Mikołaj Lech

patent attorney

A lawyer, who specializes in industrial property law, combating unfair competition and copyright. Thanks to work in Patent Agency he has a contact with the current problems of entrepreneurs.
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20 Mar

Small company and trademark. When to file a trademark application?

trademark applicationI often get questions about when it is best to file a trademark application for protection. Generally, it’s better to do it one year too early than one day too late. Although the rules related to trademarks have not changed for years, the strategy of operation depends on the financial resources. Today, some advice for small companies.

The vast majority of businesses collapses in the first 2 years of its activity.

For this reason, if you are not sure about the condition of your company in a few months, wait with the application. Often, for small businesses, the costs associated with trademark protection may seem high.

Protection is granted for 10 years, but all fees must be paid in advance. This situation may discourage small companies, which at the beginning of business activity are looking for savings at every step.

Minimize the risk

There is no obligation to file your company name to the Patent Office. Acting without legal protection, however, involves a real threat. However, this risk can be consciously minimized.


Check whether you infringe anyone’s rights!

Before you decide on a specific name, check whether it has already been registered by someone as a trademark.

You can try to do it by yourself or to order a trademark registrability search to the patent attorney.

Whatever the legal opinion issued by the patent attorney will be, you’ll get extremely important information:

  1. There is no infringement. The name you choose is “free”. Using it you do not break the right to someone else’s trademark. By filing it to the Patent Office, you should get protection.
  2. There is an infringement. If you actively use this name in business, you should change it as soon as possible. Otherwise, if the owner of the protected mark notices it, he or she can direct a number of claims towards you. So you get information about problems that may come. A quick response will allow you to avoid problems before they really appear.

If you are just at the stage of inventing name, patent attorney will help you make the necessary changes to exclude collision with other trademarks.


Why trademark registrability search is so important?

I had the opportunity to meet entrepreneurs who invented the names for their businesses and then invested tens of thousands of euros in them (banners, ads, website, positioning, etc.). It was only after some time that they ordered the patent attorney to conduct a trademark registrability search. The information about the collision surprised them. They knew then that they had thrown their money away!


Wait with the application (but not too long).

Being sure that your name does not infringe someone else’s rights, you limit the risk of collision, although you do not eliminate it. The current search is valid at the time of its accomplishment. Every next day without protection is a risk that someone else will file something similar.

It is enough if an entrepreneur from the other European Union country will invent a similar trademark name to yours and files it as a European Union Trade Mark (throughout the European Union) and you will have a problem.


Small company and trademark – when to file a trademark application?

Starting a business activity, you are usually able to say after some period of time, that it has a future.

And this is a good time to file your trademark application.

For one person it can be half a year for another one year. However, as I wrote above, the longer the delay, the greater the risk of problems with registration of a trademark in the future. You must make your own decision.

The ideal situation is when the trademark application is made immediately after the trademark registrability search. Especially if you invest not only time but also big money in your business. However, I am aware that not every aspiring entrepreneur can afford it. In addition, the first few months of activity are usually checking whether a business idea is profitable. Starting a business from researching will reduce your risk. It is a compromise solution, burdened with some risk and addressed to beginner entrepreneurs.

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
Mikołaj Lech

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