office@lech.bydgoszcz.pl +48 607 416 240
Legal protection of trademarks Things you should know to protect your brand
Mikołaj Lech
A lawyer, who specializes in industrial property law, combating unfair competition and copyright. Thanks to work in Patent Agency he has a contact with the current problems of entrepreneurs.
[Read more >>>]
I want to register the company name and logo…
"I want to register the company name and logo". I often hear such words from people who want to protect their brand. I explain to them that it is formally done by registering the trademark in the Patent Office. The question is, will you be able to kill two birds with one stone? Can you register a company name and logo by making one application to the Patent Office? In this article I explain everything in detail.
Do you want to protect the name and logo?
You must decide.
When registering a trademark in the Patent Office, one of its forms should be chosen. And there are quite a lot of them. However, in practice entrepreneurs have a dilemma between two.
You can choose to protect the logo (figurative trademark) or only the name (word trademark). Each of these forms has its own pros and cons, although I think that word trademark protection is more practical. Nevertheless, I have already tried to answer the question which form may be more beneficial for you.
Read two important articles on this topic:
Word or figurative trademark – which one is better?
Trademark signs. 7 reasons why it is better to register a word trademark
Pros and cons of protecting the company name and logo
This is another question which appears after my explanations that one should opt for one of the forms. This is a very good question.
Unfortunately, there is no simple explanation here.
I will answer like a typical lawyer:
"It depends"
Whether the name from which the logo was created is a fanciful term.
The point is not to have a word that did not exist before, such as "buildimex". The word or words forming the logo cannot clearly indicate goods/ service they are meant to signify.
Certain terms cannot be monopolized. If the name "bread" could be used to designate bread, it would paralyze the bakery industry.
It is the reason why the Patent Office refuses to register general information markings. If you are wondering if your brand does not belong to this category, be sure to read the article: Descriptive trademarks – a serious problem for many companies.
Examples, when does the logo also secure the name?
In the Polish Patent Office, the figurative trademark "GOOD WATER" is registered under no. R.132137.
The protection includes non-alcoholic beverages.
Does the authorized person have exclusive rights to the words "good water"?
Definitely not!
It is a case where the mark points to the product it is meant to signify. Thus, only his graphic design is protected.
In the Polish Patent Office, the figurative trademark "PLAY" is registered under no. R.284083.
Protection covers inter alia. mobile telephony.
Can the authorized person ban the use of the term "PLAY" even if its graphic design is completely different?
But, provided that this term will denote services related to mobile telephony.
Sometimes it is difficult to determine if the company logo protects the name.
As you can see, it is not easy to answer the title question. Everything depends on the specific case.
Often it is balancing on the border. You may have doubts whether Your mark is already general information, or rather it belongs to suggestive marks (such as the name E FASHION for software for consumer use in shopping via a global computer network and of electronic retailing services).
The problem can be seen especially if the mark consists of words from a foreign language (eg. English language). If it is considered to be general information, then despite the logo registration, you will not be able to prohibit another entity from using a phonetically similar term.
I noticed that many people simplify things too much. By registering a company logo, we can also secure its name, but this is not always the case. I also write on this subject in the article: 5 incorrect beliefs about trademarks.
Don't risk: register the company name and logo.
Ask me about pricing
office@lech.bydgoszcz.pl
The best solution in this situation is to protect both trademark forms, word and graphic.
However, this involves the need to make separate applications, so all official fees must be paid twice. There is also a risk that the Patent Office expert may not grant protection on a word trademark.
More interestingly, you need to know that over the years Patent Offices have been changing their practice in terms of recognizing which mark is descriptive (and therefore incapable of registration). EUIPO is very strict about this. There are rumors that the Polish Office soon will aslo decide about the same.
This means that today such a mark as "good water" would not have a chance for protection.
If you are thinking about the company name and logo registration, please contact me. As a patent attorney, I will take care of all formalities.
