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Trademark infringement is not a rare situation. Most of these cases result from entrepreneurs ignorance. Who one invent the “original name” and promote it without deeper reflection. The fact that the sign is protected by Patent Office a person finds out later with a warning letter from the law firm. If You have such situation, then below you will find some information about what may threaten you.

In order for no one to accuse you of trademark infringement, it is worth carrying out the so-called “registrability research”. I wrote more about this in one my previous post. What is the research about? Before you choose a name, you check whether someone has not already registered it in the Patent Office. That can save you a lot of trouble in the future.trademark infringement

For the trademark infringement the owner can make a:

1 – Claim of default

This claim is defensive in nature. It consists in prohibiting the continued use of someone else’s trademark in violation of the law. In court cases, this is the most frequently raised claim for trademark infringement. And it happens for several reasons.

First of all, it is the easiest to obtain. It is not required to establish fault. It is enough to indicate the probable risk of misleading consumers.

Secondly, it is not required to determine the damage amount. And it means lower court fees than in the case of pecuniary claims.

Thirdly, the positive process outcome determines the issue of further legal steps. If the court finds that the infringement has occurred, you can file a suit for financial claims.

2 – Claim for damages

It can be based on general principles of civil law. Another option is to demand payment of an appropriate remuneration or payment of a sum corresponding to the license fee.

However, any amounts requested should be justified in some way. If someone in the pre-trial letter expects you to pay damages in amount of, eg. 15,000 EUR, then in a possible dispute, they will have to prove why exactly this sum.

If the court decides that the amount requested is excessive – it will lower it.

Proving the amount of damage is often very difficult.

The more that we are talking here about intellectual property or intangible goods. How to credibly assess reputation damage?

Compensation for trademark infringement is easiest obtained by citing the license fee. I wrote the easiest because the courts willingly approve such argumentation. However, it has to be justified. If the owner of protected trademark grants a license for its use (eg. in the form of franchise), they are in a very good position.

Example:

Trademark owner for years has been licensing in amount to 1,000 EUR / month.
Trademark infringement in your case has been going on for 2 years.
There is a chance that the court will agree to compensation in amount to 24,000 EUR.

It is the biggest threat to your interests. You develop your business without worries and suddenly get a warning letter with demands amounted to several dozen thousands EUR. It is also very often the moment when entrepreneurs find out that “names” can be protected in the Patent Office. For many, it is a very expensive lesson.

3 – Claim for unjustified benefits

As in the claim for damages, here are also difficulties in determining the amount of the benefit. Of course, each trademark infringement is different and requires an individual approach. However, it is not easy to prove that a given entity obtained the indicated benefits because it has a trademark similar to someone else’s. It is the reason why unpaid license fee is chosen more willingly.

4 – Preventive claims for trademark infringement

The owner of trademark protective right has for disposal a number of preventive claims. For example, they may demand the cessation of activities that can violate the law. Also at his request, the court may adjudicate on unlawfully made or marked products and materials that were used to make or mark them. Thus, the court may decide to withdraw from the market the goods which break trademark law, as well as to destroy them.

Claims can accumulate!

If you have been accused of trademark infringement, I have bad news. All claims mentioned above can accumulate. From the very beginning, these legal steps are to lead to restoration of the facts from before the infringement. Therefore, it is about achieving the hypothetical state of unimpeded exercise of the law. Under certain circumstances, it may turn out that the entire range of claims must be used to achieve the goal. There can be also additional overlaps with the law on combating unfair competition.

As you can see, the Act on Industrial Property Law provides wide range of legal tools to protect your brand.

Unfortunately, some entrepreneurs learn it from their own autopsy.

In my opinion, legal awareness of copyright is not so bad. However, if we are talking about industrial property, then the situation is not optimistic. It is worth having at least basic knowledge of this matter, because in extreme cases, trademark infringement may be a threat even for the company existence!

I also encourage you to watch this video:

Fot.: albyantoniazzi / CC BY-NC-ND

Do you remember my article relating to trademark signs: „Word or figurative trademark – which one is better?”? I indicated in it that the answer to this question depends on your preferences. Nevertheless, the more pros I see in protecting the name of the company. Today I am developing this idea and I will describe in details why it is better to register a word trademark.

It is not so easy to register a word trademark.

Honestly speaking, the registration of the word mark (name) and figurative (logo) has its pros and cons.

It’s like with companies. There is no one that would suit your needs. Selecting one of the forms, you agree to the inconvenience on some level (eg. The responsibility of its assets by shareholders).

