Recently, one of my clients asked me some interesting questions. What does my legal analysis of brand give them? If I check everything, will they be 100% sure that they will get protection? After all, will the entire registration procedure take place faster? These questions were so noteworthy that I decided to answer them in this article.
Legal analysis of brand – what is it and why do we need it?
In order for a trademark to be effectively registered, it must fulfil certain requirements. For example, a descriptive trademark will not receive protection.
In most cases, the legal analysis of brand consists in checking if there are any collisional trademarks.
Although the opposition procedure is already in force in Poland (the expert will grant protection even if they find collision trademarks), competitors can file an effective opposition.
The legal analysis of brand is known as trademark registrability search.
If you are looking for a specialist who will do such trademark registrability search, go to a patent attorney. It is so important that in order to issue a correct opinion on the chances of trademark registration, both knowledge and experience are necessary.
If you find an identical trademark, the legal analysis of brand will be simple. Things get a bit tricky with similar trademarks. There is no clear border, beyond which it can be said that trademarks are similar to each other enough, that there is a law violation.
Everything is assessment.
And here the patent attorney’s experience turns out to be priceless.
After registering several hundred trademarks, I know ‘customs’ of specific offices. I know which trademarks will definitely not get protection in EUIPO, and which have chances for that in Poland.
This experience allows to formulate specific conclusions and recommendations from the search.
Remember that it is not important if the trademarks being compared are similar in your opinion. What counts is only how the trademark registration office assesses it, or when a dispute arises – in a court.
Will you get 100% certainty that you will register a trademark after the legal analysis of brand?
I say clearly – no.
Even if I did not find any collisional trademark,
I do not tell the client that they will definitely get protection.
Why?
Because it can happen that someone made an application for the same trademark literally 2 days earlier.
And unfortunately, authentically I had such situation.
The offices reports such informations with delay.
Thus, answering the first question.
By ordering the legal analysis of brand, you will receive information about your chances of protection. If a patent attorney locates any collisions, he will also tell you how to get around them. Of course, if it is not a hopeless case.
For example, you can:
- add another word to the trademark;
- more fanciful graphic design, or
- cancel the EU trademark application for the national mark.
Without such trademark registrability search, you would make an application of everything on spec.
Is the trademark registration pass faster after such analysis?
Formally not, but …
… can prevent the extension of the proceeding.
If you make a trademark application and someone oppose it, the whole proceeding will be prolonged for many months. If the Patent Office will have doubts as to whether your mark, e.g. is suitable for protection, you will receive written comments from an expert.
It will take several months to explain that.
The legal analysis of brand is like a ship sonar – it locates mines.
If you know where they are, you can avoid them and reach the destination without any problems. If you fall into them, the journey will be delayed, or your application will go down at all.
The trademark market is getting tighter.
Ask me about pricing
+48 607 416 240
office@lech.bydgoszcz.pl
It is rare for me that the legal analysis of brand does not indicate any similar trademark.
I have the impression that the negative result gives:
– 1/3 of analyzes covering Poland and
– 1/2 of analyzes covering the European Union.
Of course, this does not mean automatically that nothing can be done. However, I have to make a lot of effort to register such a trademark.
Sometimes it is impossible at all.
It is not so bad when the client is just planning to enter the market with a new trademark. Then, there is possibility of making some changes in the brand. But when such a trademark has been on the market for several years – my hands are tied.
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If you are interested in the legal analysis of brand, please contact me by the form on the right. I will answer for sure.
+48 607 416 240
office@lech.bydgoszcz.pl
- Small company and trademark. When to file a trademark application? - 20 March 2018
- Trademark similarity: When does it lead to an infringement of the law? - 15 February 2018
- Rebranding – when it is a threat to your company? How not to lose a trademark? - 8 January 2018