Trademark and copyright – the most common mistakes
Trademark and copyright are two areas of law that strongly permeate each other. Graphic designer creating a logo within the meaning of The Copyright & Related Rights Act is the creator. And now an important question: Do you have a contract with him to transfer author's property rights to the trademark used by you? If not, you may have problems in the future.
What is the proprietary copyright?
I will explain this by a simple example.
The painter who created a painting has to it:
personal copyrights – so they can, e.g. mark the picture with their full name
proprietary copyrights – they can dispose of it freely, e.g. through sale
The painter who sold the painting will still be able to say that he was its author. Personal copyright is not transferable. Therefore, you cannot transfer the rights to be the author of a given work.
If you buy a painting, you do not obtain proprietary copyrights for it. Personal copyrights are not transferable. So our painter will always be able to say that they are the author of the painting – even if they sell it. The matter seems obvious.
Ghostwriting problem:
Ghostwriter – is a person, often a journalist, who writes, for example, a book which someone else signs with his consent. This practice is popular among politicians. Only that claiming someone else's authorship (even with the consent of the creator) violates personal copyright.
Trademark and copyright
When it comes to trademark and copyright, the situation is more complicated.
Often, companies commission marketing agencies to make a characteristic logo. The danger for such entrepreneurs results from the fact that they sign contracts for the logotype creation. This has nothing to do with transferring the proprietary copyrights to the logo. In order you to have full rights to the effects of their work is not enough to pay the invoice.
Moreover, transcript at the invoice that it includes the transfer of copyright is invalid.
These rights are transferred to the buyer only as a result of signing the contract for the transfer of proprietary copyrights to e.g. visual identification.
Copyright in the work contract.
Alternatively, the work contract should contain a comprehensive section on copyright issues. If such transcripts are missing, then you buy a "copy" and the "negative" remains with the creator. The creator still has:
'… the exclusive right to use the work and dispose of it on all fields of exploitation and remuneration for using the work'
And sometimes graphic designers consciously remain silent about copyright. If the customer raises this topic over time, it is an opportunity for them to earn some extra money. They agree to sign the contract, but for a surcharge.
What if you do not have full trademark rights?
I will tell you a story of my client.
The entrepreneur commissioned the marketing agency to design labels for their products.
They came out really great so the entrepreneur started production. How surprised he was, when after half a year, products bearing similar labels appeared on the market by his competitors.
As it turned out, he did not sign a contract for the transfer of proprietary copyrights. Thus, the graphic designer did not think much executing similar order. He gently changed the design of already created labels and sold practically the same thing again.
And he had the right to do it – but violating interpersonal moral principles.
If you do not have the logo rights, how can you pursue anyone for copyright infringement?
The graphic creator may invalidate your registered trademark.
It is not a joke, but a very real threat.
After filing a trademark application to the Patent Office, the expert only checks if there are not absolute obstacles to give protection,
e.g. that you do not apply for the exclusive right to descriptive term.
The expert does not check (as there is no way how) whether you have the logo copyright or you have permission to register a trademark from the creator.
And the law clearly states that:
trademarks which violate personal and property rights of third parties are not registered.
Have you obtained permission to register the logo in the Patent Office?
If you run into conflict with the creator of the company logo, he may invalidate your trademark. In the dispute he will emphasize that he never gave you permission to register the trademark.
Do you know what your defense line should be then?
Submission of the contract, which shows that the creator transferred the property copyrights to the logo on you. You do not have to ask them for permission.
If you do not have such contract, the case is most likely to be lost.
Unfortunately, many companies have been operating on the market for years with an unregulated issue of copyright to the company logo. I would compare this situation to the ticking bomb.
It is unknown when it will explode.
I hope you understand now why this contract is so important.
How to secure your rights?
The contract with a graphic designer for a logo creation is one thing. The second thing is signing a separate contract on the transfer of proprietary copyrights to the effects of his work on you.
The vast majority of graphic designers are honest and willingly agree to such conditions.
However, it is good to agree everything before executing the order to avoid misunderstandings.
It is possible that the graphic designer for signing such a contract will require from you additional fee.
There is something more … copyright personal rights.