It turns out that it is not so easy to register a word trademark. Moreover, the practice of the offices of the last months and years shows that it becomes increasingly difficult. Entrepreneurs (unfortunately) are eager to choose descriptive names, that is, which clearly indicate what they serve for. You can find many examples.

What do you think is sold in a store called:

  • e-smartphone;
  • mysmells, or
  • porcelain24.

If you thought about:

  • telephones;
  • perfume, or
  • porcelain

… it’s bingo.

Such names can not be registered in word form at the Patent Office.

Also, keep in mind that registration of the word trademark signs will not protect your logo. The legal monopoly will cover only the phonetic plane. Theoretically, a competitor can dress another word in your graphic design. And the word mark will not help you here.

Of course that does not mean that nothing can be done.

However, it will be more difficult.

trademark signs

Why is it better to register a word trademark?

In addition to the above disadvantages, the word trademark has many advantages:

1. There is no doubt that you were granted the protection for the name itself, not the graphics.

So that your trademark is not descriptive. The competitor can not defend himself against using another logo. It will not escape the fact that, for example, in the radio advertisement the trademark signs will be indistinguishable.

2. Strong domain protection.

You do not have to buy all the possible domains with your company name. The word trademark signs guarantees that any person who would offer under the domain similar goods or services will violate the law. This protection is strong because there is no doubt that you will only protect the name.

3. The word trademark sign is resistant to rebranding.

Although we associate fashion mainly with clothing, it also applies to corporate logos. See how the APPLE logo has changed over the years. If you have registered a word trademark graphic only, you will need to make a new application in each case. If you do not do this, then the protection right to the old trademark signs can be invalidated by your competition.

Note that for APPLE, though the logo has changed, the name remains the same.

Once registered a word trademark sign it will serve you for decades.

trademark signs4. It is easier to prove the use of the word trademark signs.

You have a statutory obligation to use the trademark for the last 5 years.

If you do not use the trademark, your competitor may request for invalidation of your trademark.

I have had some of these disputes and believe me, sometimes gathering evidence for use is a mockery. But there are no such problems with the word trademark signs. Each graphic form in this case is suitable. In the end there is the same word in each.

5. With a registered word mark, it is easier to prove that a competitor has violated your right.

Of course, each case is different and needs to be evaluated individually. However, often the protection of name itself helps to separate the phonetic plane of trademarks from the graphic. No one will blame that your trademark is descriptive. In that case, you would not be given protection in the word form.

When attacking a violator, I can dwell on widely, as in radio advertising, both trademarks will be indistinguishable.

6. Registration of the word trademark signs can help you to avoid copyright disputes.

It’s a question of who is entitled to copyright to the company logo.

Please tell me if you have signed a contract with a graphic designer to transfer the copyright to such a logo? I am not talking about a contract for a work, or paying an invoice for an image service. I mean, a contract that clearly indicates what logos are being transferred and what fields of exploitation.

There is no problems with the word trademark signs. In 99% of cases, a single word will not be considered a copyrighted work. By the same token, no one can claim the rights to it, by the very fact of the invention. In case of a dispute about the company logo it may happen that you will have to change it. However, if you decide to register a word trademark – your business name will remain unchanged.

7. Having word trademark protection is good for Google AdWords advertisements.

trademark signsThe point is, you can make objection, that within this advertisements your competitions can not use your trademark signs. Technically, within a special form the scanned documents are send, proving that you have the right to sign.

But importantly, you can not protect yourself against the competition being used by your trademark keyword. Only exceptionally, such behavior of competition will violate the law.

Why is it better to register a word trademark?

  1.  You are certain that the term you use is not descriptive.
  2.  You get strong legal protection for your corporate domain.
  3.  The word mark is resistant to rebranding of your logo.
  4.  You can more easily prove the use of your trademark.
  5.  It is easier to show that a competitor has violated your right.
  6.  You minimize the risk of serious copyright disputes.
  7.  It allows you to restrict the use of your trademark in Google AdWords advertisements.

Today I describe an interesting case study. It’s about the case when the generic name has been used in a figurative trade mark. It’s  owner showed that he had exclusive right to the included words: artistic tea. Well, whether or not is this in your opinion the generic name?

generic name

Generic name – definition

Generic name is a designation that, although was initially fancy, and in consequence of the huge popularity has come to be associated by the consumers only with a certain type of product or service.

Such process is formally called degeneration of the trade mark. As a result of market success, such trade marks as aspirin, heroin, and trampoline have become the generic names.

Importantly, the generic name can not be registered as a word trade mark. Although as you read on, such “mistakes” happen.

