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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.

If you would like to protect the company’s brand, it is made through the registration of the trademark in the relevant Patent Office. In the hereby article I will focus on the details concerning the registration of the national trademark. To register a trademark in Poland, the trademark must be filed to the Polish Patent Office in Warsaw. Below I presented to the current for 2016 year cost of trademark registration in Poland.

Cost of trademark registration in Poland – huge changes in 2016 year.

If you’ve read in the last months my blog, you should be aware of changes in the procedure of trademark registration in Poland. The most important issue is introducing so-called opposition procedure. This means that the Office will not be conducting trademark registrability search, but will wait for oppositions to the application. This fundamental change has reduced the time to register a trademark. Until now, the registration procedure lasted about one year. Now, in the absence of opposition, the trademark may be registered after 6-7 months.

Soon the current cost of trademark registration in Poland will be changed. It means that:

most of the information on the internet about the fees is already outdated.

Previous fee rates came into force on 23 March 2016. After less than a year of duration, they will be changed to the new one. Decree-law amending the fees for trademark protection, will soon be signed by the Polish Prime Minister Beata Szydło.

The new fees are effective after 7 days of its announcement.

You must remember that the cost of trademark registration depends on three factors.

  • the territorial scope of protection;
  • the amount of classes appointed in the application (goods and services are grouped in classes – it can be compared to Polish Classification of Activities);
  • sometimes from the trademark form (ie. if you want to protect your name or logo).

Below you can find detailed calculations.

Cost of trademark registration in Poland.

trademark-registration-in-poland

Formally, the fees from 23 March 2016, are currently liable. However, they will be changed soon. I’m referring to it below.

You must remember that the application for granting protection must be filed to the Polish Patent Office in Warsaw. In the absence of obstacles, the procedure will take about half a year. It is important, however, that the protection right is valid from the date of the trademark application.

a) Application:

  • a fee for a trademark application in one class – 450 PLN (113 EUR). If it is done online a fee amounts to 400 PLN (100 EUR)
  • a fee for each additionall class – 120 PLN (30 EUR).

b) Protection:

  • a fee for 10-year protection period for each class – 400 PLN (100 EUR)
  • a fee for publication of an information about granted protection – 90 PLN (23 EUR).

trademark registration in polandExample:

Such sympathetic trademark has been registered recently in Poland. Applicant indicated class 28. If the application was made under the new regulations, the cost of registration of the trademark would amount to 236 EUR (113 EUR for a trademark application + 100 EUR for the 10-year protection period + 23 EUR for publication).

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.

You’ve made a decision to file your company’s logo to the Patent Office as a trademark. First thing which you will be obliged to do is to make a decision about the form of protection. Which trademark better protects your rights – a word or figurative trademark? Companies very often ask me the mentioned question, and therefore I decided to gather in one place all „for” and „against”.

Both word or figurative trademark put the emphasis on the other element of protection. It means that each one of them turns out to be better in specified situations. Therefore nobody but you must make a decision about the form of protection of your trademark.

If you have a unique name…

WORD trademark protects the meaning of the word (words) itself apart from the graphic designs. You can imagine that by combining two radio advertisements. If the name of your competitor’s company is similar to yours, than there is possibility of infringement.

Advantages:

  • Possibility of forbidding the competitors using identical or similar name to protected word trademark. We compare only phonetic sphere.
  • Word trademark can effectively help you to fight with domain blackmail.
  • If your competitors are using Google Ad Words advertisement with the use as a keyword, the name of your company, than thanks to protection for a word trademark you can file a successful complaint.
  • Rebranding – in case of change of the graphic design, the word trademark also protects a new logo.

Disadvantages:

  • Difficulties in obtaining protection. The trademark must have distinctiviness. In this case it is impossible to register for example the common names.
  • If your competitors are using similar graphic to yours, but with the different words, than the word trademark protection can not help you.

Example:

Everyone know the brands like FANTA, COCA COLA or SPRITE. Let’s say that the mentioned trademarks are not famous. If they were protected at the Patent Office only in the form of word trademarks, than they could do nothing for the below infringement.

word or figurative trademarkSource: www.obrazky.pl

However, in case of the below infringements, a word trademark should be sufficient:

Word or figurative trademark 2LITR sounds similar to LIDL…

word or figurative trademark 3and IKKA is like IKEA.

If you have a unique company’s logo.

FIGURATIVE trademark protects the word (words) in the scope of graphic design. The emphasis is put on the visual part of a trademark. In the context of figurative trademark, the beverages from the above picture are clear infringement. It does not matter that the words from the labels are phonetically different from the trademarks FANTA, COCA COLA or SPRITE. By their appearancce, they can confuse a potencial consumer. And this is why a trademark protection is created for!

Advantages:

  • Possibility of forbidding the competitors using identical or similar name to protected figurative trademark. In that case, although the similarity on the phonetic sphere is examined, it is made in the context of the trademark’s graphic.
  • Obtaining protection for the figurative trademarks is easier than for the word trademarks. It’s because of graphic which influences on distinctivity. It is possible to obtain protection for the expressions which wouldn’t receive protection as the word trademarks because they are for example common expressions.

Disadvantages:

  • Rebranding – in case of change of the graphic design, the current figurative trademark doesn’t protect a new logo.
  • In case of trademarks which the only distinctive element is graphic, it is difficult to enforce one’s rights to trademarks which are similar only in phonetic sphere.

Example:

Polish Patent Office granted protection for figurative trademarks PolskiBus (PolishBus) and Polskie Autobusy (Polish Autobuses). In both cases the distinctive element is graphic (the meaning is similar):

polskibusSource: Polish Patent Office

Figurative trademark: R-248646

POLSKIE-AUTOBUSY-300x128Source: Polish Patent Office

Figurative trademark: R-173899

Word or figurative trademark. Maybe you should file a trademark in two variants?

Many companies don’t want to risk and they protect both forms of a trademark. It is related to an additional official costs, and this is why usually only huge companies decides for that form of protection. It doesn’t change the fact that such protection, if applied, provides protection on the most important fields. It is difficult to predict, while filing a trademark, what kind of infringement of our trademark can occur in the future.

Word or figurative trademark filed for protection sit well together. It can be said that together they neutralize their disadvantages. And thereby the protection is full. But you can choose one of the variants.

As I said at the beginning, the patent attorney can only show the advantages and disadvantages of each variant of trademark registration. The entrepreneur himself must choose the variant which is the best for his business activity.