TRADEMARK – REGISTRATION AND USE OF A TRADEMARK

Registering a trademark for your own benefit and obtaining a protection right is one of the basic stages of developing your own brand. A trademark not only allows to prevent copying of a name or logo by market competitors, but also increases the prestige of the entrepreneur and, as a result, the goods and services offered by his company. It is also worth mentioning that a trademark is a property right that has a measurable value and is an asset of the enterprise. It is also a very important aspect in the subject of trademarks that a trademark must be used for the goods and services for which it was applied for.

We have gathered some tips on how to register a trademark and how to use it, please find all the information You need in our article below.

HOW TO REGISTER A TRADEMARK?

The procedure for registering a trademark in Poland takes place before the Polish Patent Office. The registration procedure is started by filling in the application and delivering it in paper or electronic version. If the electronic version is chosen, the fees for applying for the mark are reduced. The following information must be provided in the application for granting the right:
– the applicant’s details, in the case of several applicants, the regulations governing the use of the mark must be submitted;
– representation of the mark, e.g. by attaching a jpg file. with an image representing the sign;
– list of goods and services falling within the classes of the Nice Classification;
– the representative’s details, if a representative has been appointed.
After submitting the application, the Patent Office will proceed to a formal and legal examination in which it will determine whether the fees have been properly paid and whether the application form has been filled in correctly. After a positive conclusion of this stage, a substantive examination of the application will take place, in which the Office will examine the existence of absolute grounds of refusal of a trademark, such as the descriptiveness of the mark or the lack of distinctive character for the goods for which it was applied for. If such a ground of refusal is noticed by the Office, a preliminary refusal to grant protection for the trademark will be issued. If, in the applicant’s opinion, the preliminary refusal is unjustified, he may, in response to this letter, present his opinion to the Patent Office with appropriate argumentation. In many cases, it is here that it is necessary to contact a patent attorney or legal advisor and obtain a professional advisory service.

HOW TO SET UP THE LIST OF GOODS AND SERVICES?

In the context of using a trademark, it is worth to rise attention to formulating the scope of goods and services for which we are seeking protection in a correct way. The key tip is to register the trademark only for those goods and services for which the mark will actually be used, for example it will be used on labels of products. In the case of an excessively broad list, the applicant is exposed to the accusation of non-use of the mark or proceedings for invalidating the mark, generating costs that the unsuccessful party must usually bear.

In order to correctly formulate the list it is advised to use TMclass tool: http://tmclass.tmdn.org/ec2/.

IS THERE AN OBLIGATION TO USE A TRADEMARK AFTER IT WAS REGISTERED?

There is no obligation to use the mark, however, if the mark is not actually used within 5 years after its registration, and the holder does not have important reasons for not using it, the mark may be invalidated. It is essential in this context that the sign must be used in a genuine way, which means that the use of the sign cannot be only symbolic. Moreover, the mark must be used in accordance with its function, which is to designate the goods and services for which it has been registered. The use of a trademark is evidenced by such activities as invoices documenting the sale of goods marked with the trademark, printouts from magazines of stores where the product was available, or marketing campaigns such as advertising the goods in magazines or on television.

CAN YOU OWN A TRADEMARK WITHOUT REGISTRATION?

A trademark is an absolute right, obtained in an administrative procedure before the Polish Patent Office, EUIPO or WIPO. Therefore, it is not justified to claim that you have a trademark if you have not applied for the protection and obtained it in one of above-mentioned patent offices.

If the entrepreneur has not applied for a trade mark, but uses a word or graphic to distinguish his goods and services in the course of trade, he or she has something commonly called as a logo or a brand, the protection of them is also possible, but not under the industrial property law.

On the basis of the Act on Combating Unfair Competition, it is possible to prohibit another entrepreneur from using the designations of goods and services that may mislead recipients as to the origin of the goods, and thus also as to the origin of the given entrepreneur. However, such a procedure is complicated and does not fully guarantee the protection of the entrepreneur’s brand. That is why the vast majority of entrepreneurs decide to file for protection of their logos (marks) to the Patent Office and obtain protection certificates for them.