Registering a trademark is an important decision for entrepreneurs who want to gain a competitive advantage and recognition for their products in the market.
Before starting the registration process, it is worth familiarising yourself with the types of trademarks that are protected, as well as the common pitfalls to avoid when developing new trademarks.
A trademark can be any sign that distinguishes one entrepreneur’s goods or services from those of other entrepreneurs. There are different types of trademarks. These can include words, logos, slogans, sounds, letters, numbers and the shape of products.
Even if we believe that our trademark deserves to be registered and want to use it to build customer trust in our offering, we may still face obstacles to registration. For example, it may turn out that our mark is descriptive and does not meet the statutory requirements for protection.
So, what mistakes should be avoided when developing a trademark?
Firstly, we should examine whether the mark has the key feature of distinctiveness. The Polish Patent Office (PPO) and the European Union Intellectual Property Office (EUIPO) take this basic premise into account when registering trademarks in Poland and EU trademarks valid in the Member States of the European Union, respectively.
The decision to register a trademark is an important decision for entrepreneurs who want to build a competitive advantage and recognition on the market of their products.
Before starting the trademark registration process, it is worth getting to know the types of trademarks subject to protection, as well as what mistakes to avoid when developing new trademarks.
A trademark can be any sign that distinguishes the goods or services of one entrepreneur from the goods or services of other entrepreneurs. There are different types of trademarks. It can be a word, logo, slogan, sound, letter, number, as well as the shape of the product.
Despite our belief that the trademark we have developed deserves to be registered, and we want to use it to build customer trust in our offer, we may face obstacles to registering a trademark. It may turn out that our mark is descriptive and does not meet the statutory requirements for its protection.
So what mistakes should be avoided when developing a trademark?
First, it should be examined whether the mark has a key feature, namely distinctiveness. The fact that a trademark has sufficient distinctive features – specific distinctiveness – is the basic premise taken into account by the Polish Patent Office (PPO) when registering a trademark in the territory of Polish, as well as by the European Union Intellectual Property Office (EUIPO) when registering EU trademarks valid in the Member States of the European Union.
The sign must have sufficient distinctive characteristics to enable consumers to remember it and identify it in connection with goods originating from a given entity, when compared with goods of the same type from other companies. The reference point is the average consumer, who is reasonably well-informed, observant and attentive when it comes to a given group of goods.
In other words, distinctive character is a sign’s property that enables consumers to consciously repeat the purchase of goods bearing that sign, or avoid them if the goods or services do not meet their expectations, by identifying the goods as originating from a specific source.
Secondly, we must assess whether our mark is descriptive in nature, as this would prevent it from being granted protection. The following signs are excluded from registration:
- those which are incapable of distinguishing the goods for which they are registered;
- those consisting exclusively of elements that may serve in trade to indicate, in particular, the type of goods, their origin, quality, value, intended purpose, method of manufacture, composition, function or suitability.
Once the registrability of our designation has been verified, we can proceed to prepare an application for trademark protection rights. To this end, we must decide what type of trademark would be most appropriate for designating our goods or services. The most commonly chosen trademarks are word marks or word and graphic marks.
The next step is to draw up a list of goods and services. Please note that the scope of protection of our trademark is determined by the goods or services that will be marked with it. This is an important element of the application, as the list determines the scope of protection.
Before filing an application, you should consider the territorial scope of the trademark. Registering with the Patent Office of the Republic of Poland (UPRP) will give you protection rights within the country. However, if you plan to operate outside Poland, for example in European Union member states, you can apply for EU trademark protection at the European Union Intellectual Property Office (EUIPO). This protection is valid in all EU countries. Additionally, protection can be obtained in other jurisdictions through the Madrid system or directly from the offices of individual countries.
Registering a trademark gives the owner the exclusive right to use the trademark professionally or commercially within the territory of the Republic of Poland (in the case of protection at the Polish Patent Office) or within the territory of EU member states (in the case of EU trademark protection). This means that you have the right to use the trademark and can enforce your rights in the event of infringement.
The term of protection is 10 years from the date of filing the trademark application, after which the UPRP issues a decision granting protection rights to the trademark. The owner may renew the trademark’s validity every 10 years by paying periodic fees. If the fee for the next period of protection is not paid, the protection rights expire.
Benefits of registering a trademark:
As the owner of a registered trademark, you have the right to assert your claims in civil proceedings in the event of an infringement and demand that the infringement cease and that the damage caused be remedied.
Registering a trademark strengthens your brand image, increasing its value and building trust among customers, which translates into consumer loyalty.
Exclusive right to use a registered trademark: trademark registration gives the right to prohibit another person from using an identical or similar trademark in commercial transactions that could mislead consumers, thereby protecting the trademark against unfair competition.
Transferability: a registered trademark is a valuable asset that can be transferred.
Licensing: if you own a registered trademark, you can grant another person the right to use it in return for payment, thereby obtaining additional financial resources.
Registered trademarks also increase the value of a company, which is important when selling or attracting investors.
A registered trademark is a marketing tool that facilitates the promotion of products and services, as customers find it easier to remember goods marked with an individual trademark. Through long-term promotional activities for products bearing the trademark and the high quality of the goods offered, trust is built among customers, thereby building the reputation of the trademark.
Therefore, trademark registration is an important step in a brand protection strategy, providing companies with measurable benefits.
Author:
Alicja Kicińska-Fujawa
