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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8 Oct

I want to register the company name and logo…

“I want to register the company name and logo”. I often hear such words from people who want to protect their brand. I explain to them that it is formally done by registering the trademark in the Patent Office. The question is, will you be able to kill two birds with one stone? Can you register a company name and logo by making one application to the Patent Office? In this article I explain everything in detail.
 

 

Do you want to protect the name and logo?

You must decide.

When registering a trademark in the Patent Office, one of its forms should be chosen. And there are quite a lot of them. However, in practice entrepreneurs have a dilemma between two.

You can choose to protect the logo (figurative trademark) or only the name (word trademark). Each of these forms has its own pros and cons, although I think that word trademark protection is more practical. Nevertheless, I have already tried to answer the question which form may be more beneficial for you.

Read two important articles on this topic:


Pros and cons of protecting the company name and logo

This is another question which appears after my explanations that one should opt for one of the forms. This is a very good question.

Unfortunately, there is no simple explanation here.

I will answer like a typical lawyer:

“It depends”

From what?

Whether the name from which the logo was created is a fanciful term.

The point is not to have a word that did not exist before, such as “buildimex”. The word or words forming the logo cannot clearly indicate goods/ service they are meant to signify.

Certain terms cannot be monopolized. If the name “bread” could be used to designate bread, it would paralyze the bakery industry.

It is the reason why the Patent Office refuses to register general information markings. If you are wondering if your brand does not belong to this category, be sure to read the article: Descriptive trademarks – a serious problem for many companies.

Examples, when does the logo also secure the name?

 
Example 1:

register the company name

In the Polish Patent Office, the figurative trademark “GOOD WATER” is registered under no. R.132137.

The protection includes non-alcoholic beverages.

Does the authorized person have exclusive rights to the words “good water”?

Definitely not!

It is a case where the mark points to the product it is meant to signify. Thus, only his graphic design is protected.

 

Example 2:

register the company nameIn the Polish Patent Office, the figurative trademark “PLAY” is registered under no. R.284083.

Protection covers inter alia. mobile telephony.

Can the authorized person ban the use of the term “PLAY” even if its graphic design is completely different?

Yes!

But, provided that this term will denote services related to mobile telephony.


Sometimes it is difficult to determine if the company logo protects the name.

As you can see, it is not easy to answer the title question. Everything depends on the specific case.

Often it is balancing on the border. You may have doubts whether Your mark is already general information, or rather it belongs to suggestive marks (such as the name E FASHION for software for consumer use in shopping via a global computer network and of electronic retailing services).

The problem can be seen especially if the mark consists of words from a foreign language (eg. English language). If it is considered to be general information, then despite the logo registration, you will not be able to prohibit another entity from using a phonetically similar term.

I noticed that many people simplify things too much. By registering a company logo, we can also secure its name, but this is not always the case. I also write on this subject in the article: 5 incorrect beliefs about trademarks.

Don’t risk: register the company name and logo.

Ask me about pricing

    +48 607 416 240

    office@lech.bydgoszcz.pl

    The best solution in this situation is to protect both trademark forms, word and graphic.

    However, this involves the need to make separate applications, so all official fees must be paid twice. There is also a risk that the Patent Office expert may not grant protection on a word trademark.

    More interestingly, you need to know that over the years Patent Offices have been changing their practice in terms of recognizing which mark is descriptive (and therefore incapable of registration). EUIPO is very strict about this. There are rumors that the Polish Office soon will aslo decide about the same.

    This means that today such a mark as “good water” would not have a chance for protection.

    If you are thinking about the company name and logo registration, please contact me. As a patent attorney, I will take care of all formalities.

    Mikołaj Lech

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