NEW BOOK ON DESCRIPTIVENESS OF A TRADEMARK
The latest publication by Wojciech Gierszewski, legal advisor and patent attorney, has already appeared in the Profiinfo bookstore. The publication is a practical guide to the descriptiveness of a sign, i.e. one of the grounds for refusing to grant a protection right to a trademark in the PPO and EUIPO. The book is a condensed study of a doctoral dissertation that was defended last year and received a positive opinion from representatives of the Polish legal science.
WHAT IS A TRADEMARK DESCRIPTION
The descriptive nature of a trademark is one of the grounds for refusing to grant a right by the Patent Office. This basis results from Art. 129 (1) 1.3 of the Industrial Property Law and is examined by an expert ex officio, i.e. even without anyone’s request. Descriptiveness occurs when the sign contains only such elements that provide recipients with information about the properties, quality, method of use, manner of performance or intended use of the goods or services to be marked with the mark.
In practice, this premise is ambiguously applied and interpreted by both the Polish Patent Office and the trademark holders. There are also radically divergent ways of understanding the same concepts by legal practicioners.
Trademark applicants should be aware that even if the Patent Office initially refused the right to a trademark because of descriptiveness, this does not close the way to discuss with the Office and convince it to change its opinion. If the applicant has already received a negative decision, it is possible to submit an application for reconsideration of the case or to lodge a complaint with the Provincial Administrative Court. The deadline for doing so is, respectively, 30 days (application for reconsideration) and 2 months (complaint to the Provincial Administrative Court), therefore quick response and finding an appropriate representative for the case are crucial.
The book was created on the basis of such numerous appeal proceedings, which, thanks to the intensive work of patent attorneys, legal advisers and attorneys representing the parties, provide interesting and practical tips.
Information about the book can be found on the bookstore’s website.
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