While on vacation in Bulgaria, I visited toy stands. Honestly. In my life I have not seen so many fakes of LEGO bricks. I thought that in this example I will tell you what trademark similarity is. This is important because similar signs infringe the law. And there are some consequences.

Examples of counterfeit LEGO bricks.

Everyone knows the LEGO brick producer.

You had the opportunity to read about this brand while trying to register a single brick as a trademark. Recently I read that this brand has record high profits. No wonder that many “creative entrepreneurs” are trying to get something out of this cake.

I personally came across many examples of naive attempts to bypass the right to the LEGO trademark.

Original:

Imitations:

Bricks referring to the LEGO stylization:

How do you assess the trademark similarity?

If you use a sign similar to a previously registered trademark – you are breaking the law.

Of course, the devil is in the details.

After all, the similarity of trademarks may be larger or smaller. Is changing one or two letters enough to get around the law?

The trademark similarity is tested on several levels:

• phonetic (we compare whether they sound similar);
• graphic (we compare their appearance);
• semantic (we check whether they are not e.g. synonyms).

The first 5 examples differ clearly on the phonetic level. It seems to me that the semantic level does not exist at all. However, if we compare the graphics of these markings, we will see that it is very similar to LEGO graphics.

I have no doubt that the court would find a infringement of law here. It is enought to show similarity on one of the above levels.

I would not be so sure about the remaining examples. Of course, there are some common elements like red background and white symbols. However, I see a large number of weirdos that can eliminate the risk of confusion.

Assess whether trademarks can be misleading.

In essence, a trademark is to distinguish goods / services of one entrepreneur from the same goods and services of another entrepreneur.

The point is therefore to prevent consumers from being misled as to the origin of the goods.

It is from this perspective that the trademark similarity should be assessed.

Of course, any trademarks comparison must start with a comparison of goods and services. By registering a mark, an absolute monopoly on the name is not obtained. This legal monopoly applies only to the goods and services specified in the application. There may be several companies on the market that use the same name. Everything will be legal as long as they operate in different branches.

Example:

The Feniks tattoo studio will not be able to prohibit the use of the same name for a baker’s shop. There is no danger that a person who wants to get a tattoo by mistake will buy a breadroll.

Or vice versa

In the context of the above, the first packaging of bricks is misleading. They were sold at stands, among other perhaps original toys. There is no rule saying that differences in signs must occur in 5-10 or 20%. Everything is assessed from the point of danger of so-called confusion.

Example:

The degree of consumer attention will be different depending on the product they want to buy. The consumer will have less attention when buying a candy bar than, for example, an agricultural tractor for 75 000 EUR.

LEGO Guy as a shape mark.

I don’t know if you know that the LEGO Guy has been protected as a shape European Union Trade Mark since 1996. Recently, the dispute to invalidate it’s protection ended in failure.

This means that identical or similar figures cannot be used to mark games and toys.

And here it gets interesting, because regardless of the logo, each pack of bricks has a drawing of a very similar LEGO Guy. I dare say that due to the popularity of brickks, a guy can be a reputable sign. And this means that the similarity is judged more severely than with ordinary trademarks.

Thus, even if several of the above manufacturers would defend themselves that their logo is not misleading, it will not be so easy with the figure of the Guy.

Summarizing

When I work in a Patent & Trademark Agency I happen to stand on different sides of the barricade.

Once I have to attack indicating that someone uses a similar mark. At other times, I defend clients against such accusations. I have noticed quite a common belief among people that a small change is enough to bypass the protective law.

And this is not true!

Changing one or two letters is relatively small.

Well, unless the word counts only 3.

Most often, adding words that are not very distinctive will not help either. Examples include “super”, “turbo” or “light”. The differences in the trade mark must be significant enough to eliminate the risk of confusion.

That’s why I wrote that the first blocks are a naive attempt to circumvent the law.

Rebranding is a process aimed at changing the perception of the brand. This is manifested by for example modification of the company logo. Such a change can be drastic or quite soft. However, I don’t know if you know that rebranding can be a threat to you in some situations. A trademark protected in the Patent Office will not provide you with security, but also expose you to costs!

