Trademarks, industrial designs, geographical indications

Trademarks

A trademark is a mark allowing to distinguish the goods/services of one enterprises from those of other enterprise. Essentially each trademark has three functions: designation of origin, warranty and advertising. These functions are invaluable in a competitive market environment of the modern world, making trademarks valuable assets for businesses.

A trademark can be i.a. a word, including a surname, drawing, letter, number, colour, three-dimensional form, including the shape of goods or packaging, word/figurative mark, sound, hologram or a multimedia mark (e.g. an advertising video).

For each trademark a list of goods and/or services intended for marking must be prepared.

When choosing a trademark, it is highly recommended to carry out a professional trademark search.

The trademark search makes it possible to determine whether there are earlier trademarks which would collide with the chosen mark, i.e. trademarks which could constitute the basis for an opposition and an obstacle to grant the protection right, or an obstacle to the use of the given mark in the market.

Protection rights for trademarks, being exclusive rights limited term- and territory-wise, can be obtained under three procedures:

National procedure

Under the national procedure a trademark application is filed to obtain protection right in Poland. The application procedure before the Patent Office of the Republic of Poland is relatively quick and takes about 6 months.

In Poland there is the so-called opposition system for granting protection rights for trademarks. The Patent Office of the Republic of Poland no longer examines new trademark applications as to so-called relative obstacles to the grant of protection rights (i.e. mainly collisions with earlier identical and similar trademarks). However, a holder of protection right for an earlier trademark, an owner of an earlier personal or property right, as well as a person entitled to the protection of designation of origin or geographical indication may file oppositions against the grant of protection right for a trademark with a later application date. A notice of opposition may be filed within 3 months as from the date of publication of the mention about a trademark application in the Bulletin of the Patent Office of the Republic of Poland (Biuletyn Urzędu Patentowego RP; BUP). For this reason, when choosing a trademark, it is highly recommended to have conducted a professional trademark search to find potentially colliding marks.

Trademark protection is granted for 10 years and may be renewed any number of times for successive 10-year periods.

It is also possible to apply for trademark protection at the national patent offices of other countries.

International procedure

The international procedure for obtaining registration of trademarks is available due to the accession of Poland to the Madrid Agreement and the Madrid Protocol.

Under the international procedure protection may be obtained on the basis of a single application in more than 120 countries. The international application is based on a so-called “basic application or registration in the country of origin”, and thus the international protection is granted for a trademark identical to that as originally filed, with the same list of goods and services.

The international registration of trademarks requires the filing of a trademark application prepared in the English or French language and indicating the designated states in which protection should take effect. The trademark applications are filed with the International Bureau of the World Intellectual Property Organization (WIPO) through the Patent Office of the Republic of Poland acting as the patent office of the country of origin.

The patent offices in the selected countries decide, independently of each other, whether to recognize an international trademark registration or not.

The international trademark protection lasts 10 years and this right may be extended any number of times for successive ten-year protection periods.

Community procedure

The Community procedure allows to obtain trademark protection on the basis of a single application in the territory of all twenty seven Member States of the European Union.

An application for a Community trademark may be filed directly with the European Union Intellectual Property Office (EUIPO).

The trademark protection under the Community procedure lasts 10 years and this right may be extended any number of times for successive ten-year protection periods.

We provide our Clients with comprehensive assistance in selecting the most advantageous protection system and render services of preparing lists of goods and services, preparing appropriate application documentation, prosecuting the case during the examination stage and paying official fees for the extension of protection.

Moreover, we offer top-quality services of trademark availability searches.

Our patent attorneys can represent our clients not only before the Polish Patent Office, but also before the EUIPO. In the case of national applications in other countries, SGS secures well-proven professional assistance of foreign patent attorney firms.

Industrial designs

The fierce competition on the market makes industrial designs a strong asset for companies enjoying pertinent exclusive rights. A new and distinctive design attracts the attention of buyers and can become an easily recognisable business card.

An industrial design is a new and individual form of a product or of a part thereof, determined in particular by the features of lines, contours, shapes, colours, texture or material of the product and by its ornamentation, and thus the protection is granted for the appearance of the product or part thereof, i.e. for the external form thereof.

Industrial designs are protected by rights in registration, and said exclusive rights, limited term- and territory-wise, can be obtained under three procedures:

National procedure

Under the Polish national procedure an application for an industrial design is filed with the Patent Office of the Republic of Poland. The procedure leading to obtaining the right in registration is relatively quick, as it entails just a formal examination.

An industrial design registration may also be sought in other countries, by filing suitable design applications with national patent offices, with possibility of claiming the priority date from a national application in Poland.

International procedure

The international procedure for registration of industrial designs (under the Hague Agreement) allows for getting protection in selected signatory states by filing a single design application. Applications may be filed directly with the International Bureau of the World Intellectual Property Organization (WIPO) or through the Polish Patent Office.

After the formal examination of the application performed by WIPO, the patent offices in the designated states decide independently of each other on grant or refusal of the registration of the industrial design.

Community procedure

The Community procedure consists in filing industrial design applications with the European Intellectual Property Office (EUIPO) for getting the registration valid in the entire territory of the European Union, including Poland.

The application may be filed directly with the EUIPO or, upon the payment of an additional fee, through the Polish Patent Office.

Protection of an industrial design lasts maximum 25 years and is divided into five periods of five years each, starting as from the filing date. Before the expiration of each protection period a relevant renewal fee has to be paid.

We provide our Clients with comprehensive assistance in selecting the most advantageous protection system and preparing an appropriate application documentation. Our patent attorneys can represent our clients not only before the Polish Patent Office, but also before the EUIPO.

In the case of national applications in other countries, we secure well-proven professional assistance of foreign patent attorney firms.

Geographical indications

Geographical indications play an important role in the marketing of goods as elements highlighting a particular link between a product and a country, region or locality, which is often one of the main factors of choosing a product by the buyer.

Geographical indications are verbal indications referring directly or indirectly to the name of a place, locality, region or country which identify a product as originating in a given territory. The geographical origin is often attributed to a certain quality, good reputation or other specific characteristics. Registered geographical indications may be used on products which fulfil a specification which may include requirements concerning the location of origin or method for manufacturing such a product.

Geographical indications for agricultural products and foodstuffs may be protected under the EU system of protection of geographical indications as a Protected Designation of Origin (PDO), Protected Geographical Indication (PGI) or Traditional Speciality Guaranteed. A “group” of producers or processors of a particular agricultural product or foodstuff may apply for registration. The procedure of registering a geographical indication is a two-stage process. The first stage is carried out in a Member State, with the Ministry of Agriculture and Rural Development being the authority responsible for conducting the registration in Poland. The second stage, at the EU level, is carried out at the level of the European Commission, which issues decisions on the registration of a geographical indication. The EU system of protection also covers geographical indications for spirits.

Geographical indications for industrial products which are not subject to registration under the EU system of protection of geographical indications may be registered at the Polish Patent Office.

We offer our Clients professional assistance in obtaining and enforcing registration rights for geographical indications.

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