The right to protect a trademark - the concept and scope of application

Considering what is a trademark protection right should start with defining the trademark itself and determining why it is so important for entrepreneurs. A trademark is a concept that defines art. 120 of the Act of June 30, 2000 Industrial Property Law.

Art. 120. 1. A trademark can be any sign that can be represented graphically, if such a sign is capable of distinguishing the goods of one enterprise from the goods of another enterprise. 2. A trademark within the meaning of para. 1 may be, in particular, a word, a drawing, an ornament, a color composition, a spatial form, including the form of a product or packaging, as well as a melody or other sound signal. 3. Whenever the Act mentions: 1) trademarks - it also means service marks (...).

According to the statutory definition, a trademark is primarily used to distinguish the company's products from other, similar or from the same industry. This makes it extremely valuable for the company - thanks to it, goods or services are unique and directly identified, which additionally contributes to building the brand's reputation and customer loyalty to it. It is no wonder then that entrepreneurs do not want anyone but themselves to use their trademarks. Thanks to the existence of such a measure as a trademark right, they can protect their interests.

Trademark protection law - definition and features

There is no statutory definition of a trademark protection right, but we can conclude from the general provisions that it is a right to use a trademark exclusively for professional or profit-making purposes.It has a temporary and territorial character, which means that it protects a trademark only for a specified period (10 years in Poland) and only in a designated area.

As indicated by the Patent Office of the Republic of Poland, the right to protect a trademark is implemented primarily in the following ways:

• placing it on goods or packaging, as well as offering and marketing these articles, as well as importing, exporting and storing them for the above-mentioned purposes;

• placing it on documents necessary for the marketing of goods or on documents related to the provision of services;

• use of the trademark for advertising and promotional purposes.

The trademark protection right also covers:

• the use of a symbol that differs from the trademark to which the right of protection has been granted, with elements which do not alter its distinctive character;

• using the trademark only for export purposes, and not using it in the country (e.g. if the product appears abroad as a specific brand, other than in the country of the manufacturer and marked with a trademark protected by protection law);

• use of a trademark by a third party with the consent of the proprietor;

• use of a trademark by a person authorized to use a collective mark or a collective guarantee mark.

In order to understand the last point, it is crucial to clarify the concepts of individual trademark, collective trademark, collective guarantee mark and collective trademark protection right.

Important! Individual trademark - a trademark filed by a natural person, legal person, government administration body or a state organizational unit without legal personality, acting on behalf of the State Treasury. Collective trademark - a trademark filed by an organization with legal personality established to represent the interests of entrepreneurs. This organization may use the logo for purposes related to the implementation of the objectives of the association in accordance with the provisions of a specially created regulations. A collective trademark is used in the course of trade by both this organization and its affiliated entities. Collective guarantee trademark - a trademark protected by an organization with legal personality. Often, such an organization does not use the mark, but allows entrepreneurs who comply with the rules of the mark to use it. The regulations are created by the organization itself, and it also has the right to control entrepreneurs in terms of their correct use.

Importantly, the Act provides for the freedom to transform a trademark into a collective trademark or collective guarantee trademark. The condition is to submit an appropriate application to the Patent Office of the Republic of Poland and pay the appropriate fee - PLN 500. It is worth remembering that when a mark is transformed, the scope of its legal protection also changes. When it comes to an individual trade mark, the registrant is sure that only he is legally entitled to use the mark and to freely dispose of it. On the other hand, an organization that grants entrepreneurs its trademark has a completely different approach to this issue - it relinquishes some of its rights to other entities, which greatly reduces its profits from trademark ownership.

Trade mark protection may have a different territorial scope. It is the owner who decides whether he wants to protect the mark at the level of:

• national - the trademark is then filed with the national patent office (in the case of Poland, it is the Patent Office of the Republic of Poland),

• regional - in this case, the place of application for a mark depends on the structure in which it is to be protected (in Poland, trademarks are most often protected on a Community basis - the application is then filed at the Office for Harmonization in the Internal Market with its seat in Alicante, Spain),

• international - such a wide scope of trademark protection is usually chosen by large enterprises that conduct foreign trade on a large scale (in order to protect the trademark at this level, it is reported to the Office of the World Intellectual Property Organization in Geneva, Switzerland).
   

Important! Entrepreneurs who want to protect their trademark at the international level must prove that they have used all protection measures on the territory of their country, region or organization within which they operate.

When registering a trademark, the entrepreneur should also indicate the scope of activity in which it will be used. Thanks to this, it does not close the way for those who would like to register a similar mark, but used in a different industry. On the other hand, they can be sure that in the field they deal with, they will have the only legal right to protect a trademark.

Trademark protection in practice

The entrepreneur has a trademark protection right. What does this mean for him? As already mentioned in the above paragraph, it is primarily a protection against unlawful use of the mark, i.e. impersonating the brand created by the entrepreneur. Registering a trademark gives the entrepreneur the opportunity to claim his rights - if he has suffered damage as a result of the use of a registered trademark by another entity, he can claim damages in court, give unjustified benefits to the other party, and make preventive claims. Preventive claims are demands to stop illegal actions, i.e. in this case infringing the rights of the trademark owner. This may be, for example, the withdrawal from the market of a product distributed under a trade mark registered by the trader, or even destruction of the batch marked with it. In addition, in court, the aggrieved party may demand an apology (for example in the media) or the publication of the ruling in the press or on the Internet. The trademark owner may assert his rights not only under the industrial property law or the Act on Combating Unfair Competition, but also (in separate proceedings) under the provisions of the Civil Code. Importantly, the above-mentioned claims may cumulate.

Example 1.

The proprietor of the X trade mark, company A, found that company B was selling products that were extremely similar, but cheaper and of lower quality than A's products, by marking them with the X trademark. It therefore requested X, compensation for the harm suffered (customers were misled and not only were able to buy B's products, but could also lose confidence in A by finding that the products were of inferior quality), and called for the recall of all products marked with the mark X. Company A, fearing for the reputation it had built up over the years, also demanded a public explanation of the situation and a public apology for Company B, published for two weeks in a popular daily.

Awareness of the severity of penalties, as well as the multitude of legal regulations regarding the issue of unlawful use of a trademark, certainly affect the safety of entrepreneurs who have registered a trademark.

Although it is definitely beneficial for the entrepreneur, trademark protection may expire for certain reasons. What should the trademark owner do to prevent this from happening? First of all, use the sign. Many entrepreneurs register a trademark in several categories and do not use it in any way. Importantly, the mark should be used in a real way, i.e. one that allows to indicate a real relationship between the mark and a good or service. If the owner does not start using the mark within 5 years of registering the mark, the protection will expire. It is also important to pay for applications for extension of protection - if, 10 years after the registration of the trademark, the entrepreneur decides that he would like to continue using it, he should submit a letter with an application for extension of protection to the appropriate institution. An appropriate fee must be paid, otherwise the application will not be considered. The entrepreneur should also constantly check whether the scope of his activity coincides with the area of ​​legal protection of the trademark he uses.

Example 2.

Publishing House D edited and published volumes of contemporary poetry. As the volumes were highly sought after and extremely popular with the audience, the publishing house expanded its activity to selling mugs with quotes from more popular poems. Although the mugs were sold under the D sign, the publishing house did not extend the legal protection to this type of activity. Company F registered the trademark D in the field of making and selling mugs, then started this type of activity under the trademark D and demanded compensation from the publisher and the release of the profits.