Rebranding – fashion or thoughtful decision?

Creating a good logo for the layman may seem something simple. Looking at the actions of the Polish insurance company PZU, one can come to the conclusion that it can be done by the first student advertising on eBay.

Create yes, but come up with?

Professional design of the company logo is associated with a lot of time and energy. The final version is the result of the entire long process of learning about the company’s history, its mission and indicated needs. Specialists in this field are not only people who know graphic programs perfectly.

Here you need specialized knowledge in the field of corporate identity.

But what’s the problem?

If you registered the trademark only in a figurative version, you may be in trouble. In fact, the new visualization of your brand is not protected at the Patent Office! Many entrepreneurs forget about this fact and are fully convinced that they have real protection.

And this is a mistake!

Only the word trademark on the occasion of rebranding also protects its new version. There, the protective accent is located on the phonetic part of the mark. So, as you can see, it is independent of the graphic design.

Threats

I will tell you right away that you are in a much better position than if you had no protection at all. You have a registered trademark. The most important thing is that no one can now file a sign similar to yours! And this is an extremely important issue. Remember that as long as your old trademark is in force, you don’t have to worry about getting a letter from “sad gentlemen” from the law firm asking you to change the name.

It doesn’t however look so great. If you don’t operate under the old logo, then after 5 years of rebranding, every person from the street can revoke your protection. Just accusing you of not using it. Therefore, you face a dispute before the Patent Office. And in the event of a lost refund of legal costs. Unpleasant prospect, right?

There is also another danger. If your competitor notices that you use the R in a circle symbol with the new mark – he can report the matter to the police. The characteristic R is a legally protected symbol. If it is used in a fraudulent way, it may result in criminal penalties. Although in this case the threat is rather related to presenting a negative image of your company.

What you need to remember when protecting a trademark

When it comes to rebranding, all you have no other option but to register a new mark. It is also a good time to think about what to choose a word or figurative trademark. It may turn out that in the current market realities you will be better protected by another form of the trademark.

Also remember that with a new application you must indicate the goods / service classes in which you operate. You can not add any extending changes to an already filed mark. So it may turn out that this is a unique opportunity for you to rethink your scope of activity.

By rebranding, you will not only refresh the brand, but the protection at the Patent Office will better suit your needs today.

In the context of what I wrote, you should also be interested in this recording:

I may surprise you, but you should use a registered trademark. If you fail to do so, your protection right may expire. So you will lose not only time (you have to wait several months for the certificate of registration) but also money. Interestingly, you should be happy from the shape of the regulations in relation to trademark use. I can explain why…

Are you sure that big can more?

Imagine a company that makes colossal profits. With it’s arms and legs it wants to stay on top. And it has the resources for it. If there were no rule that the trademark should be used, competitors from the branch would be in big trouble. Our monopolist, for example, could register in the Patent Office the names used by these entrepreneurs.

It could also go in a different direction. It would register a catchy term for all possible goods and services. It would therefore have protection from chemical fertilizers to financial advisory services. And it could do that with all potentially attractive names.

Any of these options would really be to the detriment of normal business transactions. I have already seen many examples of unfair competition. So I guarantee you that companies with aggressive politics would eagerly take advantage of such a legal loophole.

Trademark use is necessary within the period of 5 years.

Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark says:

Art. 18

Use of an EU trade mark

If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.

Anyone who has a legal interest in this may apply for the revocation of the particular trademark. Everything happens in a litigation procedure before the Patent Office. Interestingly, this is one of the few examples where the applicant does not have to provide evidence to support his claims. In this case, it is the trademark owner who must provide reliable evidence of its use.

And this is often a problem.

Often, it is not the entire trademark that is invalidated, but only a part of it. This happens if the entrepreneur recklessly chooses branches to protect in which he will never enter. For example, he indicated clothing and footwear under class 25.

However, he did not make a single pair of shoes for 5 years.

What does the practice look like?

Official fees, however, effectively stop the fantasy of many companies. A certain amount must be paid for each class of goods indicated.

