A trademark and a company is the same? The answer is negative. The company is a kind of banner under which every entrepreneur conducts his business. This is the name of the entrepreneur or the name (for companies). Pursuant to art. 432 Central Committee, the presence of entrepreneurs in business transactions is mandatory. The company itself is subject to legal protection, which results from art. 4310 KC, however, the company and the trademark are not necessarily the same. It may be that as part of the business, the entrepreneur uses a trademark converge with his company, different from the company and even many different trademarks (e.g. different for each of the products offered). This article explains what a trademark is and how to protect it.
Trademark – what is this?
The answer to this question is provided by the Act of 30 June 2000 – Industrial Property Law (JT Journal of Laws of 2023, item 1170). The trademark is any designation enabling the distinction of the goods of one enterprise from other goods. The condition, however, is that it would be possible to provide trademarks in the register. This performance is to allow the determination of an unambiguous and accurate subject of protection. Importantly, a trademark may not only apply to specific products (goods), but also services (service mark).
A trademark may be, for example:
- word (including a company – e.g. name, surname, name)
- drawing (e.g. logo),
- letter,
- digit,
- color,
- spatial form (including the shape of the goods or packaging),
- sound,
- smell.
In court case -law, it was decided that the internet domain address could also be treated as an enterprise designation (judgment of SA in Warsaw of July 23, 2018, VI AGA 376/18, judgment of SA in Poznań of 29 June 2021, I Aga 188/21). Therefore, the internet domain address (as a verbal designation) may also be a trademark.
How to get a trademark protection?
Protection of the trademark consists in obtaining a protection right for a trademark. Such protection is granted as a result of notification at the Patent Office of the Republic of Poland. To obtain this protection, you need to complete the appropriate application. This document provides the necessary data, including a description of the trademark. The type of goods/services for which protection is to be granted is also indicated. Why? The trademark is to protect specific goods and services (TMClass). For example: one entrepreneur can obtain a “tomato” trademark for clothing, and another – for marketing services.
The basic fee for submitting one national trademark for one category of goods/services is PLN 450 (PLN 400 for an electronic application). Information on the amount of fees can be obtained on the UPRP website.
On the basis of the application, the procedure for providing protection is started, which is granted by way of a decision. The trademark is entered in a special register, and the authorized person obtains a protective certificate.
What is the company's trademark protection?
Obtaining the right to a trademark results in the right to use the trademark in a earning or professional manner. For domestic trademarks, the entire area of Poland is the area of protection.
Only using a trademark concerns, among others:
- placing this sign on goods covered by a protective law or their packaging, offering and placing these goods on the market, their imports or export, and storage to offer and placing on the market, as well as offering or providing services under this sign;
- placing a sign on documents related to placing goods on the market or related to the provision of services;
- Using it to advertise.
The trademark is protected for a period of 10 years from the date of notification. You can extend the protection time for subsequent 10-year periods for an appropriate extension fee.
How is the trademark violation?
Both Polish courts and the Court of Justice of the EU (CJEU) recognize that the key element of violation of the protection law for a trademark is “the risk of misleading recipients”. His occurrence is assessed on the basis of three criteria:
- the degree of similarity of colliding characters, as well
- the degree of similarity of goods (services) for which they are used and
- Distinguishing capacity (its strength) of the previously registered sign.
With the degree of similarity of conflicting signs, it is assessed:
- General impression – as the sign works on the average, duly informed and attentive recipient; “comprehensive” assessment, not analysis “letter after letter” (judgment of the Tribunal of 11.11.1997, C-251/95, Sabel/Puma);
- Dominant/distinguishing elements – even a small fragment can dominate the image, e.g. a characteristic graphic theme (e.g. the judgment of the Tribunal of 22.06.1997, C -342/97, Lloyd Schuhfabrik Meyer);
- Visual, phonetic, conceptual similarity – there is no “worse” or “better” category of similarities – a global impression is important (e.g. the judgment of the Tribunal of 18.06.2009, C -487/07, L'Oréal et al.).
The degree of similarity of goods/services is assessed according to the criteria of nature, purpose, distribution channels, target group, complementarity and competitiveness (e.g. the judgment of the Tribunal of 29.09.1988, C-39/97, Canon).
The ability to distinguish an earlier sign is assessed from the point of view of the original distinctive capacity (required as a condition for registration of a trademark) and through the prism of the already acquired (by use) distinctive capacity.
All these elements should be evaluated together. We should talk about violation of the trademark when the average recipient may confuse the enterprise or recognize that the brands are economically related (so -called “extended confusion”).
Someone violates my trademark – what can I do (civil claims)?
Pursuant to art. 296 PWP In the event of a violation of the protection right for a trademark, you can demand from a person who violated this right above all:
- abandonment of violation,
- issuing unreasonably obtained benefits,
- and in the event of a culpable violation of the damage caused.
Repairing the damage may occur on general principles or by paying the sum of money in the amount corresponding to the license fee. Instead, it may be a different salary that would be due for giving consent to the use of a trademark.
The same can be reached from a person who plays goods on the market, if they do not come from the entitled person or the person who had his permission to use the trademark. Similarly, these claims can be reported against a person who was used when violating the protection right for a trademark. These rules cannot be used when a person's responsibility is excluded on the basis of art. 12-15 of the Act of July 18, 2002 on the provision of electronic services.
This protection is made in court. In court proceedings, the court may, at the request of the authorized person, order to make public a decision or information about it
If the violation of the right to the trademark were not related, the court may alleviate the liability for damages or in the abandonment of the violation. This is possible if the abandonment of violation or a decision on the repair of the damage caused were for a disproportionate person. Then the court decides to pay the appropriate sum of money. This sum must properly take into account the interests of the victim.
Trademark and criminal law
According to art. 305 PWP Who, in order to place on the market, means goods with a counterfeit trademark, including a counterfeit EU trademark, a registered trademark or EU trademark, which is not entitled to use or trads goods by such signs, is subject to:
- a fine,
- the penalty of restriction of liberty or
- deprivation of liberty up to 2 years.
In case of less weight, the penalty may be a fine. However, when the perpetrator made a permanent source of income to commit a crime or applies to goods of considerable value, the penalty is deprivation of freedom from 6 months to up to 5 years.
The court may also order forfeiture to the Treasury of materials and tools, as well as technical means that served or were intended to commit a crime. The forfeiture will cover such items even when they were not the property of the perpetrator.
It is also worth mentioning that it is punishable to cause the impression that a given sign is protected as a trademark. According to art. 308 PWP. Putting on the market of goods marked with a trademark with a distinguishing feature to cause the wrong opinion that these items benefit from such protection, is threatened with a fine.
In organizational units (e.g. companies), the person leading or managing the unit is liable, unless the division of competences results in the responsibility of another person.
Summary
The trademark is a key tool for building and brand protection – it gives legal entrepreneurs, the exclusive right to distinguish their goods and services from competition offers. Registration at the Patent Office of the Republic of Poland (in appropriate goods and service classes) provides ten-year, renewable protection in Poland, and in practice: the right to prohibit other use of misleading similar markings, demanding compensation or confiscation of fakes. The violation is assessed globally, taking into account the degree of similarity of signs, goods/services and the strength of the earlier sign – all through the prism of the risk that the average recipient will mistake the source of origin. That is why it is worth: consciously select and report a sign, monitor the market to quickly respond to potential collisions, and use the full range of civil claims and – if necessary – demand from the competent criminal action bodies. At each of these stages you can use the professional legal assistance of a lawyer, legal advisor or patent spokesperson.
dr Rafał R. Wasilewski – legal advisor, www.radcawasilewski.pl