As I wrote above, copyright personal rights are not subject to renunciation or disposal.
Each of us will probably agree that there is nothing wrong with the designation of the painting. However, in the meaning of The Copyright & Related Rights Act personal rights include:
the right to mark the work with your full name;
the right to inviolate the content and form of the work;
the right to supervise the use of the work.
The creator may request information about his authorship each time the logo is used. Can you imagine it? Each leaflet, letterhead or car will need to have a clear designation of the author. Not to mention the fact that he may not agree on how to use the work.
As you can see, the creator can start causing many problems.
Limitation on the exercise of personal copyright.
In order to prevent this, it is worth signing up a contract with them in advance about:
not exercising personal copyrights in relation to a given work or
transfer of exercising personal copyrights to the purchaser
And all this under contractual penalty of 'XXX' EUR.
Such a construction will not deprive the author of the rights about which I am writing above, but it will make us able to demand payment of the contractual penalty from them. And this may discourage him from making us miserable.
Secure yourself with a good contract with the graphic designer.
Remember – contracts are for the time of war.
If there is no need, they lie in a drawer or binder for years. But when they are needed, they can save a lot of nerves and money.
Graphic designers are not lawyers. It is kind of a truism, but I am still surprised how many companies blindly sign contracts preapred by graphic designers. Any mistake in such a contract, the non-determination of important issues … works in favor of graphic designer.
The powers that will not be included in such a contract remain with the creator.
What solution do I see?
I can prepare a contract for You, like a tailor-made suit. A contract that fully secures your interests.
What is more, you will be able to use such contract for years in transferring rights to work effects of different graphic designers.
Just contact me.
Is your company logo a plagiarism
When choosing a name and logo for your company, many are wondering how to check whether there was a plagiarism. When it comes to registering trademarks, you should do the so called legal analysis of the brand.
Assessing the similarity of trademarks is not easy, so you should use the help of a patent attorney.
Such a trademark registrability search under copyright law is much more problematic. I explain everything in detail in the video recording below.
Analysis of brand. What can it really give us?
Recently, one of my clients asked me some interesting questions. What does my legal analysis of brand give them? If I check everything, will they be 100% sure that they will get protection? After all, will the entire registration procedure take place faster? These questions were so noteworthy that I decided to answer them in this article.
Legal analysis of brand – what is it and why do we need it?
In order for a trademark to be effectively registered, it must fulfil certain requirements. For example, a descriptive trademark will not receive protection.
In most cases, the legal analysis of brand consists in checking if there are any collisional trademarks.
Although the opposition procedure is already in force in Poland (the expert will grant protection even if they find collision trademarks), competitors can file an effective opposition.
The legal analysis of brand is known as trademark registrability search.
If you are looking for a specialist who will do such trademark registrability search, go to a patent attorney. It is so important that in order to issue a correct opinion on the chances of trademark registration, both knowledge and experience are necessary.
If you find an identical trademark, the legal analysis of brand will be simple. Things get a bit tricky with similar trademarks. There is no clear border, beyond which it can be said that trademarks are similar to each other enough, that there is a law violation.
Everything is assessment.
And here the patent attorney's experience turns out to be priceless.
After registering several hundred trademarks, I know 'customs' of specific offices. I know which trademarks will definitely not get protection in EUIPO, and which have chances for that in Poland.
This experience allows to formulate specific conclusions and recommendations from the search.
Remember that it is not important if the trademarks being compared are similar in your opinion. What counts is only how the trademark registration office assesses it, or when a dispute arises – in a court.
Will you get 100% certainty that you will register a trademark after the legal analysis of brand?
I say clearly – no.
Even if I did not find any collisional trademark,
I do not tell the client that they will definitely get protection.
Because it can happen that someone made an application for the same trademark literally 2 days earlier.
And unfortunately, authentically I had such situation.
The offices reports such informations with delay.
Thus, answering the first question.
By ordering the legal analysis of brand, you will receive information about your chances of protection. If a patent attorney locates any collisions, he will also tell you how to get around them. Of course, if it is not a hopeless case.