An entrepreneur who sees how the final sum for protection increases since entering a few numbers on the form, is quickly reducing himself 🙂

During my professional work I also had the opportunity to see real gems. One company has successfully registered a trademark in several classes. I could read there that protection covers for example space shuttles, cash machines and language learning. If someone were malicious, he could try to invalidate each of such goods.

It happens that we don’t have an easy task in our Patent & Trademark Agency. Customers would like to have maximum protection. However, they quickly forget that the trademark use is necessary. So if you are just thinking about registering your name, think carefully about the scope of protection in advance. If you point it too wide, you may encounter problems after a few years.

On the other hand, sometimes an even greater threat is not indicating branches that clearly generate large profits. After filing of your application, you will no longer be able to add anything.

In all this, a “golden mean” must be found. And here the experience of a patent attorney is very useful, whose advice can be very helpful.

I also recommend you to watch the following very important recording:

Today I would like to explain to you what a cease and desist letter of trademark infringement is. And this is the official pre-trial letter. It is sent by the proprietor of the trademark or the law firm representing him. It is addressed to the person accused of breaking the law. How to react to such a letter?

 
I know from experience that these types of letters are different.

Sometimes they are written in a polite but firm language. Other times in a very offensive form. The recipient of the letter has a deadline to reply.

Usually between 7 and 14 days.

Though one time I came across a request to answer within 72 hours.

Well, but this is an extremely aggressive play.

In this type of letters, the most frequent requests are:

• stop further infringement of the trade mark protection right;
• payment of appropriate compensation;
• disclosure of information, e.g. what quantities of goods have been placed on the market;
• sign a declaration of non-violation of the law in the future.

Cease and desist letter of trademark infringement does not prejudge any breach of the law.

Often the person who receives this type of letter is deeply shocked.

Suddenly he realizes that for several years he ran a company that violated someone else’s exclusive rights. Just claiming compensation makes your heart beat faster.

Receiving such a letter may suggest problems.

In itself, however, it does not automatically mean that there has actually been an infringement.

Well, registered trademark owners sometimes over-scare competition. And this happens when the similarity of the signs is small. Everything is, however, evaluated. So if you want to find out if the accusations of breaking the law are justified – go to the patent attorney for legal advice.

Some things you can check yourself.

Cease and desist letter of trademark infringement should indicate the number of the right of protection. Attaching the certificate of registration is also good. However, having the registration number, you can check on the website of the Patent Office:

– who is the owner of the mark;
– what exact term is protected;
– what goods and services have been granted protection;
– until when the protection applies, and
– what is the territory of protection.

Why is this so important?

To speak of a breach of protection law at all, the law itself must be in force. Trademarks are registered for 10 years. After this period, such protection may be extended for another such period.

However, entrepreneurs sometimes forget about it.

They often still use the R in the circle symbol next to company’s logo over and over again, although protection has long expired.

In addition to the time limit, there is also a territorial limit.

If someone protects their trademark in Germany and demands that you stop using the name in Poland, you can be calm. Provided, of course, that you did not copy its graphic design.

This one is protected by copyright.

A more complicated situation occurs when the goods and services are similar and the name itself. The trademark protects against the use of not only identical but similar signs.

So you may find that your company name is only partially similar to someone else’s trademark.

The question arises whether it differs sufficiently or not. A patent attorney will be able to answer this question. He deals with trademarks in everyday work.

How do you respond to these types of letters?

I will not discover America saying that it all depends on the particular case.

If, based on the facts, we believe that the allegations are unfounded, we can make an appropriate response. However, when the violation is evident it is wise to reach a settlement.

Even if it means you have to pay compensation.

If you have received cease and desist letter of trademark infringement remember one thing. Trademark owner probably has evidence against you. For example, it could be:

purchase invoice, product photos or website screenshots.

As I wrote, this does not mean that you have violated the law. However, you must take into account that if you do not comply with his demands, the case will go to court. It would be a very reckless step to get into a dispute when the case is lost in advance.

Cease and desist letter of trademark infringement means that someone already knows about your business. Now everything should be carefully analyzed and reacted accordingly. The situation is serious, but perhaps not hopeless.