Trademarks, industrial designs, geographical indications

Trademarks

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:

National procedure

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.

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 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.

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, 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 regarding trademark availability searches.

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.

Industrial designs

The fierce competition within the market renders 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 recognizable 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, colors, 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 as to term and territory, can be obtained under the following 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 the respective national patent offices, with the possibility of claiming a priority date from a national application in Poland.

International procedure

The international procedure for registration of industrial designs (under the Hague Agreement) allows for obtaining 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 the grant or refusal of the registration of an industrial design.

Community procedure

The Community procedure consists in filing industrial design applications with the European Intellectual Property Office (EUIPO) for obtaining 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 for a maximum of 25 years and is divided into five period of five years each, starting from the filing date. A relevant renewal fee has to be paid before the expiration of each protection period.

We provide our Clients with comprehensive assistance in selecting the most advantageous protection system along with preparing an appropriate application documentation. 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.

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 a buyer chooses a product.

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 fulfill a specification which may include requirements concerning the location of origin or method of 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 by the European Commission, which issues decisions regarding registering of geographical indications. 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 Clients our expertise and professional assistance in obtaining and enforcing registration rights for geographical indications.

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