For example, you can:
add another word to the trademark;
more fanciful graphic design, or
cancel the EU trademark application for the national mark.
Without such trademark registrability search, you would make an application of everything on spec.
Is the trademark registration pass faster after such analysis?
Formally not, but …
… can prevent the extension of the proceeding.
If you make a trademark application and someone oppose it, the whole proceeding will be prolonged for many months. If the Patent Office will have doubts as to whether your mark, e.g. is suitable for protection, you will receive written comments from an expert.
It will take several months to explain that.
The legal analysis of brand is like a ship sonar – it locates mines.
If you know where they are, you can avoid them and reach the destination without any problems. If you fall into them, the journey will be delayed, or your application will go down at all.
The trademark market is getting tighter.
It is rare for me that the legal analysis of brand does not indicate any similar trademark.
I have the impression that the negative result gives:
– 1/3 of analyzes covering Poland and
– 1/2 of analyzes covering the European Union.
Of course, this does not mean automatically that nothing can be done. However, I have to make a lot of effort to register such a trademark.
Sometimes it is impossible at all.
It is not so bad when the client is just planning to enter the market with a new trademark. Then, there is possibility of making some changes in the brand. But when such a trademark has been on the market for several years – my hands are tied.
If you are interested in the legal analysis of brand, please contact me by the form on the right. I will answer for sure.
How to legally use other people's trademark?
You often ask me how to legally use other people's trademark. This is shown by the number of comments under the article regarding the BMW case. Today's entry will describe this issue in more detail. I will also try to answer the question that bothers you. Is it possible to put the logo of serviced companies on your website?
What is allowed to the trademark proprietor?
By registering a trademark in a Patent Office, you acquire the right to the exclusive use it in a profitable or professional way. Such a right is granted for 10 years, with the possibility of extending protection for subsequent periods of this type.
The use of the trademark may include, among others:
1. placing it on protected goods;
2. placing such goods on the market (import / export);
3. providing services under this trademark;
4. placing it on company's documents;
5. Using the trademark for advertising purposes.
In case of the trademark infringement, the owner may make a number of claims towards the infringer. It can be said that he has complete control over that who and how someone uses the given trademark.
However, there are situations in which you can legally use someone else's trademark, and the owner loses control over it almost entirely.
Exhaustion of the trademark rights
Note that "absolute power" over the trademark would be detrimental to the free circulation of goods. For example, if you wanted to sell a Snickers bar to someone, you would have to get the trademark proprietor's permission in advance.
Abstraction, isn't it?
Fortunately, such a circumstance has been regulated by the legislature. You can legally use someone else's trademark if the "exhaustion of the right" took place.
And it takes place when:
trademarked goods have been legally placed on the market;
the actual release of the trademarked goods took place;
the goods were introduced by the trademark proprietor (or with his consent).
If I bought a Snickers bar, I can use it freely. For advertising and information purposes, I can legally use other people's trademark. Thus, information about the bar can appear on the website of my store, or in printed advertising materials.
1. The principle of territoriality
Exhaustion of the trademark rights takes place if goods marked with this trademark have been placed on the market in the EEA (European Economic Area).
As you can see in the picture on the right, the EEA included outside the EU (except Croatia) Iceland, Norway and Liechtenstein.
Thus, the launch of the product in any of these countries involves the exhaustion of trademark rights.
And this is a very important issue. Many companies organize their sales only through official dispatchers.
A story from my own experience
I recently helped an entrepreneur who was sued by such a company. The company led sales by official representatives, dictating the price. My client bought their goods in the country (from the EEA) where the price was the lowest and sold them in Poland.
He was accused of an unlawful use of someone else's trademark in advertising and on the website. The charge was absurd because everything was done completely legally. In particular, no one was misled. Fortunately, we managed to defend the client, but it cost him a lot of nerves.
As you can see, you cannot use the trademark to monopolize the market.
2 – The trademark proprietor has to introduce the goods onto the market.
