A trademark is a mark allowing to distinguish the goods/services of one enterprise from those of other enterprises. Essentially each trademark has three functions: designation of origin, warranty and advertising. These functions are invaluable when operating within the competitive market environment of the modern world, rendering the trademark an invaluable asset for any business.
A trademark can be i.a. a word, including a surname, drawing, letter, number, color, three-dimensional form, including the shape of goods or packaging, word/figurative mark, sound, hologram or a multimedia mark (e.g. an advertising video).
A list of goods and/or services intended for marking must be prepared for each trademark.
When choosing a trademark, it is highly recommended to carry out a professional trademark search.
A professional trademark search makes it possible to determine whether there have been earlier trademarks which may collide with the mark one has chosen, i.e. trademarks which could constitute the basis for an opposition and an obstacle to granting the protection right, or an obstacle to using the given mark in the market chosen.
Protection rights for trademarks, being exclusive rights limited as to the term and specific territory, can be obtained under three procedures:
In order to obtain a protection right in Poland a trademark application is filed under the national procedure. The application procedure before the Patent Office of the Republic of Poland is relatively quick and takes about 6 months.
There is a so-called opposition system in Poland 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 granting of protection rights (i.e. mainly collisions with earlier identical and similar trademarks). However, a holder of a 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 granting of a 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 in order to locate potentially colliding marks.
Trademark protection is granted for a duration of 10 years and renewable any number of times for successive 10-year terms.
It is also possible to apply for trademark protection at the national patent offices of other countries.
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 said 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.
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, 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.
Our patent attorneys can represent our clients not only before the Polish Patent Office, but also before the EUIPO.
Regarding the filing of national applications in other countries, we have formed alliances over the years with time-proven foreign patent attorney offices that we trust can assist you properly and efficiently.