A trademark can be any sign that allows to distinguish the goods of one enterprise from the goods of another enterprise. It may be, for example: a word, a drawing, a logo, a letter, a number, a color, a 3d form, including a shape of goods or a packaging, as well as a sound.
From a practical point of view, the trademark protection right is not an absolute right to use this mark. It is used for an effective objection when a third party uses, in a given territory, an identical (for identical goods / services) or similar (for identical or similar goods / services) trademark to such an extent as to mislead the average public as to the origin of goods / services marked with a given mark.
An infringement of the trademark protection right occurs if the consumer could believe that the goods / services bearing a certain sign come from the same entrepreneur or from entrepreneurs associated with him as the goods / services bearing the earlier trademark.
A trademark is protected in relation to the goods or services indicated in the application. It is therefore of the utmost importance to first of all draw up a correct list of goods and services, as no further goods / services can be added once the application was filed.
The costs of search, filing and registering a mark depend on the number of classes into which the goods and services can be classified (according to the so-called Nice Classification).
The trademark protection right has a property value and is a part of the company’s assets.
The trademark protection right has a territorial scope.
The trademark protection right can, theoretically, last forever. Every 10 years, you must pay fees for subsequent periods and submit an application for extension of protection.
Novelty of the mark applied for is not required.
If you have a trademark protection right in a given territory, the symbol ® may be used next to the trademark.
When we protect a figurative mark (logo), not only the word or expression contained in it is protected (provided that it is distinctive, i.e. not descriptive for goods / services), but also the graphics are protected. So if someone copies or imitates our graphics (although they use a different word in it, but the consumer looking at the graphics may be misled) – this infringes our trademark.
In this respect, protection of a figurative mark is beneficial.
However, if the Customer ceases to use the figurative trademark (logo) in the graphics in which it will be registered (because, for example, there has been a rebranding), then after 5 years from the discontinuation of use, the right to such a trademark will be susceptible to expiration (in whole or in part – in relation to goods/services for which it was not used), at the request of a third party, and will cease to be useful for pursuing claims.
The 5-year period applies to EU countries – in other countries it may be shorter.
It is worth protecting a word mark in this respect. Its protection is independent of the graphics in which it is used.
In order to best protect the brand, it is worth deciding to apply for protection of two marks: a word mark and a figurative mark (a logo).
When applying for protection of two marks, however, there will be double costs.
Before submitting the application, we recommend that you conduct a trademark search – in order to answer the question whether its application and use in a given territory will not conflict with earlier trademarks filed or protected for identical or similar goods. The result of the search is a report in which we describe the possible risks related to the existence of earlier trademarks and present a recommendation for the use and protection of the Client’s trademark in a given territory.
The use of a trademark that infringes the protection right for an earlier trademark in a given territory is associated with a much greater risk than just filing an application for a trademark. Then the owner of the earlier mark may oppose the use of the later mark. Opposition consists primarily in entering the course of civil proceedings and pursuing claims (e.g. abandonment of use, compensation, issuance of unjustified benefits, etc.) – before the court.
Therefore, before entering the market of a given country (including Poland) with a new brand, we recommend that you first conduct a search whether this brand, slogan or logo will not infringe the rights of the earlier trademarks protected in relation to the territory of that country.
The search is not compulsory but recommended.
The Office does not oppose the earlier marks to those applied for. This means that if someone files to the office a mark identical or confusingly similar to your (previously filed) mark, the office will not refuse to grant protection for such a mark – due to this conflict. It may only refuse if you file a justified opposition, within 3 months from the date of publication of the information on the trademark application.
It is on the part of the holders of the earlier marks (i.e. yours) to observe new applications and to file any oppositions. If you do not file an opposition within the prescribed period, you will be able to file an application for a declaration of invalidity later on, but this procedure is more expensive than an opposition procedure, and such an application for a declaration of invalidity may be subject to a statute of limitations.
In the absence of monitoring, there is a risk that a third party will file an application and obtain protection for a trademark that is highly similar or even identical to your trademark. Monitoring serves as an alarm system and aims to “catch” such hazardous reports, and as a result gives you an opportunity to make a decision to file an opposition. Indirectly, it is also information that another entity may use or may plan to use a trademark identical or confusingly similar to your trademark.
Our law firm provides paid trademark monitoring services – please let us know if you are interested in receiving an offer for monitoring.
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