Trademark registration
Trademark registration is a major moment for any brand. Correct trademark registration increases the company’s goodwill and provides legal tools to fight against potential violators, and thus for trademark protection and combating infringements thereof.
TRADEMARK DEFINITION
Trademark definition has been provided in Article 120(1) of the Industrial Property Law. According to this definition, “trademark can consist in any recognizable sign, design, or expression which identifies products or services of a particular source from those of others, and which can be presented in the trademark register in a manner allowing clear and exact identification of the object of protection granted.”
This definition of the trademark results in categorising trademarks into word, figurative, or word and figurative trademarks, three-dimensional, position, sound, motion, or hologram mark. Furthermore, colour can also be a trademark.
Correct trademark registration is important because a trademark can be declared invalid if not used. Therefore, if a trademark is registered but in fact not used by a brand, there is a risk of declaring it invalid.
Jak sprawdzić czy nazwa jest zastrzeżona?
One can verify whether a name has been registered at the EUIPO website, which features search engines for checking whether a designation has been registered as trademark: eSearchPlus, TMView. With reference to Polish trademarks, the best source for checking trademark registration is the search engine available at the website of the Patent Office of the Republic of Poland: eWyszukiwarka.
When checking whether a name has been registered, pay special attention to the trademark registration classes, territory to which the registration applies, as well as the type of trademark.
TRADEMARK REGISTRATION – WHO SHOULD BE THE HOLDER?
Trademarks can be registered to holders being natural persons not running business, natural persons running business, partnerships, or capital companies. Several entrepreneurs can also register one collective mark.
It is worth considering that if trademarks are registered with natural person being the holder, this provides for greater flexibility in disposing of the rights related thereto.
If the applicant would like to keep confidentiality of the holder during the trademark registration process, EUIPO allows for temporary concealing the data of the entity holding rights with respect to the registered trademark.
Data of the rights holder provided during the trademark registration process must be updated at the office. Failure to update may cause problems e.g. when renewing the trademark.
HOW LONG DOES IT TAKE TO REGISTER A TRADEMARK?
Both in Poland and in the EU, unless there is an opposition proceeding, trademark registration usually lasts no longer than six months. Nevertheless, depending on the circumstances, this may take longer. The trademark registration process at EUIPO can take four months if it is proceeded in the FastTrack mode. Unfortunately, at the Patent Office of the Republic of Poland, trademark registration process rarely takes less than six months.
WHAT DOES THE TRADEMARK REGISTRATION PROCESS LOOK LIKE?
The trademark registration process is actually identical at the Patent Office of the Republic of Poland and EUIPO, the only difference beting that treademark registration via EUIPO can be performed using the FastTrack procedure, and the payments are made in a slightly different way. Trademark registration according to the FastTrack procedure is possible if the fee is paid immediately (at best on the next day after application or on the same day) and the list of products and services fully conforms to the classification. Conformity of the list can be checked at the creator wizard available at the EUIPO website.
The trademark registration process begins with filing the application containing information, among others, about the entity acting as the trademark holder, trademark type, and classes to which the protective rights should apply.
Trademark registration at EUIPO is best done via the Internet. For this purpose, create an account at the EUIPO website. Among the available online services, you can create a list of products or services for a given application, which can later be exported to the trademark application.
Both at the Patent Office of the Republic of Poland and EUIPO, in the case of online applications, further correspondence is exchanged via the system of the given office. To perform online registration of a trademark at the Polish Patent Office, one must have a safe ePUAP profile account.
After receiving an application for trademark registration and the payment, the offices check for any mandatory obstacles to registering a trademark. In the absence thereof, the application is published, and the term for filing any notices of opposition to trademark registration begins. The term lasts for three months from the date of publication.
When registering trademarks at EUIPO, the system provides a timeline with particular dates, as well as information on the number of opposition filings received.
In the absence of opposition, the Polish law provides for a contingent decision granting protective rights for a given trademark. The decision is contingent because granting protection for a trademark is preconditioned by payment of a fee for the first term of protection of ten years, and of a fee for publication of the decision about the protection. The payment term totals three months from the date of the receiving the decision.
After making the payment and after the end of the three months’ term, the authority sends the protection certificate to the applicant.
At EUIPO, in the absence of oppositions, the information about trademark registration is published. The certificate can be downloaded from the EUIPO website.