Exhaustion of the trademark rights occurs only if the goods are introduced by the trademark proprietor. In practice, this is usually done by selling a given product.
The transfer of ownership can also be made by an agreement to exchange or donation of the goods. However, the exhaustion of trademark rights does not occur with tenancy or leasing goods.
In particular, theft of goods will not be the exhaustion of trademark rights. As I indicated above, the goods must be placed on the market with the consent of the trademark proprietor.
If we are dealing with a concern, the exhaustion of trademark rights will take place at the moment the goods are placed on the market by any subsidiary. The same can be said about the entrepreneur who introduces the goods under the appropriate license agreement.
3 – The exhaustion of trademark rights applies to a specific individual item of the goods.
When assessing whether the exhaustion of trademark rights took place, one should determine where and by whom the given commodity was introduced. It cannot be said about the exhaustion of trademark rights if the goods have not been placed on the market yet or they had, but outside the EEA.
This is especially important when importing goods from "far abroad".
The manufacturer of Fanta, who sells it, e.g. in Japan, may not be interested in getting it into the European market.
Thus, a person who has purchased this beverage placed on the market outside the EEA area may have problems with legally using someone else's trademark.
The limits of the exhaustion of trademark rights.
As a rule, if the owner introduces a trademarked product on the market, he loses control over it. Sometimes, the trademark proprietor may, however, oppose further distribution of goods. It is a situation when after the introduction of the product to the market, its condition will change or worsen. Alternatively, the trademark is used in a way that threatens its reputation.
I bought all the batch of Snickers, which fell into the sea with the shipping container. Not only that they look tragic, they are probably harmful. Now I want to sell them. The owner of the Snickers trademark may oppose that I use this trademark in advertising.
Violation of the trademark's reputation
This exactly concerned the dispute about the BMW which had been already described on the blog. You cannot use someone else's trademark in a way that will evoke the recipients' false belief that there are economic links between the trademark proprietor and the third party. It is inadmissible that such recipient considers that the third party is connected by special trade bonds with the trademark proprietor (e.g. that it is the official distributor).
However, coming back to the question at the beginning of the article.
What about the logo of foreign companies on your website?
Ask me about valuation
Again, everything depends on the specific situation.
If you, e.g., run an online store with a given product, you are allowed to legally use someone else's trademark, provided that you did not overdo with its display.
However, if these are the companies you have served – I would be very careful. Such an action may threaten their reputation. Of course you can defend yourself, that you put them as an information purpose.
The truth is that you could do it without using figurative marks. So it can be said that you put them on your website to become credible in the eyes of potential customers.
Because if companies such as … trust you, you are certainly reliable.
It is impossible to hide that you are warming yourself with the reputation of well-known brands.
For safety, I would take care for written permission to use these trademarks. In fact, now the trademark proprietors have no power over them.
After all, it may come to the situation that their logo will appear alongside of another one with a dubious reputation. Let it be the logo of an erotic magazine or a Money Laundering company. In such case you are exposing yourself to severe consequences.
Some brands aggressively enforce their rights (Apple, Ferrari).
Remember, just because everyone does that, does not mean that it is safe.
The company name registration – how much does it cost?
The company name registration will involve some costs from you. Such legal protection is obtained through trademark registration in the Patent Office. If you want to send formalities to the representative, ask the patent attorney for help. See the minimal prices for his services. Below are presented official fees valid for 2018.
The company name registration in Poland.
Trademark protection is always limited to a specific territory. The fact that it is about the territory of a specific state and not e.g. provinces or cities. The trademark registration in Poland takes place in the Patent Office in Warsaw.
The procedure lasts about 6 months.
a) Registration:
Trademark fee registration in class 1 – 450 PLN (online registration fee is 400 PLN)
Fee for each subsequent class – 120 PLN.
b) Protection:
10-year protection fee for each class – 400 PLN.
Fee for publishing information about granted protection law – 90 PLN.
TYMBARK trademark has been registered for protection in classes 30 and 32. Official fees that should be paid today are 1,460 PLN (570 PLN for registration, 800 PLN for 10-year protection and 90 PLN for publication).
