My clients very often ask me a question. Is a registered trademark helpful? When a trademark application should be filed for protection? Generally it is better to do it one year earlier than one day too late. Although the rules associated with trademarks remained the same for many years, than the operating strategy is dependent from financial resources. Today I will give you a few pieces of advise.
The most of businesses are going bankrupt within the first two years of activity.
Therefore if you are not sure about financial condition of your company in the upcoming months, wait with the application. Usually, the costs of registered trademark can be for small entrepreneurs too expensive.
The protection is granted for 10 years, but you have to pay in advance all the costs. The mentioned situation can discourage especially the small companies, which are trying to save the money at the beginning of their business activity.
Minimize risk
You are not obliged to file your company name to the Patent Office. Acting without a legal protection is associated with a real risk. But the risk can be consciously minimized.
Check, wheather you are not infringing somebody’s else rights!
Before you decide for a particular name, check wheather it is not protected as a registered trademark by the other entrepreneurs.
You can try to do it yourself or you can order the patent attorney a trademark registrabiliy search.
Regardless of the issued legal opinion, you will receive very important information.
- There is no infringement. The chosen name is „free”. Using it, you do not break somebody’s else rights to a trademark. Filing the name to the Patent Office you should receive registration.
- There is infringement. If you are actively using the name in your business activity, you should immediately change it. Otherwise, if the owner of the earlier rights findes out about your trademark, he can demand enforcing a claim. You will receive an information about the upcoming troubles. Instant reaction can help you to avoid the troubles before they appear.
If you are at the stage of creating a business name, a patent attorney can help you to implement changes avoiding collisions with registered trademark.
Why the trademark registrability search is so important?
I had an opportunity to meet entrepreneurs who created a names for their businesses, and invested a huge amount of money into promotion. (banners, advertisements, website, positioning etc.). After some period of time they decided to order the patent attorney a trademark registrability search. They were astonished when they found out about the collision. They realised that they threw money down the drain.
Wait with the application (but not too long).
Being sure that your name does not infringe somebody’s else rights, you minimize the risk of collision, but you can not eliminate it. The trademark registrability search results are valid at the moment when the search is finished. Each additional day without protection creates a risk that somebody else will file a similar trademark.
When we take a typical polish words like „ŻÓŁĆ” (bile) than the risk is limited only to Poland. But what if a phrase contains english words? What if a similar name is registered by a portugeese entrepreneur in EUIPO (on the whole European Union)? And since Poland is a part of European Union…
Registered trademark. When the application should be filed?
Starting a business, you can state after some period of time, that the business is worth investing in.
And that is a good moment to file an application.
For one person it can be a half of year and for another one year. As I said before, the longer you wait, the more troubles with trademark registration you can get. You have to make your own decision.
The ideal situation is when you file an application after receiving trademark registrability search results. Particularly if you invest not only time but also a huge amount of money into your business. I understand that not every beginning entrepreneur can afford it. Besides, first months of the business activity are to check wheather the business activity in profitable. Starting a business from trademark registrability search will help you to minimize the risk. It’s the compromise solution burdened with some risk and addressed to beginning entrepreneurs.
But if you are running a huge business, than your action plan related to a trademark should be different, but that’s the topic for an another article.
+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