Generic name is not suitable for distinguishing goods or services. Here’s an example. Talking about aspirin, you are thinking about the type of medicine, and not a type of product of a particular producer.

What is more.

It may even lead to the degeneration of once registered trade mark.

Is artistic tea the generic name?

Ref. Act I ACa 56/14

In the context of what I wrote above, I wanted to describe the interesting case.

The circumstances of the dispute.

In 2012, the tea-maker in the form of spheres, which took the form of a developed flower after the brewing, used the term “artistic tea” and sued another company, also using that term.

The Complainer referred to its earlier right resulting from the registration of the figurative EU trademark “artistic tea”:

generic nameProceedings before the District Court.

The Complainer  demanded inter alia:

– prohibition the Defendant of the use of the disputed trade mark on teas and their packagings,

– withdrawal from the market produced by Defendant teas marked by the disputed trade mark and destroying all packagings.

According to the Complainer , the use by the Defendant of the term “artistic tea” for tea is a violation of the law for registration of his trade mark. And as he raised it is a reputable trademark.

In response to the lawsuit, the Defendant demanded:

– cancellation of the Complainer’s trademark for certain goods (tea);

– prohibition the Complainer of using of his trademark;

– dismissal of the claim in its entirety as completely unfounded.

According to the Defendant, the Complainer’s mark consists of a designation used to mark a specific type of tea. The term “artistic tea” in international trade is considered as generic name.

So it only serves as an information function.

In the opinion of the Defendant, registration by the Complainer of the generic name was made as a result of bad faith, with full awareness of the universality of the above name and its descriptive character. This was aimed at eliminating of the Complainer’s competitors.

Judgment:

The court dismissed both the Complainer’s and the Defendant’s claim.

Grounds:

The term “artistic tea” is generic name, as evidenced by its long-standing practice of using it internationally in international trade.

– Therefore, the trademark of the Complainer is a weak sign. However, it can not be invalidated because, apart from the generic name, the sign also consists of a fancy, distinctive graphic design. Assessed as a whole – a trade mark has distinctive character and it’s protection can be maintained.

– The Defendant does not infringe the rights to the Complainer’s trade mark because he has proved that he began to use the sign at a similar time, but completely independently of the Complainer. These designations are also different in the graphic layer and do not cause associations.

– Therefore the Complainer’s trade mark consists of a generic name, examination of the reputation of this mark would be unfounded.

Appellate Procedure.

The Complainer’s appealed, raising the following:

– Incorrect acceptance by the Court that the term “artistic tea” is generic name and is commonly associated with a particular type of tea.

The appeal was rejected, indicating, inter alia, that:

– The District Court correctly came to the conclusion that the granting the Complainer of the exclusive right for the word sign, used in the course of trade to describe the characteristics of the goods, would lead to disturbances in the course of trade. This would result in the monopolization by one entrepreneur of a sign belonging to the public domain.

My comment.

This dispute illustrates the problems I encounter in my work.

Customers often ask me if it is better to protect the name or company logo. Here we have an example of what problems can arise when registering a figurative trademark. We have a registered trademark, but we are not sure what exactly we protect – name or logo.

Those doubts only disperse the court verdict. Alternatively, the decision of the relevant Office, if anyone applies for the invalidity of the mark.

This dispute also shows that generic name is not easy to locate. I am an example of a person who has an average knowledge of tea. Actually I only distinguish them by color (white, green, red …).

Consequently, the term “artistic tea” does not tell me anything specific. I guess that “tea lover” wasn’t also an expert from the Polish Patent Office, who registered the word trade mark ARTISTIC TEAS for the Complainer. It’s little known fact.

Fot. 1 – TonTip  / CC BY
Fot. 2 – Jack Fussell / CC BY-NC-ND

25 Feb

Reputed trademarks. A big one can do much more!

I’m sure that you will associate such reputed trademarks as Apple, Coca Cola and BMW. They are brands usually worth of billions of dollars. And it is the result of high sales, intense advertising or good consumer opinion. There is something special about them. Reputed trademarks benefit from increased legal protection. Everything is explained in the article below.

Reputed trademarks. Why a big one can do much more?

Reputed trademarks have stronger protection than ordinary ones.

As a matter of fact, each newly registered trademark is a regular trademark.

The reputation of a reputable trademark is obtained only after its use. And it’s only in special cases.

When you apply for a trademark protection, you must indicate what you want to protect. If you run a restaurant, you indicate restaurant services. And within these services you get a legal monopoly on that sign.

Meanwhile:

Reputed trademarks are also protected in the field of non-similar goods or services.