TRADEMARK REGISTRATION IN POLAND – COST
In the case of trademark registration at the Patent Office of the Republic of Poland: PLN 450.00 if a trademark is registered for one class, on paper. Beyonf the first class, every other class means an additional cost of PLN 120.00.
For example: if a mark is to be registered in three classes, the cost to be covered by the applicant upon application totals PLN 690.00.
It is also possible to register a trademark via online application. Until recently, the system encountered technical problems, but recently online registration process has been much more efficient and smooth, with the cost lower by PLN 50.00, as instead of PLN 450.00 for the first class, the fee amounts to PLN 400.00.
If a trademark is registered by a lawyer, meaning a legal advisor or attorney, there is an additional fee of PLN 17.00 as tax duty for submitting the power of attorney.
The next step in the trademark registration process involves contingent decision on granting the trademark protection. After receiving it, one must pay the fee for the first term of protection amounting to ten years. The fee totals PLN 400.00 per each class, which would yield PLN 1,200.00 in our example (for three classes) plus an additional fee of PLN 90.00 for publication of the information about the protection rights.
HOW MUCH DOES THE TRADEMARK REGISTRATIONS COSTS IN EUROPEAN UNION?
In the case of EU trademark registration at EUIPO, the cost of registration amounts to EUR 850 for one class, and already includes the charge for the first protection term of ten years. Trademark registration in another class means an additional cost of EUR 50, while in the third and further classes: EUR 150.
For example: EU trademark registration in three classes means the cost of EUR 1050.
EUIPO website provides a fee calculator.
The cost of trademark registration principally depends on the trademark type in the aspect of territory and number of classes where we register the trademark. If trademark registration is performed by an attorney, the costs will also include the costs of legal services involving such trademark registration.
The cost of trademark registration principally depends on the trademark type in the aspect of territory and number of classes where we register the trademark. If trademark registration is performed by an attorney, the costs will also include the costs of legal services involving such trademark registration.
WHAT AFFECTS THE TYPE OF TRADEMARK TO BE REGISTERED?
When working on a strategy for registering trademark used by a given brand/company, the most important factors to be considered include the way how such signs function and work on the product, including the packaging, the advertising, and the website.
Furthermore, when registering a trademark, one must also account for the scope of protection related to particular types of trademarks. Protection of a work mark is clearly stronger than of a word and figurative mark; therefore, we always begin with an analysis of options to register a mark as a word mark of a given brand.
TRADEMARK REGISTRATION – WHAT ARE THE CLASSES?
Trademark registration refers to classes that involve products or services. There are 45 classes in total, whereas products are assigned to classes from 1 through 34, while services: from 35 through 45. The main class for the fashion industry is class 25, the header of which states: “clothing, footwear, or headgear”.
Right choice of the classes, namely pointing to the products or services to be offered by a brand, is of fundamental importance to trademark registration. When choosing the classes, account for the brand’s plans for the next five years.
Remember that if a trademark has been registered for too large a scope, the mark can be invalidated because it is not used. On the other hand, if a trademark is registered for too narrow a scope, this may result in absence of trademark protection with respect to products or services offered by the brand, and thus a third party will be able to register an identical trademark for such classes. Too narrow registration of a trademark may also lead to a need for repeated trademark registration, which will involve repeated costs of trademark registration, because protection cannot be extended to new classes. A new application must be filed including the further classes.
TRADEMARK TERRITORIAL RANGE
Trademark protection is granted with respect to a given territory. Therefore, trademarks must be registered where products or services bearing the trademark will be offered and advertised.
With respect to territory, there are the following types of trademarks: national, community, and international trademarks.
National trademarks are registered via national intellectual property offices. EU trademark registration occurs via EUIPO, while international trademarks are registered by WIPO.
OPPOSITION TO TRADEMARK REGISTRATION
As a rule, a notice of opposition to trademarkregistration can be filed by holder of an earlier trademark, proprietor of earlier moral rights or copyright, and person authorised under the relevant law to exercise the rights arising from a protected designation of origin or geographical indication.
The three-month term for opposition filing cannot be restored. Therefore, it is so important to monitor trademark applications in the aspect of a third party applying for registration of a similar or identical mark.
