TRADEMARK REGISTRATION.
who are we ?
We are a Polish IP boutique law firm with over fifteen years of experience in intellectual property law. We are recommended as specialists in the protection of trademarks in international legal rankings (WTR 1000, IP Stars). We offer comprehensive services in the field of trademark registration all over the world, including clearance search (availability), filing trademark application and registration, trademark monitoring, legal protection against collision marks (court litigation, litigation before the patent office - opposition, invalidation, revocation/cancellation). We collaborate with law firms around the world to ensure our clients brand protection in every corner of the planet.
HOW CAN WE HELP YOU WITH YOUR TRADEMARK:
- Examination of registrability and purity of new trade mark
- Filing for trademark protection (PL, EUIPO, UK, WIPO and worldwide), claiming priority, transfer of trademark ownership,
- Monitoring services
- Litigation, including opposition to registration, cancellation, revocation
- Litigation for trademark infringement, unfair competition
Stages of trade mark registration in Poland and EU
Study period (2 - 4 months)
The first step in registration is the examination period. The office examines the application in formal (whether the application has been filed correctly) and substantive (whether the registration of the mark is acceptable) terms.
Opposition period (3 months)
The second phase of registration is the opposition period. Third parties can file an opposition to the trade mark application (3 months).
Registration period (1-2 months)
The third stage of registration is the registration period. The Office issues a conditional decision on registration. After the first 10year period of protection has been paid, the Office publishes a notice of grant and issues a certificate of registration of the mark.
BRAND PROTECTION.
TRADEMARK INFRINGEMENT DISPUTES
Wiński Law Firm provides legal aid in the process of a company’s branding. We draft production contracts, licence contracts, and franchise networks, including full protection of rights to trademarks, know-how, business secrecy, confidentiality, and competitive clauses.
We represent our clients in court disputes over infringement of trademarks with regard to the case-law acquis of the Court of Justice of the European Union.
COMBATING PIRACY AND COUNTERFEITING
We offer legal aid in combating counterfeiting of brand-name products. We represent the client before customs authorities and common courts from the moment of reporting a suspicion of importing products infringing a trademark or an industrial design (the so-called fakes) until issuing a verdict prohibiting infringement and its debt enforcement proceedings. We monitor the market in terms of marketing the counterfeits of client’s original products. We cooperate with customs authorities. Through day-to-day contact we obtain information about customs detentions of pirated products. On the basis of such information, we engage in appropriate customs or court proceedings.
We organise legal service in combating counterfeiting also in Germany. Due to close cooperation with partner law firms, we are able to offer a full range of legal services related to customs detention of counterfeits and legal representation in the process of pursuing claims on this account.
Our clients include global and local manufacturers, product distributors, innovative companies, design companies, and advertising agencies.
our service standards
The basis of our cooperation with the client is good communication, understanding of needs and realistic feedback. We provide the customer with an accurate and realistic assessment of the case. We immediately take any necessary action. Our experience in this type of cases requires us to act aggressively if the state of the case or the attitude of the infringer requires it. Thanks to an efficient back office, the client receives regular reports on the status of the case, action plan, events during the proceedings and forecasts for the further course of the case. Wherever the status of a case depends on a court decision or the actions of the opposing party, we take reasonable steps and apply reasonable pressure to speed up the process.
FAQ
Word or logo trademark
In Poland, a trademark can be any sign capable of being represented graphically and enabling distinction of the goods or services of a given enterprise. The most frequently registered trademarks are word marks, word and figurative marks (logo).The Polish Patent Office generally refuses to register descriptive signs with low distinctiveness.The more fanciful and abstract the sign, the better
How long does it take to register a trade mark?
The standard trademark registration procedure, both in Poland and in the European Union, takes from 6 to 9 months on average. The length of the so called opposition period (always 3 months) is fixed by law.
Advantages of the trademark registration
- absolute protection of the mark on the territory of Poland, the European Union or any other country
- no legal risk of infringing third parties' rights (compensation and rebranding)
- security of expenditure on promotion and advertising
- possibility of tax depreciation of a trademark
- possibility to use the symbol ®
When will my logo/mark be protected?
A trade mark is protected from the date of application to the competent patent office if the right of protection is granted. This means that the protection of a trade mark extends from the date of application, but protection is only granted upon registration. Trade mark registration takes between 1 and 2 years in practice. Under certain conditions, a fast-track trade mark registration procedure is now also available.
Nice classification?
In Poland - as in the EUIPO - the Nice classification is used to designate goods and services of a trade mark. One classification system for goods and services facilitates the transfer and extension of trade mark protection to various territories.
Low cost
In Poland, two fees are charged for the registration of a trade mark (1) for the application - at the time of filing the application, (2) for the first 10-year period of protection - after the Office issues a conditional decision on registration.
Priority
In Poland, it is possible to apply for a trade mark with priority right according to the date of the first correct filing of a trade mark application in another country, if the application at the Polish Patent Office is filed within 6 months from that date. In order to exercise the priority right, it is necessary to provide the Polish Patent Office with evidence of prior registration of the mark in another country.
How long does the dispute before common court last ?
Opposition system
In Poland, trade mark registration is governed by an opposition system analogous to the EUIPO system in the European Union. The right holders must monitor new applications and oppose potentially conflicting marks themselves, as the office does not carry out an examination in this respect.
In the standard course of proceedings, the case is resolved approximately 1.5 to 2 years after it is initiated. Proceeding before a common court is very formalised. During such proceeding, there are a number of deadlines that cannot be skipped or shortened. Unlike the arbitration court, in the case of the ordinary court, the case is heard primarily at hearings, which are scheduled every few months.
What are the cost of the proceeding before common court ?
The costs of a proceeding before a common court depend on the number of claims (e.g. injunction for unfair competition, injunction for copyright infringement, injunction for violation of company rights, etc.) and the amount of possible claims for damages or compensation. For each claim (usually about 3 to 5 such claims), a fee of about EUR 80 is charged. However, monetary claims are charged a pro rata fee of about 5% (depending on the amount of the claim).
