When starting a business, an entrepreneur tries to make his goods or services associated with some catchy name to the public, so that the mere mention of it brings to mind the goods or services he offers. In a recent article, we touched on the issue of brand protection, the value of registering one’s business designation and the so-called distinctiveness of a trademark. All these issues are extremely important when we are just starting our business and coming up with a name for it, or when we are doing a so-called rebranding. This is because from the beginning of the activity we can come up with a designation that will meet the conditions for granting a trademark protection right.
Refusal of trademark registration
What if we have been operating in the market for several or more years, our brand is already more or less recognizable, and we have only now decided to secure our interest in protecting it? It would seem that nothing stands in the way – we apply to the Patent Office for protection “with what we have”. After such a long time in business, we don’t have the opportunity to think about whether our designation is non-descriptive or whether it has distinctiveness, because it would be pointless to change the name at this stage of business. However, not everything goes our way – the Patent Office refuses to register it, claiming that our designation does not meet the conditions for obtaining registration, as it is devoid of any distinctiveness and is descriptive in nature.
The Industrial Property Law clearly states, the Office will not grant the right of protection for signs:
- those unsuitable for distinguishing in trade the goods for which they were applied for – so-called non-distinctive signs, lacking distinctive capacity;
- consisting exclusively of elements capable of indicating, in particular, the type of goods, their origin, quality, quantity, value, intended use, method of manufacture, composition, function or suitability – so-called descriptive signs
- consisting exclusively of elements that have entered colloquial language or are customarily used in fair and established business practices.
We will not see any differentiation here based on the time of filing. Regardless of whether we have been on the market for a month or for 10 years – we are bound by the same rules regarding the registration of a trademark protection right – well, maybe almost the same.
Secondary distinctiveness
In the case of refusal to register a trademark, entities already operating in the market have another gateway of defense. Pursuant to Article 130 of the P.C.P., the right of protection under the aforementioned provisions may not be denied if, prior to the date of filing the trademark application with the Patent Office, the mark has acquired, through its use, distinctiveness under ordinary conditions of trade. What does this actually mean for us? One searches in vain for a legal definition of secondary distinctiveness. However, there is a consensus in the trade that secondary distinctiveness is a factual circumstance that should be demonstrated by the applicant in proceedings before the PPO for the granting of a trademark protection right. Thus, it is a fact to be evaluated on the basis of evidence that must be presented by the applicant. It is indicated that the applicant should therefore prove that:
- used the sign,
- used it as a trademark,
- used it in an intensive and prolonged manner,
- as a result of the use, a link has been established between the sign and the goods/services and between the goods/services and the applicant (his business).
Thus, the applicant should demonstrate that the average consumer of a given category of goods or services who is well-informed, reasonably attentive and cautious identifies the goods or services in question with a particular trader.
How to prove?
However, the above prerequisites for acquiring secondary distinctiveness must be thoroughly documented and duly proven. When completing the evidence, case law comes to the rescue. In the judgment of September 25, 2008. (VI SA/Wa 1144/08), the Regional Administrative Court indicated that evidence in proceedings for the acquisition of secondary distinctiveness can be, in particular:
- public opinion or market research;
- commercial documents, such as invoices, catalogs, price lists;
- annual reports, turnover data;
- materials confirming any means of advertising the sign in question (newspaper clippings, billboards, TV commercials);
- any evidence of the period, intensity and territorial scope of use of the designation.
What should be kept in mind when presenting evidence to the Authority? They should clearly indicate that they relate to the mark in question (the invoices relate to a particular sign, on the documents we use a particular sign), be clear, legible and, most importantly, dated. This is because the moment of acquisition of distinctiveness is assessed before the date of filing an application with the Polish Patent and Trademark Office. It is therefore possible to present such evidence that refers to a time before the trademark application. In addition, it should be borne in mind that the Office also examines the territorial scope of use of the sign in question (the sign should be used throughout the country, not only in the local market), the intensity of advertising and the expenditures made for this purpose, and the widespread method of distribution (it is not sufficient to use the sign only inside the enterprise or to make it available to consumers sporadically).
Brand protection is important. Every entrepreneur who has to face unfair competition knows this. What is certain is that it is never too late to apply for the protection of a mark in use, and appropriate evidence and precise argumentation can lead to the protection of even the most descriptive trademarks.