A notice of opposition can be filed on the following grounds:
- the contested trademark violates third-party moral rights or copyright;
- the contested trademark is identical with a trademark covered with earlier rights with respect to identical goods;
- the contested trademark is identical with, or similar to, a trademark covered with earlier rights with respect to identical or similar goods if there is a risk of misleading the customers, which particularly includes the risk of confusing the contested trademark with the earlier trademark.
Filing the notice of opposition is subject to a charge totalling PLN 600.00 at the Patent Office of the Republic of Poland and EUR 320 at EUIPO.
The party losing at the opposition proceeding shall be obligated to reimburse the costs to the other party.
Filing of an opposition notice in the process of trademark registration does not automatically mean refusal of protection. First of all, the parties are given the opportunity to reconcile, and oppositions are not always justified.
REVOCATION AND INVALIDITY OF A TRADEMARK
Revocation is a method to defect against claims regarding trademark violations and a method to fight against registration of an mark identical with, or similar to, an earlier trademark if the three months’ term for opposition filing has expired.
Protection under a trademark can be revoked with respect to a part of rights or in totality. Grounds for revoking a trademark can be the same.
Filings for trademark revocation, or rather decisions on invalidity, are subject to a charge of PLN 1,000.00 at the Patent Office of the Republic of Poland, and EUR 630 at EUIPO.
TRADEMARK EXPIRY AND INVALIDITY
Reasons for declaring trademark invalid include its genuine non-use with respect to goods covered by the rights during the period of consecutive five years from the decision date, unless there are proper reasons for such non-use.
Declaration of invalidity is granted under application subject to the same charge as application for revoking a trademark.
TRADEMARK MONITORING
Effective trademark protection depends on whether we monitor the trademark. Trademark monitoring involves continuous verification of any filings for trademarks indentical with, or similar to, the already registered trademark.
Trademark monitoring allows timely filing of the notice of opposition, and gives real opportunities for protecting the trademark against illegal use by third parties. Monitoring is recommended because, by principle, the offices do not analyse relative obstacles to trademark registration, and the right holders must continuously monitor trademark filings and submit notices of opposition against new trademark registration which may infringe rights under the trademark.
Trademark registration without its monitoring may result in an omission regarding infringements and violations.
INDICATIONS ON THE TRADEMARKS
Przy oznaczeniach identyfikujących danego przedsiębiorcę często spotyka się następujące symbole: ®, TM i SM.
WHAT DOES THE (®) SYMBOL STAND FOR?
The use of the ® symbol is legally regulated and, under the laws of Poland, pursuant to Article 153 (13 ) of the Industrial Property Law, “The holder may point out its mark has been registered by placing the letter “R” in a circle next to it.” The symbol must not be thus placed with reference to designations not covered by protection rights. This could constitute an act of unfair competition.
THE ™ AND SM MARKS – WHAT DO THEY STAND FOR?
The other symbols are the TM (Trademark) and SM (service mark) and they do not mean that the mark has been registered.
Information about protective rights allows to eliminate some trademark infringements. This is because there are people unaware of infringing third-party rights. Therefore, inclusion of the ® symbol next to designations covered with protective rights eliminates claims of being unaware of such rights.
WITHIN THE FRAMEWORK OF TRADEMARK REGISTRATION, WE OFFER
- audit of trademark “purity” involving verification in the aspect of registered trademarks identical with, or similar to, the mark to be covered by application in given classes. The audit allows identification of entities who might file a notice of opposition against trademark registration.
- analysis and recommendation of the classes,
- analysis and recommendation of trademark registration method, including selection of trademark type and the rights holder,
- representation before the Office in a proceeding involving trademark registration, including opposition proceeding, both at the Patent Office of the Republic of Poland and EUIPO,
- trademark monitoring for the period of one year from trademark registration decision- the monitoring service does not include any opposition proceedings initiated by the holder of the monitored trademark. The opposition proceedings shall be subject to separate quotation.
WITH RESPECT TO THE REGISTERED TRADEMARKS, WE OFFER:
- trademark monitoring and filing notices of opposition, as well as representation in the opposition proceedings,
- representation in proceedings, including cases related to trademark revoking and declaration of invalidity,
- representation in proceedings related to trademark infringement and violation,
- trademark renewal,
- representation before administrative courts, including the Supreme Administrative Court and Internet Domain Arbitration Court.