Example:

I want to introduce on the market a new car model.

If I name it Coca Cola, it will be a lot easier for me to find buyers. Formally, the Coca Cola trademark does not cover cars After all, relying on the reputation of this brand, Coca Cola would easily forbid me to sell such goods.

Below is a rough example of infringements of reputed trademarks:

reputed trademarksE9 – Sun Care.
Zero associations with Internet Explorer

reputed trademarksFish SNICKERS in tomato sauce.

reputed trademarkWD40 – only for real men.

And finally, something from our Polish backyard:

reputed trademarksHow are reputed trademarks born?

The key question is, of course: when does the trademark acquire reputation?

Where is the limit beyond which the ordinary trademark becomes a reputed trademark?

The rules do not define this concept.

You have to use the judgment of the European and Polish courts. They indicated a number of requirements that must be fulfilled in order to demonstrate the reputation of the mark.

1 – A reputed trademark must be registered.

To think of enhanced trademark protection at all, it must be registered in the appropriate patent office. So if an entrepreneur says his trademark is reputable, because, for example, it is recognizable on the market and actually he does not protect it, then no reinforced protection can be said.

Such mark may benefit from protection as a well-known trademark.

2 – A reputed trademark must be known to a large number of customers.

EU case law is dominated by quantitative criteria. However, there are three things to remember about this occasion.

  • The recognition of the mark is examined among its recipients, that is, buyers of certain goods or services. This is important because in some cases it definitely narrows the number of people who need to associate the trademark.

If we talk about the brand of milk, then the number of potential consumers is huge. However, if the mark is used to designate agricultural machinery, the target audience is limited to farmers.

  • The mark should be recognizable by the recipients, but in a substantial territory of the country. High reputation of the given brand in Warsaw and its surroundings is not enough to recognize the reputation.
  • This significant knowledge of the mark among the recipients is not precisely defined. Certainly it’s degree doesn’t  need not be high (more than 50%).

Curiosity:

Based on only the quantitative criterion, the AMBER GOLD mark could be considered a reputed trademark. Formally, it is a registered EU trademark. AMBER GOLD is a polish financial pyramid . A few years ago it was a hot topic at the polish media because people lost the life savings because of AMBER GOLD.

reputed trademarksEUTM-010928513

3 – Evaluation of the relevant circumstances of the case.

European case law points out that, when analyzing if a trademark is reputed, it is also important to take into account such criteria as:

– market share
– amount of outlay for promotion
– intensity, geographical range of use of the mark
– period of use
– quality of the goods marked

4 – Evaluation of qualitative characteristics.

In Polish case law, in addition to the quantitative criterion, reputed trademarks must have certain qualities. It is about:

-prestige;
– the power of attraction;
– advertising value, and
– convince consumers of the great features of the goods bearing this mark.

Under these circumstances, AMBER GOLD would not be considered a reputed trademark.

The requirement to fulfill specific qualities raises many discussions. Note that some trademarks by definition is then excluded from the reputation. It is hard to talk about the prestige or the attraction of signs intended to mark the hemorrhoid cream or funeral services.

reputed trademarks

What do reputed trademarks protect from?

1 – Protection against parasitism.

This is a situation where the entrepreneur uses a sign that the consumer associates with a reputed trademark. Such positive associations are therefore conveyed. And this definitely makes it easy to sell.

So there are undue benefits.

These associations with reputed trademark, make the subject of the sign does not have to incur expenditure on advertising.

Curiosity:

Association with a reputed trademark is not always easy to demonstrate. In Poland is still registered such a trademark intended to mark … windows and doors:

reputed trademarksR-107547

Even attempted to invalidate it, but ineffectively 🙂

2 – Protection against trademark dilution.

This is a situation where, as a result of the presence on the market of similar signs, the earlier mark does not associate immediately with the goods for which it was registered.

Frank Schechter, New York lawyer said that:

If we allow Rolls-Royce restaurants, Rolls-Royce cafes, Rolls-Royce trousers and Rolls-Royce sweets, than in 10 years time there will no longer be Rolls Royce brand.

In this particular example, this reputable car brand would be downgraded to the ordinary trademark.

3 – Protection against reputation degradation.

It’s about a situation where the goods of a trademark to be marked by a third person have a characteristic which may have a negative effect on the reputation of a reputed trademark.

Example:

We have all known perfume brand Chanel.

On the market however appears, the brand name Chanel to designate… poison rats.

The persistence of such goods on the market, will have a negative impact on the attractiveness of this reputed trademark.

Summarizing:

Reputed trademarks may be recognized by marks known to a large number of consumers.