The company name registration in the European Union.
If your clients are from foreign country you should consider the company name registration for the entire European Union. Formally, the registration is made to EUIPO (European Union Office for Intellectual Property) in Alicante, Spain.
The whole procedure takes about 6 months.
The following fees include registration and 10-year protection.
a) Registration and protection:
EU trademark registration fee in class 1 – 1,000 EUR
Registration fee (online registration) in class 1 – 850 EUR
Fee for 2 class – 50 EUR
Fee for each subsequent indicated class – 150 EUR
The Polish company VIFON has registered that trademark for one of its chinese soups. The trademark received protection in two classes, so the official costs (for online registration) amounted to 900 EUR.
The company name registration for a selected group of countries.
If you have a registered company name as a trademark in Poland or the European Union, you can extend the protection to a selected countries in the world. There are about 100 countries in this procedure, excluding many South American. This procedure can be attractive for producers who export their goods to distant markets.
The application for protection should be submitted to WIPO (Intellectual Property Organisation).
Basic fee for registration and protection for up to three classes:
if the trademark is not presented in colours – 653 CHF *Swiss francs
if the trademark is presented in colours – 903 CHF
Fee for each class above 3 – 100 CHF
Fee for each indicated agreement member's state – 100 CHF
some countries have set their own individual fees
This trademark was registered in Poland in four classes, and later was extended to eight countries (including China). International registration fees amounted to 1,803 CHF (903 CHF basic fee, 100 CHF for 4 class and 800 CHF for indicated countries).
Business name registration with the help of a patent attorney
I can help you with trademark registration in the appropriate Patent Office. Both in Poland and abroad.
As a patent attorney I specialise with brand protection. Normally I work in a family Patent & Trademark Agency. We have a lot of experience.
For 25 years we have registered for our clients over 1000 trademarks.
If you too would like to use my services just write me or call. You can use the form on the right.
Distance is not a problem.
I work completely on-line.
Thanks to that I cooperate not only with polish but also with the companies from all over the world.
Sometimes business name registration can be impossible. If you want, I can help you with all formalities.
Is it better to register the company name or logo?
If you are planning to register the trademark, you are probably wondering whether it is better to register the company name or logo. My clients almost always ask me that question. Unfortunately, there is no simple answer.
This is due to the fact that both the registration of the word trademark (name) and figurative word trademark (logo) has its pros and cons. In other words, each of these protection forms works better in different circumstances. You can never be sure if a competitor want to impersonate our trademark or logo.
For that reason, it is best to protect the brand in both forms. However, it means that you need to make two registrations and pay double official fees. Alternatively, you can independently assess which trademark variation better suits your needs.
Below I have listed the pros and cons.
Word trademark
By trademark registration, the phonetic aspect is protected. It means that it is not matter whether the trademark will be written with capital or small letters. One can say that it is protected that what can be heard in radio advertising.
Advantages of the company name registration:
You get an official statement that your company's name is not a descriptive term. Entrepreneurs often make mistakes by choosing names that they cannot monopolize. For example, if you run a bike shop under the domain bikes.pl, you can not prohibit the competitor to act under the domain bikes.com. Sometimes the descriptiveness of the sign is not obvious. In such cases, the Patent Office's decision prejudices the matter.
Strong legal protection of the brand. If a competitor uses the name that is written differently, but sounds similar to Yours – they will violate the law. It does not matter if they use a different logo. We compare only the phonetic ascpect.
Word trademark registration automatically protects online domain. If a competitor uses the domain containing Your company name, you can take it back from them. You gain advantage that you do not have to preemptively buy over a dozen domains containing your trademark.
You can block Google AdWords ads using your trademark. This is done by a special form, where is sent the trademark registration number.
The word trademark provides protection mainly on the phonetic aspect. However, it may turn out, that the competitor gets closer graphically to your logo but uses for that a different word (example on the picture).
In such circumstances, the company name registration will not help you in the fight against the infringer.
