An entrepreneur who takes a responsible approach to his business should remember that simply buying a domain name with the name of the business or registering one’s company in the Register of Entrepreneurs is not enough to effectively protect oneself from unlawful infringements and counterfeit products or services on the market. It is worthwhile to apply for trademark registration in a timely manner and not worry about the lack of protection for our business name.
What is a trademark?
Using the statutory definition – any sign that makes it possible to distinguish the goods / services of one enterprise from those of another enterprise is considered a trademark. Such a sign must, in addition, be capable of being represented in the register and should clearly and accurately indicate the object of protection.
So what can be such a sign? Here again the legislator comes to the rescue, pointing to: a word, including a name, a drawing, a letter, a number, a color, a spatial form, including the shape of goods or packaging, as well as a sound.
Can I claim every designation?
However, not every designation can obtain protection. Before choosing the name of the business, the goods produced or the services provided, it is important to remember that protection rights will not be granted for a designation that lacks distinctive character. What does this mean in practice? Protection cannot be claimed for a name that is non-distinctive or descriptive – it only conveys information about the services provided, relates to the origin or destination of the goods, and thus does not clearly identify the entrepreneur in the market.
Thus, a trademark must have characteristics that make it possible to individualize a given good or service in the market among goods and services of the same kind from another source. This is related to the basic function of a trademark, which is that it must have such characteristics that are intended to stick in the mind of the average consumer as an indication that the goods/services in question come from a particular entrepreneur. An entrepreneur who obtains trademark protection becomes the exclusive holder of the trademark. Reserving descriptive or indistinguishable trademarks would result in restricting the freedom of the market and access of other entrepreneurs to generic signs.
A trademark should therefore exhibit characteristics that distinguish it from other marks operating in the market for a particular category of goods or services. This means that the typically descriptive term “Apple” (English: “apple”) to designate goods in the field of electronics is not descriptive and has the distinctiveness required for trademark registration.
The association with goods/services can at most be allusive or suggestive, never literal. The connection between a trademark and the entrepreneur who uses it should be made through the process of intellectual association required in the viewer – a person seeing a trademark for the first time should not immediately know what business it refers to. It is only by association, additional markings and information that the brand can be attributed to a particular type of goods or services.
Examples from practice
Using a trademark search engine, we can easily see which trademarks have been granted protection and when such a right has been denied.
Trademarks have been deemed non-descriptive and therefore deserving of protection:
- CIEPŁA PODŁOGA for the designation of heating mats (WSA ruling of 14.11.2006, VI SA/WA 1705/06, Legalis);
- the designation BABY DRY for baby diapers (judgment of the ECJ of 20.9.2001, C-383/99 P, Procter & Gamble v. OHIM, ECR. 2001, p. I-6251);
- INDIAN STEAK for a restaurant designation (protection number: R.321772).
Exceptions?
However, it happens that ostensibly descriptive marks have been protected. This happens if the mark has secondary (concrete) distinctiveness and properly documents this before the authority. This topic will be discussed in more detail in the next article, but it can already be said that the use of a descriptive sign does not necessarily exclude the possibility of trademark protection.
Why is it worth reserving protection?
A trademark recognizable in the market reduces the risk of consumer confusion, and allows the entrepreneur to safely invest in brand development. By registering the sign early enough, we simultaneously check whether the name we have chosen is not already in circulation and whether our business will not infringe others’ rights. Before deciding on registration, it is worthwhile to make a thorough analysis of whether our designation can be registered for sure and in the scope of which services / goods we will be able to obtain protection.