  • However, if they relate to goods from some niche, the number of those customers may be relatively small.
  • Territorial coverage must cover a large part of the country. Again, this does not have to be the whole territory.
  • There is also no definite percentage of recipients who need to associate such a sign. Thus, a less than 50% recognizability may be enough to prove a reputation.

As you can see, reputed trademarks are not just Coca Cola type brands.

In certain cases, when we have a niche market, the trademark that has dominated this market can be considered reputable. Obviously it is difficult to prove, but it can be done.

And if that works, then the brand can benefit from enhanced protection.

Well-known trademarks are trademarks known at least by 50% of the consumers. Contrary to reputable trademarks, they are not registered. By indicating a common knowledge of your trademark you can benefit from legal protection equal to registered trademarks. But it is not as simple as it looks like.

Well-known trademarks do not occur very often.

In legal (and not colloquial) terms, well-known trademarks are rare. As I wrote in the introduction, they are trademarks that:

  • are not formally registered in the relevant Patent Office, and
  • are known for at least a half of your potential consumers.

Companies that own brands on which they make a profit quickly register them.

And it’s most often right in a few variations.

However, it may happen that an entrepreneur is actively promoting his trademark in many countries but does not protect it worldwide.

Example:

Physically, the first bottles of Coca Cola to Poland came in 1957. Even then, this brand was a well-known trademark in Poland. If this trademark was not registered, it would have benefited from legal protection by his popularity.

However, it is only “what if.”.As I checked, Coca Cola has been protecting in Poland since almost 90 years, the following trademark:

well-known trademarks

R-013871

Curiosity:

Recently in the media appeared information that APPLE lost the trial in China for a trademark IPHONE. An Asian company registered this mark in 2007 for marking leather accessories.

Importantly, Apple’s first revolutionary phone model was introduced only in 2009.

Thus, at the time when the Chinese entrepreneur made the application, IPHONE was neither a well-known trademark nor a reputable-known trademark.

The Chinese easily defended and continue to produce such goods:

well-known trademarks

When the well-known trademarks are created?

As in the case of a well-known trademarks, here  the following question must be asked:

when the ordinary trademark transforms into a well-known trademark?

It is certainly not a quick process.

Well-known trademarks must meet certain requirements.

1. They must be used in the function of the trademark.

Such marks must be used in trade to designating goods or services.

For example, if someone has a very popular blog, but he does not offer anything, he does not use it’s name as a trademark.

However, it would have been if the blog ran a shop, for example with wines under the same name.

2. They must be well-known among potential recipients.

  • This means that it must be known at least by 50% of the recipients. This is therefore a higher criterion than with reputable marks. So it can be said that it is more difficult to prove the common knowledge of a mark than its reputation.
  • The buyers are those who are interested in the purchase of goods or services marked with this mark.

Depending on the type of goods, the number of people who need to know the mark may vary.
In the case of the milk brand it will be almost everyone. However, with the farm tractor brand, this knowledge is enough to demonstrate among farmers.

  • Well-known trademarks must be known throughout the territory of the country or a substantial part thereof.

3. It is not necessary to demonstrate the high qualities of the products.

Polish jurisprudence as one of the elements required for the recognition of a reputation as a recognized one recognizes the high quality of the goods or services marked with this mark. Such requirements do not have to meet the well-known trademarks.

Moreover, a given physical product does not even have to occur in our country.

If, as a result of intense advertising, a given mark would be known to the majority of recipients in Poland, it would be protected. In the ALLPE dispute, IPHONE was neither advertised nor offered before 2007, so this common knowledge or reputation has not been demonstrated.

Well-known trademarks vs. reputable ones.

What differentiates the well-known trademarks from reputable marks is:

the scope of protection

The first ones are protected only in the scope of the goods and services they are used for. Reputable marks, on the other hand, are also protected in the scope of unsimilar goods and services.

Their protection is therefore stronger (wider)

There is, however, a simple way for a well-known trademark to be turned into a reputable mark. It must be registered. The requirement of recognizability at reputable marks is lower than at commonly known marks. With this registration we will be able to benefit from increased legal protection.

Of course, it’s not that easy either.

In case of any dispute, we will always have to prove the reputation or common knowledge of our mark.

In conclusion:

Trademarks known to more than 50% of potential recipients may be considered well-known trademarks.

  • Such customers are those who are interested in acquiring the goods or services concerned.
  • These marks must be used in a significant territory of the country.
  • These marks must be used in the function of the trademark (that is, to mark the goods or services).
  • These marks can not be registered in the Patent Office.