It is more difficult to register the company name than to obtain protection for the company logo. If the Patent Office finds e.g. that your trademark is descriptive – it will refuse you registration. Information about this will be in the registry and everyone will be able to read it, also Your competitors. It may be a signal to them that choosing the same name will not violate the law.
Figuarative trademark
By the figurative trademark registration, the company logo is protected. In other words, the word expressed in fanciful graphics is protected. Whether the competitor with their trademark has violated your rights is assessed as a whole. Both trademarks are compared graphically, phonetically and semantically. Finally, one should answer the question whether the potential consumer seeing a competitor's trademark can be mislead or not.
Advantages of the company logo registration:
The company logo is always easier to register than the name. It results from the fact that if the logo has a descriptive term, then the graphics makes the designation meaningful. Provided that it is not a plain black inscription on a white background.
If the figurative trademark contains a none-descriptive word – the phonetic aspect is also protected.
The figurative word trademark protects only the logo attached to the application. If you have several color options, you should report each one separately.
If the trademark is rebranded after a few years, the old one will not protect the new mark. Moreover, after 5 years of not using the trademark, competitors may expire your protection.
By the company logo registration, sometimes it is not sure if the verbal aspect is also protected. And this can be the defense line of your competitors when you demand from them the change of the name.
What do you gain by the company name and logo registration?
There are rules that ensure a minimum level of protection for your brand.
You can refer to them in the most obvious cases of unfair competition. Experience shows that you will often deal with 'shades of gray'. A competitor may use a similar name but in a different area. Possibly, he will offer similar kinds of goods.
In such cases, regulations that guarantee an increased level of brand protection will be a lifeline. In order to use them, it is necessary to register the company name. Below are presented the most important benefits of such registration.
You prevent the theft of the brand name.
Why would someone want to steal your brand?
Because it is the most valuable asset of your company. Not cars, computers or real estate. Please note that if you have invested in the promotion and the best customer service for years, Your brand inspires trust and attracts customers.
It is said that a satisfied customer recommends you to 10 people, while dissatisfied discourages 100.
I noticed that disputes about the company brand are usually made with a former partner or a key employee when they 'goes away'. I also know the case when a local competitor tried to take over the recognizable brand of the hotel facility.
And it is always done in the same way.
Knowing that a given entrepreneur does not protect their brand in the Patent Office, their competitor makes an application. If such registration is successful, they receive an official confirmation that only they can use that name.
And this is very dangerous situation for you.
A competitor may sue you after requesting the protection of the goods marked with a disputed mark. If the court agrees, you will not be able to use your name until the end of the trial. And this can mean problems with financial liquidity.
In the meantime, it is relatively easy to defend against that. It is enough to be the first to register the company name and logo. After passing the entire procedure, the Patent Office will issue you with a protection certificate. It will include information:
what mark has been registered (name or logo);
what is it determining;
on what territory is it protected;
from what date is the 10-year protection counted, and
that You own the rights.
With a protection certificate, you are able to pacify any attempt to take over your brand. Also, remember that there are companies which business model is based on taking over others brands for blackmail. Trademark trolls in the 90s were a huge problem in the United States.
I recommend you to listen to the interview with an entrepreneur whose partner tried to steal the sports club brand.
It is much easier to fight against offenders.
Protecting the company brand without the registered trademark is more complicated. First of all, you have to prove before the court that you are entitled to these rights. Therefore, you should submit a number of proofs indicating:
what brand do you use;
to indicate what kinds of goods or services;
on what territory, and
from what date.
The effect of these measures may be that you actually prove your rights to the brand, but only to certain goods. What is more, the court may consider that the scope protection covers only your city. Thus, the competitor actions from across Poland were legal because there was no risk of misleading consumers.
See how Your situation will diametrically change when you have a registered trademark. It is easy to prove your rights. It is limited to the submission of the protection certificate. The scope protection covers the whole of Poland and all goods or services indicated in the registration. And they may include what you plan to offer only in a few years.
