Why is it worth it?
Because it’s good to follow the old saying: better be safe than sorry/ forewarned is forearmed. There is no doubt that trade mark protection has many advantages. By registering, you obtain exclusivity to use your trade mark, increase the reputation of your brand, and you can grant a paid license for the use of your trade mark by others.
The main advantages of trade mark protection include:
- Extensive, officially certified legal protection indicating the specific time periods in which you use the trade mark (10 years +), the territory (Poland / European Union / World) in which it is valid and all the goods / services you apply for. This gives you a significant advantage in case of litigation and the possibility to pursue claims against infringers.
- Marketing aspects – using the „R” label symbolizes the formal right to a brand, so that you become its actual owner. R-ka increases the trust of customers and business partners and strengthens the company’s image.
- In case you do not want another company to use your name for marketing purposes, we offer protection of the Internet domain and the possibility to block text ads such as AdWords and Facebook fan pages containing the trade mark.
- The possibility of securing an advertising slogan that is not copyrighted.
- An opportunity to create a secure, legitimate franchise network.
- Obtaining compensation for trademark infringement and monetizing on trademark licensing.
- Possibility to indicate the goods or services that you do not yet offer (you then have 5 years to enter the indicated industries).
- Transfer of the company’s brand rights directly to the family after the owner’s death. Without the registration, these rights disappear with the owner, which forces the family to start a new business „from scratch”.
How much does trade mark registration (reservation) cost?
The amount of fees primarily depends on the territories of the countries where your trade mark registration will be valid. It can only be in Poland, the European Union or selected countries of the world (there are about 100 of them in the available pool). The costs incurred by the entrepreneur are related to both the processing of the application (filing) and the protection of the trade mark.
Trademark registration in Poland
The procedure takes about 6 months. Registration should be done at the Patent Office of the Republic of Poland (UP RP) (Warsaw).
- The fee for filing a trade mark application under one class is PLN 450, if the application is filed in person; or PLN 400 if the application is filed online. The fee for each additional class is 120 zł.
- For the protection of each class for a period of 10 years, the cost is 400 zł, and for the publication of information about claiming the right – 90 zł.
Trademark registration in the European Union
In this case, the given figures refer to both the application and a protection period of 10 years.
- The application of a trademark in the first class costs EUR 1,000, electronically EUR 850.
- The fee for the second class is EUR 50, and for each additional class – EUR 150.
The procedure takes between 4 and 5 months. The application is examined by the European Union Intellectual Property Office (EUIPO) based in Spain.
Protection extension to selected countries in the world
If you are the owner of a registered trade name in Poland or in the EU, you can also apply for a protection extension to other, selected countries. In this case, an application should be filed with the World Intellectual Property Organisation (WIPO) based in Switzerland.
Please note that some countries may additionally require special individual fees.
- Filing and protection for up to three trademark classes: CHF 903 (Swiss Franc) for a coloured mark, CHF 653 for a non-coloured mark.
- For each class exceeding three and for each indicated country – 100 CHF.
Word trademark or word and figurative trademark
Choosing between a trademark and a word and figurative mark is one of the most important matters you should consider when registering. You need to know that each of these certificates includes different forms of protection. Therefore, when making your decision, take into account your individual situation and the real needs of your company.
Both of the solutions have certain advantages and disadvantages.
A word mark protects only the word or words against aural similarity (phonetics), without regard to the graphic design (logo). Therefore, it is suitable for those situations where we only have to deal with a unique name.
This form of protection enables :
- Securing the website domain,
- Forcing another company to change its brand name, even if it is only similar to yours (also if it has a completely different logo),
- Blocking AdWords ads containing your brand name, as well as offers on platforms such as Allegro or OLX – without having to refer the matter to court (!),
- Using the R symbol, which increases your prestige and trust in the eyes of consumers,
- Easier rebranding, i.e. change of logo and graphic design without having to file a new application.
Of course, a disadvantage in this case may be the situation in which the competition uses a similar graphic design and a different, not similar-sounding trade name – then this protection will be of little use. Moreover, in some cases obtaining consent for registration may be difficult, e.g. when we are dealing with general terms.
A word and figurative mark is registered when the company’s logo is unique and worth protecting. Otherwise, the abuse and misuse of similar graphics, signs, product labels, etc. can occur, leading to the impersonation of a more well-known brand and confusing consumers.
This form of protection enables you to prohibit the use of signs similar to your company’s graphic design. The word and figurative mark is also easier to register and is a viable alternative for businesses unable to register the name itself because it is too general.
However, a word and figurative mark slightly complicates a possible rebranding. When changing/updating the company logo, you will be forced to re-register it. It is often more difficult (although not impossible) to enforce rights against those companies that are similar, primarily in a phonetic context, to your brand.
In conclusion, in many cases the most sensible solution turns out to be the choice of both forms of protection. Especially if you care about full, comprehensive protection. Only then can you be sure that both the name and the graphic design will be almost inviolable by the competition.
However, remember that everything depends on the individual needs of each company and the market area in which it operates. Therefore, if you are still hesitating and do not know which option suits you best, take advantage of the RPMS qualified advisors.
What are the penalties for trademark infringement?
Before you start promoting your name and logo, make sure it does not already exist and has not been registered with the Patent Office. Otherwise you are risking a lot.
The simplest and most common claim is prohibiting the further use of a registered trademark. Entrepreneurs decide on such action mainly because: it is easy to obtain and you do not require proof of fault; you incur fewer court fees because winning an injunction does not require indicating the amount of damages; and once the case is approved by the court, the court’s ruling opens the way to filing a lawsuit for financial claims.
Among the main repercussions of trade mark infringement is the obligation to return the unduly profits, obtained by using a name or a graphic similar to the one registered by another company. However, in such situations, we are much more likely to see a royalty, as this argumentation form is better perceived by the court. What does it consist of? The owner of a registered trademark may grant licenses for its use by other parties. Therefore, if the rights are infringed, they usually apply a claim for damages, i.e. they demand the payment of remuneration or a monetary amount, equivalent to the license fee.
In addition, the trade mark holder may use a number of preventive claims, such as requesting that the entity in question cease its infringing activities or that items containing the particular trade mark be withdrawn and destroyed.