactions

Licensing: owner retains ownership and agrees to the use of the IP by other companies in exchange of royalties > licensing agreement (business expansion/diversification)

Franchising: licensing of a IP central to franchising agreement.The franchiser allows franchisee to use his way of doing business (TM, know-how, customer service, s/w, shop decoration, etc)

Selling/assigning IP to another company (merger & acquisitions/raising of cash)

THANK YOU!

McElwee Solicitors

McElwee Solicitors

O’Connell Square

Mountmellick

Co. Laois

T: 057 8624255

M: 087 1693083

F: 057 8644523

E: jamesmcelwee@eircom.net