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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.

People who are asking me for help, usually ask me if they must own a company (conduct business activity), to register a trademark. In today’s article I will briefly answer that question. I guarantee that you will be surprised, who can register a trademark. Keep reading.

Who can register a trademark?

The person who could be the owner of a trademark had been changing in the past. When the Act about trademarks from 1985 was in force, the protection right could be granted only to entrepreneurs. What is more. The companies could not obtain protection for trademarks, which were used to designate goods or services, not being a part of their’s business activity.

It means that if you were the owner of a bakery, you couldn’t register a trademark for designation of toys. Even if you were planning to start production.

How does it look today?

Hopefully, when Industrial Property Act came into force in the year 2000, most of the restrictions were removed. From that date it is possible to register trademarks by natural persons who do not conduct business activity. Entrepreneurs, in the new Act, are not restricted to the scope of their activity.

Within the new Act, there was on obstacle which the patent attorneys criticised. If somebody wanted to register a trademark for several entities, it could only be done within a few companies.

We had an abstract situation when a trademark could be registered for one natural person, but for two or more it was not possible.

You do not need to own a company to register a trademark.

Hopefully, on December 2015, the Act was amendment, and actually the obstacle was removed. Therefore answering to the question:

You do not need to own a company to register a trademark.

The application can be made by natural person who did not conduct business activity yet. Besides you can file an application „classically” on the company, that is for example on natural person who conducts business activity, partnership, and even a foundation or university.

If you want to register a trademark, but you do not have a company yet, remember about one thing. The law gives you 5 years to start using a trademark. After that, the protection right to a trademark will not be taken from you, but the competitors can file for withdrawal of trademark from use. Everything within the principle, that by registering of a trademark, which you do not use, you are blocking the market for the competitors.

register a trademark

Trademark can be registered for Poland (as a country).

As a curiosity, I can tell you, that the number of trademarks have been registered for Poland as a country. Formally the owner is the State Treasury.

Among the trademarks are:

R-282265

 

R-276349

 

R-258432

R-196225

 

In the last example for the State Treasury was registered figurative trademark of The Patent Office. The interesting situation occurred, because it had to judge in it’s own case.

Why do people register the trademarks for natural persons?

1- They want to prevent from stealing of the brand.

Invention of a catchy name does not give you any rights. In most of the cases it is not covered by protection right. Protection on behalf of other provisions concerns designations used in economic turnover. If you want to be sure that nobody takes your catchy name, you should protect it as a trademark. Even if you do not conduct business activity.

2. Possibility to grant license for using of a trademark.

Another reason for registering of a trademark for natural person is a possibility to licensee of a trademark. If you are for example a famous musician, than you know that people willingly will buy from you posters, mugs or T-Shirts with your artistic nickname. By having a protected trademark you can grant protection to a company which will produce and sell the hereby accessories.

3. Using of a trademark for tax optimization.

Filing of a trademark for natural person and licensee of it to partnership is a way for tax optimization. Such limited liability company can use trademark which is formally registered for you. And pay you money every month.

4. Brand protection before bankruptcy of the company.

Protection of a trademark for natural person has one more advantage. Even if the partnership falls down, you still have the priceless asset – a trademark. Liquidator of the company’s property can not confiscate a trademark, because it is not a company’s property.

Remember:

If you decided to register a trademark for yourself as a natural person, not conducting business activity, than when you create a company you can transfer the right to trademark on behalf of your company. The same as if you were selling a car. As you can see you do not have to possess a company to register a trademark.

What is a trademark registration in WIPO? If you operate in European Union, you can either file a national trademark application or European Union Trade mark application. Sometimes it is not enought, and entrepreneurs are thinking about registering their trademark on other continents. Below you will find a basic information.

Cost of trademark registration in WIPO on the chosen bunch of countries.

trademark registration in wipo

You can obtain a trademark registration in a few countries at once. It is not done by a new application but by extending protection of a trademark already registered. At first you must register your trademark in Poland or in European Union. Without it, extending your trademark will not be possible.

Application is made in World Intellectual Property Organization (WIPO) in Geneva in Switzerland.

a) Application and protection:

  • Basic fee for application and protection up to three trademark classess:
    • trademark without colours – 653 CHF
    • trademark with colours – 903 CHF
  • a fee for each additionall class above three – 100 CHF
  • a fee for each indicated country being a member of The Madrid Agreement – 100 CHF
    • Some countries have established their own official fees

trademark registration in wipo

Example:

This trademark was at first registered in European Union, and later on the 7 other countries of the world. Fees for international registration amounted 1730 CHF. The higher amount than that resulting from the calculations is due to the fact that Israel and Turkey are demanding higher fees.

 

Business name registration with the help of a patent attorney

Ask me about valuation

+48 607 416 240

office@lech.bydgoszcz.pl

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 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.

If you are not interested in filing a trademark application in the Polish Patent Office in Warsaw, you have the other option. You can file a trademark application to the European Union Intellectual Property Office (EUIPO) in Alicante in Spain. If the trademark is registered, the protection is valid within the all countries of the European Union. Trademark registration in EUIPO is better than filing a trademark in the separate countires, but you have to remember about restrictions. If there is earlierly registered national trademark which is similar or identical to yours, the owner can oppose your application. If he succeeds, your trademark will not be registered. Below I presented the current for 2016 year cost of trademark registration in EUIPO.

Cost of trademark registration in EUIPO.

trademark registration in EUIPOThe trademark application should be filed to EUIPO. If there are no obstacles, the trademark registration procedure should take about five months. Of course, such protection includes also the territory of Poland.

a) Application and protection:

  • a fee for EU trade mark application in 1 class – 1000 EUR
  • a fee for application (if it is done online) in 1 class – 850 EUR
  • a fee for second class – 50 EUR
  • a fee for each additionall class – 150 EUR

Example:

trademark registration in EUIPOIn EUIPO there is registered the following European Union trade mark. It is protected in class 9 (life-saving and teaching apparatus and instruments) and 41 (education and entertainment services).  If the application was made today, the cost of trademark registration in EUIPO would ammount to 900 EUR (850 EUR for the the first class + 50 EUR for the second class).

Business name registration with the help of a patent attorney

Ask me about valuation

+48 607 416 240

office@lech.bydgoszcz.pl

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 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.