DESIGNING YOUR BRAND & TRADEMARK REGISTRATION

Here is a summary - the most essential information in a nutshell. Individual points are discussed in more detail in other articles on this blog — feel free to check them out; they may be helpful.

The summary and the entire article are intended to support you in acquiring knowledge and the necessary orientation about trademarks to facilitate optimal business decisions. The article concerns Polish trademarks. Rules for EU trademarks are pretty similar. Possibly, those rules may also apply to trademarks from other European jurisdictions. However, if you need legal advice, you should contact a legal advisor, attorney or patent attorney - the summary and article operate at a certain level of generality. Please remember that seeking individual legal assistance will always be a more secure solution for clarifying legal issues.

I hope this basic information will help you create an excellent brand for your business, which will be registered as a trademark and become a valuable intellectual property asset.

A sign (brand) has distinctiveness, allowing it to be registered as a trademark if:

1. It is abstract:

a. generally without specific meaning - e.g. "Reebok", "BMW", "Pepsi", or  

b. without a specific meaning concerning the products or services for which it is to be used,

e.g. "Vistula" concerning clothes or "Apple" with computers or other consumer electronics devices,

(the meaning of words in different languages is taken into account, provided that, on average, customers in a given market know a given language to a certain degree, enabling customers to understand the meaning of these foreign language signs),

2. It is allusive

(always indirectly, more or less associated with the products and services for which it is intended)

e.g. "Jaguar" for cars or "Medicine" for clothes,

3. consists of more verbal or graphic elements than those describing the product

providing customers with information about it, such as: 

a. indication of the product type ("women's clothes"),

b. place of origin of the product ("made in Poland"),

c. quality ("first quality"),

d. quantity ("two-piece set"),

e. value (price; "for PLN 200"),

f. purpose ("rainproof", "for her", "she"),

g. method of production ("hand-woven", "material from organic farming"),

h. composition ("100% silk"), 

i. function ("evening")

j. or suitability ("mountain"),

descriptive word elements with sufficiently distinctive graphics: “Polish Fashion”; The perfect tailor”; “the plus size fashion”

4. registration of the sign as a trademark complies with the public interest:

a. if the sign or its element would refer to the symbols of Poland, the European Union or an international organization such as the International Olympic Committee, or signs used by public administration, the entrepreneur is obliged to make sure that the commercial use of such an element is legally possible; by registration, the entrepreneur will be required to demonstrate that he has the appropriate consent from the competent authority to use such symbols in his trademark commercially; it is, therefore, best to avoid the use of this type of symbols or consult such a need with a legal advisor, attorney or patent attorney who provides legal assistance in intellectual property matters),

b. if the mark contains the name of a previously registered plant variety or closely related species, apart from the element related to it, it includes enough other dominant elements so that the registration of the mark does not infringe the earlier right to the plant variety,

(registered plant varieties can be checked here: https://www.gov.pl/web/piorin/wykaz-odmian; https://food.ec.europa.eu/plants/plant-reproductive-material/plant-variety-catalogues-databases-information-systems_en)

c. complies with the regulations on geographical indications and reliably informs customers about the place of origin of products

(geographical indications are protected names of food or alcoholic beverages whose production is associated with a specific place where there are particular conditions that have a decisive impact on the properties of the product, such as humidity, mineral composition and soil quality, sunlight, level and frequency of precipitation in during the year;

registered geographical indications include "Bordeaux", feta cheese, Parmesan cheese (Parmigiano Reggiano), Polish oscypek cheese, vodka, croissants of St. Martin's Day, and grójeckie apples; the data base is here: https://tmdn.org/ giview/;

in the case of alcoholic products, the trademark may contain only geographical elements that are consistent with the actual origin of the product; in the case of marks with homonymous localities - i.e. with names that sound the same as other localities in a completely different location, the trademark may be registered, as long as customers do not associate the name of the town contained in the sign with another one, under the same name, famous for the given products; protection may be granted for wine and beer, provided that the Patent Office will request the person who filed the application later to make appropriate changes to the mark to distinguish it from the earlier mark).

