I. GENERAL INFORMATION
A trade mark, house brand (so-called firm’s logo) or service mark can be any sign allowing for distinguishing of goods of one enterprise from goods of another enterprise, which can be presented in the trade marks register in such way so that clear and precise fixing of the subject of protection provided is possible. A trade mark, house brand or service mark can be, in particular, a word, including a surname, drawing, letter, digit, colour, spatial form, including shape of commodity or packaging, as well as a sound.
A trade mark can be, in particular:
- A word (including surnames of any individuals)
- A drawing
- A letter
- A digit
- An arrangement of colours
- An ornament
- A colour design
- A 3D form (including form of the commodity or packing)
- A melody or another audio signal.
The products or services of one company are being distinguished from products and services of other companies thanks to the distinguishing character of the trade mark. Thanks to this, a company is identifiable among the buyers, therefore, its market status increases.
Value of the house brand often makes the major part of company’s stock exchange value.
Any loss of the trade mark or house brand means a loss of almost entire company’s goodwill and in such situation the company must break its way through to the market again.
So, it’s important to protect the house brands and trade marks.
II. HOW TO GET A TRADE MARK PROTECTION IN POLAND (national procedure)
1. Selection of Attorney
It is well worth to use the services, in Patent Office proceedings, of a patent attorney, who will act as your attorney to guide you through the intricacies of the registration process and help you to get the fullest possible protection.
According to article 236 The Industrial Property Law Act (Official Journal of Laws No 119, Section 1117): “An attorney of any party in the proceedings before the Patent Office in any cases associated with filing and consideration of applications and maintenance of protection for inventions, trade marks (…), can only be the patent attorney”.
Any citizens of foreign countries and foreign companies can proceed before the Patent Office of the Republic of Poland only via patent attorneys having fixed abode in Poland.
The patent attorney is authorised to act in the capacity of an attorney before the Patent Office, Chamber of Appeal, Courts of Justice and any other bodies in matters associated with industrial property protection.
The Power of Attorney required by the Patent Office shall be made by the Patent Attorney’s Office and signed by a person authorised to represent the company.
Recently many offers appeared in the Internet encouraging to get trade marks protection in seemingly attractive prices. Such offers usually pertain to preparation of application documentation which should be submitted by the company proprietor himself. If you would like to use such offer, make sure that the documentation will be prepared by a professional, i.e. patent attorney, because such firms usually do not employ patent attorneys. You must consider the fact that those entities will not be your proxies, therefore, you will have to arrange yourself any and all matters associated with protection acquisition. You yourself will have to remember about charges due and nobody will monitor your trademark.
Using services of our Office you may rest assured that we will handle your case in a comprehensive and professional way. All payments associated with trade mark protection will be signed by our Office, which will be very important for you because you’ll be getting many calls for payments by companies encouraging you to put your trade mark in their private registers under cover of linking with protection in Polish Patent Office, WIPO or EUIPO. Thanks to comprehensive service provided by our Office you will avoid such undue payments.
2. Documents needed for trade mark registration
In order to efficiently and quickly go through the trade mark registration procedure you will need the following documents:
- TIN and registration number;
- Home address – if the applicant is a natural person;
- Trade mark image, best of all in electronic form (JPG, CDR, PDF).
During a meeting we fix also the range of goods and services within which the trade mark is to be protected.
The Power of Attorney and essential orders are drafted by the Office.
3. Trade mark examination procedure
The next stage of trade mark protection acquisition is examination of its registration capability by the Patent Attorney’s Office. Such examination is not compulsory but it gives the applicant a number of benefits:
- Thanks to this examination you will avoid the costs associated with filing of the trade mark, which would stand no chance for protection. The trade mark registration procedure takes a dozen or so months and the Patent Office does not reimburse the charges incurred for filing application of a trade mark, which cannot be protected.
- You will be able to implement changes in your trade mark, which will make possible or facilitate acquisition of protection and which could not be implemented after filing the application at the Patent Office.
- You will avoid or mitigate the costs associated with any necessity to defend the trade mark against Patent Office’s objections as to its lack of registrability.
- You will avoid a possibility of conflict with owners of similar but already registered trade marks.
- The risk of opposition raised by any third parties in the registration process is minimised.
4. Selection of the registration procedure
Trade mark protection pertains to a specific territory. To acquire trade mark protection you can use the national procedure thanks to which your trade mark will be protected in the territory of given country. In Poland, protection is granted to trade marks by the Patent Office having its registered office in Warsaw.
To acquire protection in territories of other countries you can avail yourself of:
- Individual trade mark application in given country, which procedure shall be effected by the Patent Attorney’s Office via partner offices in given countries;
- Trade mark application in many countries worldwide via the Madrid Agreement or Madrid Agreement Protocol procedure. The international registration shall be provided, in this case, by the International Office of WIPO in Geneva via the Patent Office of the Republic of Poland or EUIPO acting in the capacity of the country of origin office;
- Trade mark application in all European Union countries via the European Trade Mark (EUTM – European Union Trademark) procedure. The right under the European Trade Mark registration is awarded by the European Union International Property Office in Alicante (Spain).
5. Trade mark application publication
After preliminary selection of the trade mark by Polish Patent Office, the trade mark is published so that any third parties concerned may file during 3 months an opposition to it. Information on submitted trade marks may be obtained by the parties concerned through monitoring of their trade marks.
6. Trade mark protection acquisition
Once the protection is awarded, relevant office will issue the Registration Certificate, which is a document confirming acquisition of protection for given mark. The document indicates the date as of which the trade mark is protected, number of the protected trade mark, trade mark owner, trade mark image and the scope of trade mark protection as per the Nice Classification.
The trade mark will be protected for 10 years. After expiry of this period its protection can be extended.
The Patent Attorney’s Office of Aneta Balwierz-Michalska will take care of extension of the registered trade marks protection at proper moment.
Polish Patent Office does not examine trade mark in terms of its collision with any previous trade marks and the burden of verification if the newly submitted trade marks do not violate your exclusive rights shall rest upon the entrepreneurs in the opposition procedure. Therefore, it is important to watch, after getting trade mark protection, what trade marks are being submitted to Polish Patent Office. Thanks to this you will be able to file, within 3-month opposition period, your remarks/objections to the newly submitted trade mark, which could violate your exclusive rights. More information on trade mark monitoring you will find here.
III. ACQUISITION OF TRADE MARK PROTECTION OUTSIDE POLAND (INTERNATIONAL PROCEDURE)
Acquisition of protection outside Poland is possible through:
- Individual application filed in particular countries
- Filing European trade mark application (for entire European Union)
- Filing trade mark application for Madrid Agreement countries and Madrid Agreement Protocol for European and non-European countries
The procedure of protection acquisition outside Poland resembles, to the high degree, the above described national procedure.