Trademark - how to register? A short tutorial
Basically, all entrepreneurs know the most famous trademarks - white Coca-Cola letters on a red background, characteristic Adidas stripes or a silver star being the emblem of Mercedes. However, most entrepreneurs do not wonder that not only international corporations can register a trademark and take advantage of the rights resulting from this registration.
A trademark - what can become one?
A trademark is the designation of the entrepreneur's goods, which allows them to be unequivocally identified and distinguished from the goods of another entrepreneur. In Poland, the rules governing trademarks and their registration are regulated in the Industrial Property Law.
The provision of art. 120 of the Industrial Property Law
1. A trademark can be any sign that can be represented graphically, if such a sign is capable of distinguishing the goods of one enterprise from the goods of another enterprise.
2. A trademark within the meaning of para. 1 may be, in particular, a word, a drawing, an ornament, a color composition, a spatial form, including the form of a product or packaging, as well as a melody or other sound signal.
A trademark can be of various nature. This may be a sign:
verbal - representing only a word, e.g. company name;
graphic - logo presented in the form of graphics, drawings;
graphic and spatial - e.g. product packaging bearing specific and distinguishing features for a specific entrepreneur.
Due to the fact that there is no catalog of marks that can be registered as trademarks, each sign that characterizes the entrepreneur and is sufficiently individualized (even a specific color or sound signal) can be registered as a trademark.
It should be remembered that the basic function of a trademark is to distinguish an entrepreneur from other entities on the market. For this reason, it is impossible to register characters that do not meet this condition. An entrepreneur cannot successfully submit an application for registration of a mark that:
- does not indicate any characteristic, individual characteristics (e.g. tasty chocolate);
is a commonly used word or sign (e.g. sneakers or cappuccino);
would mislead consumers as to the nature of the product, its quality or origin (e.g. Zakopane cheeses in the case of products from Mazovia).
Before attempting to register a trademark, the entrepreneur should read the provision of Art. 129 of the Industrial Property Law Act, because this provision contains a catalog of conditions preventing registration of a trademark (apart from the circumstances indicated above, these include, for example, filing a mark in bad faith, filing a mark that is offensive from the point of view of religious or patriotic feelings, filing a mark containing the symbol of a foreign country), and also with the provision of Art. 132 of the aforementioned Act, which contains a list of circumstances resulting in the refusal of registration due to effective objection by another entity.
A trademark has many benefits
Registering a trademark is of great importance for the business conducted by the entrepreneur. Registering a trademark is associated with obtaining protection rights to the trademark and may bring an entrepreneur many tangible benefits. Owning a trademark undoubtedly affects the company's reputation and gives the goods offered by the entrepreneur an additional meaning. Obviously, the mark can be used in marketing activities undertaken by the company. By registering a trademark, the entrepreneur gains the right to use the ® mark, which may increase the level of credibility of the goods offered by the entrepreneur. A trademark can be traded, therefore it can be sold by the entrepreneur. Moreover, the entrepreneur should bear in mind that the mere use of a specific designation - even for many years - does not in any way protect him against possible infringements by other entities. It may happen that the trademark is successfully registered by another entrepreneur, and thus the entrepreneur initially using the same trademark will have to cease these activities.
Trademark - step by step registration
A new registration procedure has been in force since 2016, which is much easier than the previous one.
Procedure for registering a trademark:
-checking the availability of the trademark in online databases indicated by the Patent Office of the Republic of Poland (Register Plus and TMview databases);
- submission of an application to the PPO;
- payment of the application fee;
-publication of the application in the Register Plus database (publication takes place within 2 months from the date of submitting the application);
-publication of the application in the Bulletin of the PPO;
- issuing by the PPO of a decision on granting a right of protection or refusing to grant this right for a trademark;
- payment of a fee for the protection and publication of the mark.
Currently, an application for registration of a trademark can be filed in two different ways. It may be a traditional or paper application or an application submitted online via the website of the Patent Office of the Republic of Poland. An online application requires an electronic signature.
As indicated above, after filing the application, the application is published in the Bulletin issued by the Patent Office and this event is of key importance for the registration procedure of the mark. From the date of publication, third parties have the opportunity to object, which - if justified - may block the registration and result in a negative decision. This will be the case where, for example:
using the trademark infringes the personal or property rights of other people;
the mark being registered is identical to the mark already registered;
the registered trademark is identical or similar to an already registered trademark and registration of the trademark would mislead the public.
Due to the possibility of opposition by another entrepreneur, as well as due to the risk of possible claims of other entrepreneurs, the application for registration of a trademark should be carefully prepared, and the trademark proposed for registration - carefully thought out.
Start a free 30-day trial period with no strings attached!
What fees do you have to take into account when registering a trademark?
The application for registration of the trademark is submitted on the form provided by the Patent Office. The application must provide the following information:
applicant identification data;
data identifying the applicant's representative, if the applicant has granted a power of attorney for representation in the course of registration proceedings;
information on the trademark (its image, description, colors);
indication of classes in accordance with the Nice classification (the classification includes 45 classes and uses a numerical designation, for example class 25: clothing, footwear and headgear);
declaration on the use of priority to the mark.
The application must be accompanied by documents, the scope of which depends on the circumstances of the case. It may be, for example, a design of the mark, regulations of the mark, a document confirming the priority of use of the mark. Submitting a registration application requires the payment of a registration fee.
The basic fee for submitting the application is PLN 450. In the case of registration of additional classes of goods, the fee for each subsequent class of goods is PLN 120.
A detailed list of fees is available on the website of the Patent Office. Submitting an application involves paying additional one-off fees, e.g. a publication fee of PLN 90.
A trade mark can be protected under three different systems:
on the territory of Poland;
in a given region (e.g. in the territory of European Union countries);
on the territory of all countries belonging to the so-called the Madrid system.
It is up to the trader to decide which system he will choose. Undoubtedly, in the case of entrepreneurs offering their goods and services outside Poland, they should consider whether it is worth registering a trademark also outside Poland.
The entrepreneur must remember to renew the protection right so that the trademark is permanently covered by it
The right to protect a trademark should be renewed every 10 years. Renewal of the right of protection requires the payment of a fee. Renewal of the right takes place on the basis of an application submitted by the entrepreneur, however, the entrepreneur must remember to submit it at least 6 months before the end of the protection period. Being late in submitting the application will result in the necessity to pay a higher fee. The entrepreneur must remember about the necessity to extend the protection, because the Patent Office does not inform about the end of the protection period.