5 questions to … 5 most common mistakes committed when registering a trade mark. Answers an expert, i.e. patent attorney

  • interview with Monika Kowalczyk, a patent attorney, conducted by Charlotta Lendzion and published on 24 May 2020 at her blog “Kosmetyka i Prawo” (“Cosmetology and Law”).

1. You are a patent attorney. Why did you decide to pursue such career? 

It was already during my law studies when I took interest in intellectual property law and, in particular, trade marks. That is why the title of my Master thesis was “Right to a trade mark as the object of fiduciary transfer” which I presented and was qualified as MA in 2000. Some time ago the profession of patent attorney was not so popular as it is now and I heard of it already during my 5th year of studies. Considering my interests, the choice of such professional path was a kind of natural for me, even more that at that time neither legal advisors nor advocates might handle matters related to applications for registration of a trade mark. Further, intellectual property seemed to me to be a very attractive niche with a considerable potential for future for a novice lawyer.

2, Many owners of newly established companies at the onset of their activity do not think of registering a trade mark. Why, in your opinion, is it worth taking such effort? 

I think that at the onset of their activity many companies do not recognise potential they have and make a presupposition that protection of a trade mark is affordable and necessary only for bigger companies with a long-term existence in business transactions. I often hear statements: “Who would want to counterfeit my goods?” or “ I invest in sales for the time being”. Unfortunately, some time after it can be that competition was faster and registered a trade mark for its benefit in the promotion of which we invested. What is more, we can receive e-mails from confused clients who are convinced that, e.g. the infringing party is our business partner. Certainly, we may bring such cause before the Patent Office or a court but costs of defence for sure will be quite high and a duped client would have to wait for a favourable resolution which is not that at hand. Operating in such legal uncertainty for sure is not good for development of any company.

3. In your opinion, what are 5 mistakes most often committed by persons wishing to register their logo or combined mark for the first time?

The most simple mistake is applying for registration of a designation which we have not verified earlier in terms of infringement of previously existing rights of other persons. Due to it, we expose ourselves to financial losses and unnecessary disputes. As the second issue worth mentioning I see an erroneous belief that if we register a specific name or a logo, we will hold a monopoly on all goods or services with regard to which such name or mark will be used. It should be noticed that the trade mark is protected only with respect to the given goods and/or services specified in the register. Renowned and commonly known trade marks are exceptions; those trade marks are protected not in connection with the specialisation principle, i.e. with respect to any goods and services. Another mistake of applicants are attempts to register descriptive designations or of general information which are in the public domain and for that reason cannot be appropriated by one entrepreneur. Another misunderstanding or, rather to say, an attempt of abuse is a conscious application for registration of designations similar to trade marks already known to a great number of recipients, which enjoy high reputation and recognition on the market. Some entrepreneurs think that if they, i.e. shift or change one or two letters in a trade mark, they will obtain registration for such designation seamlessly and take advantage of reputation of the original trade mark at the same time. The fifth mistake is recklessness when placing an order for logotypes with a graphic designer or advertisement agency. Many entrepreneurs do not secure their interests to a necessary extent and do not care for signing an agreement related to transfer of copyright to a piece of work which is a logo or a combined mark. The same is also true about other types of trade marks, including word marks.

4. Why is it worth engaging a professional when applying for registration?

For sure, it saves a lot of time and, contrary to a common belief, excessive costs. First of all, a professional will check whether a specific designation has a distinguishing feature for the proposed goods and/or services, i.e. whether it can be registered as a trade mark. Further, they will advise what strategy of protection to adopt, on what territory and with what office or another relevant institution a trade mark should be registered and will also help preparing a list of goods and/or services in accordance with the Nice Classification. Once our trade mark is granted protection, a patent attorney will observe applicable deadlines for making regular fees and also help at extension of such protection. If we co-operate with a patent attorney on a regular basis, we are also able to react quickly on potential attempts to infringe our trade mark. A patent attorney will not only represent us at the Patent Office but also at court in potential disputes.

5. After the registration, is it necessary to monitor the market with respect to a potential infringement, or what actions should be undertaken? 

Yes. You should monitor the market on your own (or with the help of a specialised patent law firm) to know whether  a competing entity does not attempt to register our trade mark on its own behalf as well as whether they have not applied for registration of a trade mark similar to the one we have promoted. In 2016 in Poland the so-called objection system was introduced which means that the Patent Office does not examine ex officio whether a new trade mark is not identical or similar to an previously registered trade mark or trade marks. The authorised entity is somewhat obliged to monitor new applications and file a reasonable objection within the deadline specified. Nowadays, many patent law firms offer services of monitoring new trade marks in terms of infringing rights of their clients.