Thanks to the company name registration, the court will not challenge the rights you are entitled to. The dispute itself will be limited to answering the question whether your competitor's actions have violated your rights or not.
The possibility of placing the ® symbol next to the company logo.
Many people do not know what the R symbol in a circle means. People incorrectly associate it with the information that the product is original or that it is of high quality. In fact, the characteristic R is an abbreviation of the word 'registered' and means that the trademark has been registered in the Patent Office.
Entrepreneurs display this symbol to warn competitors that they benefit from the increased legal protection of their brand.
In practice, this symbol is also positively associated by customers. It works so well that some companies use it illegally, just to increase sales of their goods. Meanwhile, such action is an act of unfair competition which carries a fine.
Anyway, quite recently I found out about the positive effect of the ® symbol.
Being in the store, I had to buy the soy sauce. I found two types of it but I did not associate any brand. However, I noticed that there is the R symbol on one of them. I thought that since the manufacturer takes care of the brand legal protection, they certainly care about the quality of their products. And in fact I checked later that this brand has great reviews on the internet.
The magic symbol R works J
Numerous possibilities to make money thanks to the brand
By the company name registration, you can feel the owner of your brand.
You can make money thanks to the brand in the classic way, that is, by offering goods or services. Nevertheless, an interesting method, is licensing the trademark. If you register the trademark for yourself as a natural person, you can grant a license to use it, e.g. for a LTD… That creates opportunities for tax optimization.
Sometimes, the brand is as strong that some people willingly pay you to use it. This is clearly seen on the example of music bands. Musicians who register the band name later earn by granting a license for the production of clothing, gadgets and toys with their logo.
If you run e.g. a restaurant, you can create a franchise network. In this case, the franchisee will pay you for the opportunity to use Your brand. It is also favourable situation for them because they are sure that they do not violate the law.
You can also act in a truly American style. For years, you will develop your business to sell it to an investor at some point. If you want, you can sell the trademark itself.
The trademark helps in the event of the bankruptcy.
Companies go bankrupt for various reasons.
They are connected by the fact that at some point they are unable to pay their obligations. In this case, the liquidator begins to manage the company's assets. They have to monetize it to satisfy the creditors. They sell real estate, cars and machines. Regardless, the trademark itself may be sold.
The trademark value can be accurately estimated.
When it comes to about high turnover, its price may amount to several hundred thousand or even several million EUR. This can be an interesting alternative for potential buyers. They can either spend money on promotion of a new brand from scratch or buy one that already has an established position on the market.
This is exactly what happened with the ATLANTIC trademark.
As a result of the war in the Ukraine the company fell into financial difficulties. Though, the brand itself was still positively associated by consumers. Finally, the bailiff sold this trademark for almost 250 000 EUR. Therefore, the company's liabilities decreased for this amount. The buyer, thus obtained the right to a well-recognized brand.
There is an interesting situation when a natural person licenses their trademark to a company. If the company has financial problems, the liquidator cannot take over the trademark rights. Formally, the company is not its owner.
Such a tactic is a way to reduce business risk.
A lawyer, who specializes in industrial property law, combating unfair competition and copyright. Thanks to work in Patent Agency he has a contact with the current problems of entrepreneurs. [Read more...]
.Watch out for fraudsters
What does the letter R in the circle mean?
How to check whether a logo is not a plagiarism?
Reputed trademarks. A big one can do much more!
Do I have to own a company to register a trademark?
Madhu on Well-known trademarks. Protection even without a formal registration.
Charles on What does the letter R in the circle mean?
Xiang Zeng on Word or figurative trademark – which one is better?
Substantive patron
Partner of the blog
History of the blog
Strategy, design, marketing & support by web.lex ™
European and polish patent
and trademark Attorneys 8A Architektów Street
85-804 Bydgoszcz, Poland P: +48 (52) 370 81 51
MP: +48 607 416 240 mikolaj@lech.bydgoszcz.pl
www.kancelarialech.pl
Ograniczenie odpowiedzialności
Napisz do mnie Zadzwoń