Monitoring without cameras
Why is it worthwhile researching a trade mark before filing an application and monitoring it after its registration?
3 years ago, Polish trade mark law underwent some important changes. Previously, an expert from the Patent Office would verify whether there were any absolute obstacles to the trade mark being applied for that would make it impossible to obtain an exclusive right. Absolute obstacles include the sign having a descriptive character or lacking distinctiveness, or that it infringes the personal or property rights of third parties or is contrary to public order or good morals. The official would also check whether any relative obstacles to the mark existed, e.g. whether the trade mark was identical or similar to previously registered trade marks intended to designate identical or similar goods and services.
According to the current regulations, when the Polish Patent Office (PPO) receives a trade mark application today, it first verifies that there are no absolute obstacles to its registration. In addition, the office provides the applicant with non-binding information about existing prior rights. Then, within 3 months from the date of the office publishing information about the trade mark application, an opposition may be filed against it. The opposing claims are then examined by the Patent Office in the course of opposition proceedings.
As a consequence of the move away from the earlier “investigative” system, it is now incumbent upon the holders of prior rights to monitor incoming applications themselves. Trade mark search should also be carried out by applicants before submitting an application. This allows them to avoid conflicts with previously registered marks and to discover whether any third parties may have grounds to oppose their application.
Under the current procedure, therefore, there is a risk that competitors may file identical or very similar trade marks after a business has successfully registered its mark. Unfortunately, these marks may be granted protection too…unless somebody files an opposition within 3 months from the publication of the “unwanted” mark’s application in the Patent Office Bulletin. If no opposition is filed within the time limit, the identical or similar mark will be registered, at which point the only way to remove it from the market is to have it invalidated – an altogether more risky, time-consuming, and costly procedure.
So how can a business know if an identical or very similar mark has been applied for? The best way is to enlist the support of a patent attorney who will monitor the applications for marks published by the PPO and assess whether any infringement has taken place.
It is also worth using such a monitoring service to protect your existing rights, e.g. to identify any signs that are competing with your trade mark. Monitoring therefore gives you the opportunity to learn more about market trends and the activities of competitors.
Below are two examples that illustrate the utility of trade mark monitoring and research.
Example 1.
A large beverage producer has a “leading” EU trademark that it has been using to mark its goods over many years. The goods are sold in Poland, but the producer is thinking about expanding into other EU markets. When trying to introduce goods to the Czech and Slovak markets, however, it transpires that there are already national registrations of identical marks for identical goods in these countries. At this point, the only way to remove these unwanted marks is through costly and risky invalidation procedures in both countries. However, this situation could have been avoided if the owner of the sign had monitored its mark in the EU. Monitoring would have enabled the company to see any applications for identical trade marks for identical goods as they are filed. It would then have been possible to oppose their registration, which would have had a good chance of success. As a result, these marks would not have been granted protection and future problems in this area would have been avoided.
Example 2.
A Polish clothing manufacturer is rebranding. As part of this revamp the company employs a team of graphic designers to invent a new fancy logo which they successfully manage to register with the PPO. The manufacturer subsequently launches goods marked with the new logo onto the market. Later, they discover that products manufactured by a Polish company bearing a confusingly similar mark have started to appear on the market. No matter: the manufacturer feels secure in its position – after all, it has registered its own mark, so it decides to take legal action against the infringer. Unfortunately, it turns out that the confusingly similar mark has already been registered with the PPO, despite the fact that it was applied for a month after the manufacturer’s own mark had been registered.
How was this possible? The manufacturer did not monitor its mark after the application was filed, and therefore missed the opportunity to oppose a very similar mark that was applied for later. Had it done so, the chances are the later mark would not have been granted protection and the manufacturer would have avoided a headache.
The conclusion is clear. Carrying out trade mark research and monitoring trade mark applications and registrations are essential practices for businesses seeking to safely and responsibly develop a strong trade mark portfolio.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
