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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23 Feb

Product brand can be protected as a trademark

Entrepreneurs at the Patent Office frequently reserve the name and logo of the company. Remember that the brand of the product can also be protected in that form. Watch out, because the goods you place on the market shall not break the law. When you set the wheels of marketing in motion, fixing this mistake can be very costly.

 

How can you protect your product?

Many companies achieved market success on the basis of its flagship product.

If it is sufficiently innovative it can be protected in the form of a patent. For example, in the past one patent covered the method of joining LEGO blocks. However, its protection has expired after 20 years.

However, the products usually stand out with characteristic shape or design.

You can secure it by registering in the appropriate Patent Office, the industrial design.

No less important in this case becomes a product brand. After a more or less intensive promotion, it begins to be associated by customers.

Such a product brand can be protected using trademarks.

Product brand - trademark

(R-180184)

However, apart from classical activities of unfair competition, there are still situations of unconscious infringement of the law. At some point, you find out that the brand of your product infringes someone else’s trademark.

Unfortunately, it happens quite often.

 

Learn from other people’s mistakes

 

Costly lesson of Apple company:

In 2010 it was planned to start selling in China, a new tablet called the iPad. However, since 2000 there was already registered a word mark “ipad”.

The Steve Jobs’s company tried to fight in court for the rights to that mark. After two lost processes, the company ultimately decided on the redemption of the mark for the amount of 60 mln. Dollars.

The struggle for the brand TIGER:

Dariusz Michalczewski, during his boxing career, used the nickname “Tiger”. The number of trademarks with that word was registered. This allowed him to grant a license to FoodCare company for distinguishion with this trademark the energy drinks.

After a few years, the licensee stopped paying the boxer for the trademark, although he used it. In 2014 The Court of Appeal in Krakow decided that FoodCare broke the law and must pay the foundation of the boxer 15 million zł.

The change of the brand after 3 years:

The third story is from my own experience. Mistakes are made not only by the big players, but unfortunately mostly by small companies.

Some time ago I helped one entrepreneur. Since 3 years he has been introducing a product to the market. Let’s just say that it was a brand of shoes. He thought about the registration of a trademark, after his competitor started using the same brand name.

Unfortunately, it turned out that phonetically identical sign was already protected by a foreign company in the EU. Not only, he would have no chance for protection, but he and his competitor, received the information that they violate another’s exclusive right.

 

Does your product brand does not break the law?

On his blog I often repeat it.

When choosing a company name or the name of the product, all should be deliberated carefully.

A good brand should satisfy both marketer and a patent attorney. On the one hand, it must surely be simple and easy to remember. On the other hand product brand should be registrable as a trade mark.

If it turns out that it is impossible, the further promotion of the brand is risky. Depending on the reason your situation will be bad or very bad.

In the first case, you may find out that the name you used does not qualify for protection. This applies to common names.

At any time on the market can appear a new product brand, using an identical or similar name and there is nothing you can do.

 

The second situation is unfortunately worse.

It may turn out that someone has such a mark protected. So introducing your product on the market you are breaking his right. There are penalties provided for such infringement.

For example, you may be required to pay for unsigned license agreement. Assuming that it was a charge of 1 thousand. zł. per month. After 3 years of operation it is an amount of 36 thousand. zł.

 

Being aware of these problems you can properly secure yourself.

Prior to decision of choosing a particular brand name, there should be carried out a trademark registrability research. This involves checking whether the name, colloquially speaking, “is free”. And only from the available brand names you shoul make the final choice.

Mikołaj Lech

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