People who are asking me for help, usually ask me if they must own a company (conduct business activity), to register a trademark. In today’s article I will briefly answer that question. I guarantee that you will be surprised, who can register a trademark. Keep reading.
Who can register a trademark?
The person who could be the owner of a trademark had been changing in the past. When the Act about trademarks from 1985 was in force, the protection right could be granted only to entrepreneurs. What is more. The companies could not obtain protection for trademarks, which were used to designate goods or services, not being a part of their’s business activity.
It means that if you were the owner of a bakery, you couldn’t register a trademark for designation of toys. Even if you were planning to start production.
How does it look today?
Hopefully, when Industrial Property Act came into force in the year 2000, most of the restrictions were removed. From that date it is possible to register trademarks by natural persons who do not conduct business activity. Entrepreneurs, in the new Act, are not restricted to the scope of their activity.
Within the new Act, there was on obstacle which the patent attorneys criticised. If somebody wanted to register a trademark for several entities, it could only be done within a few companies.
We had an abstract situation when a trademark could be registered for one natural person, but for two or more it was not possible.
You do not need to own a company to register a trademark.
Hopefully, on December 2015, the Act was amendment, and actually the obstacle was removed. Therefore answering to the question:
You do not need to own a company to register a trademark.
The application can be made by natural person who did not conduct business activity yet. Besides you can file an application „classically” on the company, that is for example on natural person who conducts business activity, partnership, and even a foundation or university.
If you want to register a trademark, but you do not have a company yet, remember about one thing. The law gives you 5 years to start using a trademark. After that, the protection right to a trademark will not be taken from you, but the competitors can file for withdrawal of trademark from use. Everything within the principle, that by registering of a trademark, which you do not use, you are blocking the market for the competitors.
Trademark can be registered for Poland (as a country).
As a curiosity, I can tell you, that the number of trademarks have been registered for Poland as a country. Formally the owner is the State Treasury.
Among the trademarks are:
R-282265
R-276349
R-258432
R-196225
In the last example for the State Treasury was registered figurative trademark of The Patent Office. The interesting situation occurred, because it had to judge in it’s own case.
Why do people register the trademarks for natural persons?
1- They want to prevent from stealing of the brand.
Invention of a catchy name does not give you any rights. In most of the cases it is not covered by protection right. Protection on behalf of other provisions concerns designations used in economic turnover. If you want to be sure that nobody takes your catchy name, you should protect it as a trademark. Even if you do not conduct business activity.
2. Possibility to grant license for using of a trademark.
Another reason for registering of a trademark for natural person is a possibility to licensee of a trademark. If you are for example a famous musician, than you know that people willingly will buy from you posters, mugs or T-Shirts with your artistic nickname. By having a protected trademark you can grant protection to a company which will produce and sell the hereby accessories.
3. Using of a trademark for tax optimization.
Filing of a trademark for natural person and licensee of it to partnership is a way for tax optimization. Such limited liability company can use trademark which is formally registered for you. And pay you money every month.
4. Brand protection before bankruptcy of the company.
Protection of a trademark for natural person has one more advantage. Even if the partnership falls down, you still have the priceless asset – a trademark. Liquidator of the company’s property can not confiscate a trademark, because it is not a company’s property.
Remember:
If you decided to register a trademark for yourself as a natural person, not conducting business activity, than when you create a company you can transfer the right to trademark on behalf of your company. The same as if you were selling a car. As you can see you do not have to possess a company to register a trademark.
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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