The relevant office will consider these issues before deciding whether to register or refuse to register the mark.

On a more general level, granting the entrepreneur exclusive rights to use the mark in trade will be in line with the interests of other trade participants, i.e. in line with:

1. vital, non-commercial interests of customers, that is, the sign's content will evoke associations at least for an average customer: 

a. truthful - without the risk of misleading the customer as to the properties of the product indicated in point 3 above, such as in particular quality or geographical origin,

b. respecting the client's feelings about national, ethnic, religious and sexual identity, worldview, and health condition;

c. consistent with public order and good customs, so as a rule, the sign will evoke associations other than vulgar or obscene; 

2. the interests of other entrepreneurs who:

a. have not previously registered:

• the same mark as the mark applied for or

• a similar mark for the same or similar goods

  (however, if they registered a similar one, the later mark could be registered anyway, provided that its use does not mislead the recipients/clients; the database of registered marks is available here: https://www.tmdn.org/tmview/#/tmview; to check any previous registrations of similar marks, it is worth selecting the "fuzzy search" option or using the image search option - JPG, PNG format GIF, TIFF – after clicking on the camera icon in the search bar and loading the file with the sign design)

  b. have previously registered a reputable mark

• the mark submitted for registration is not similar to the previously registered reputable mark (widely recognizable, such as Nike or Addidas), and

• if it was identical,

  • additionally, using it would not bring any undue advantage to its owner caused by associations with a renowned mark or

  • would not be harmful to the distinctive character or

  • the reputation of the earlier mark - it is best to seek legal assistance in case of doubt;

the mark above was found to be similar to the renowned Puma mark, and its registration was refused.

c. by established and fair commercial practices and good customs, other entrepreneurs may freely use descriptive elements contained in the trademark about the products and services they trade, identical to those for which the mark was filed, without violating the right to the registered mark.

I.e., the mark applied for registration is more original than a set of elements describing the products and services for which it is intended.

These elements remain in the public domain, so other entrepreneurs can use them to compete in the market for customers' attention, advertise products and services of the same type, or inform about their properties.

3. the interests of other parties:

a. the interest of the author of the graphic design of the sign,

if the sign is so original that it meets the criteria of a so-called “work” - it is an individual manifestation of creative activity;

as a rule, an agreement transferring copyrights should be concluded with the author or holder of the copyright (usually the author’s employer or other employing entity),

b. the interest of the authors of graphics of fictional characters (e.g. comics, included in book illustrations, photos, films or computer games) or other holders of personal or proprietary copyrights to elements of the registered mark;

In the case of using such an element covered by copyright protection, the consent of the rights holder must be obtained in advance to use the subject of copyright in the sign,

c. the interest of the person whose personal rights, such as name and surname or appearance, are to be used as a component of the mark - the consent of such a person is also required;

(an example may be a trademark with the image of a famous person, like the KFC trademark with the physical appearance of Harland David Sanders’s face or fashion houses’ trademarks containing the names of their founders, such as "Versace" or "Armani";

including the name and surname of the business owner in the trademark may allow for greater control over the business when obtaining external financing for its development, especially if the trademark gains significant recognition;

d. the interest of a person against whom filing a trademark would be an act of bad faith,

i.e., for example, such a situation occurs if:

• someone had an Internet domain with a word element

• this someone would use this word element as a trademark without registering it and

• they did not pay for the extension of the domain registration on time and

• as a result, the bad faith trade mark applicant would register this word element on their behalf as a trademark to take over their clientele or to register the domain for himself and later sell it to the person who was using it previously ("trolling").

The Office will consider issues mentioned above in sections 2-3 if an appropriate motion from the interested third parties is submitted to the Office pointing out that the mark's registration or the right already granted infringes their earlier rights.

You can start using the ® mark next to your trademark once the relevant office notifies you of the decision to register it. This is not permitted before the decision is issued.

With a solid grasp of trademark registration requirements, you are in a strong position to shape your future brand. I trust this process will be enjoyable and the subsequent registration will proceed smoothly. If you have any questions or concerns, feel free to contact me for support in ensuring the legal protection of your brand.