Author: Patpol

The owner of a registered trademark acquires the exclusive right to use the sign in a commercial or professional manner in a particular territory. In the aforesaid context, the use means the following:

? Affixing the sign to the protected goods or their packaging, offering and placing these goods on the market, importing or exporting them, and storing them for the purpose of offering and placing them on the market, as well as offering or providing services under the mark;

? Placing the mark on documents related to the marketing of goods or related to the provision of services;

? Using it for advertising purposes.

A person, whose right of protection for a trademark has been infringed, may demand that the infringer desist from infringement, surrender the wrongfully obtained benefits, and in the case of a culpable infringement ? also compensate for the damage caused on general terms, or by paying a sum of money in the amount corresponding to the license fee or other appropriate remuneration. The court, deciding on the infringement, may also decide to reveal to the public a part or the whole of its decision, or publish information about the decision. If the infringement is not culpable, the court may also order the infringer to pay an appropriate sum of money to the right holder. The court may also rule on the unlawfully designated goods being the property of the infringer, as well as the means and materials used to designate them, in particular the ruling may concern their withdrawal from the market, awarding the right holder a sum of money granted to his benefit, or destruction of the goods in question. As it can be seen, the catalog of claims available to the owner of a registered trademark is fairly wide.

Continue reading on IP-Blog.pl

Author: Joanna Rafalska, Polish and European Trade Mark and Design Attorney

When a party is considering to apply for trademark registration, it is important to remember about the obligation that rests upon the right holder to put the mark to genuine use. What is essential, the use will only be recognized as genuine, if a number of specific criteria are fulfilled. The above issue was the subject of a decision of the Fifth Board of Appeals of EUIPO as of November 25, 2021, in the case with reference number R 578/2021-5 concerning an appeal filed in the proceedings for declaring lapse of a trademark of the European Union No. EUTM 1264183. 

The trademark EUTM 1264183    was applied on August 2, 1999 for the following goods and services:

Class 18: leather and imitation leather and products made of these materials not included in other classes; animal skins; handbags, trunks and travel bags; umbrellas, sunshades and walking sticks; whips, harness and saddlery;

Class 25: clothing, footwear, headgear;

Class 39: transportation, packaging, distribution and storage of leather and imitation leather, products made from these materials, hides and animal skins, bags, trunks, travel bags, sunshades, walking sticks, whips, harness and saddlery products, clothing, footwear and headgear.

The subject mark was subsequently registered on August 1, 2000.

On November 4, 2019, a request was filed in the EUIPO for declaring lapse of the subject mark for all the above mentioned goods and services. The request was recognized by the Office as justified in whole.

Given the date of registration and the date of filing the request, the owner of the mark had to prove its genuine use from November 4, 2014 up to and including November 3, 2019.

Continue reading on IP-Blog.pl

Author: Agnieszka Skrzypczak

Obtaining the right from registration of a trademark, whether it is a European Union trademark (EUTM) or a trademark registered at the Polish Patent Office, on one hand provides a wide range of possibilities for building and securing the potential of one?s mark, and gives access to many opportunities arising from ownership of industrial property rights, but on the other hand it also requires some commitment on the part of the trademark holder.

The strategy of management of a protected trademark depends on the owner of the mark. It is determined by a number of factors, such as the owner?s areas of interest, the company of the owner and his portfolio of industrial property rights.

In general, one should remember about three fundamental issues to be taken into consideration after registration:

A trademark, which has obtained protection, must be put to genuine use!

As it has been mentioned above, rights are accompanied by obligations. The right granted in trademark registration (or trademark protection right, as it is defined under the Polish Industrial Property Law) is a powerful tool to build the position of the mark on the market. However, the monopoly held by the owner should serve a specific purpose, otherwise the owner risks losing it.

The key role of a trademark is to distinguish the goods and/or services of the right holder from those offered by competitors in the market. Therefore, it is required that a protected trademark is put to genuine use. If it is not used by the right holder, some third parties may challenge toe holder?s right to the trademark on the grounds of non-use. The relevant regulations stipulate that a EU trademark or a national mark must be used in a genuine way in the European Union or in Poland for five years after registration (the moment of obtaining the right of protection).

According to the Law on Industrial Property ? the right of protection for a trademark may be revoked in consequence of the following:

? the loss by the mark of distinctive features due to the fact that, as a result of the right holder?s actions or negligence, it has become a customary sign in trade ? consisting only of elements that can be used in trade to indicate, in particular, the kind of goods, their quality, quantity, price, purpose, manner, time or place of manufacture, composition, function or usefulness ? in relation to the goods, for which it was registered;

? the actions of the right holder or, with his consent, the actions of third parties, when the trademark is likely to mislead the public, in particular as to the nature, characteristics or geographical origin of the designated goods;

? deletion from the relevant register of the entity with legal personality that was the holder of the trademark protection right.

What is the use of a trademark?

Continue reading on IP-Blog.pl

Life Sciences IP Summit, which is an international meeting of patent attorneys dealing on a daily basis with inventions in the field of life sciences, is just behind us.

The two-day conference was devoted to discussing the current and planned IP regulations, with particular emphasis on the Supplementary Protection Certificate (SPC) procedure for medicinal or plant protection products.

The participants of the event also had the opportunity to take part in a joint sightseeing tour of Munich and numerous networking meetings.

During this year’s conference, Patpol was represented by dr Katarzyna Jedynak.

World Trademark Review has announced its recommendations in the prestigious WTR Global Leaders 2022 ranking.

We are very happy to inform that Joanna Piłka, a patent attorney from trademark and industrial design department at Patpol, is among the recommended specialists from around the world.

Congratulations to Joanna, we wish her further success!

As it befits the jubilee, the hundredth Pharmaceutical Trade Mark Group (PTMG) Conference was filled with unique attractions and panels, combining substantive issues with fruitful networking.

Debates and lectures were focused on improving the quality and effectiveness of trademark protection on the medical and pharmaceutical market, as well as on the current issues related to the crisis, sanctions and new legislation in the US and the Middle East.

We are glad that we could meet our clients and colleagues from IP branch once again! And all this took place in the scenery of the beautiful city of Lisbon.

During the event, our company was represented by Izabella Dudek-Urbanowicz, Managing Director of Patpol.

We are pleased to announce that Nina Jankowska has been awarded in the prestigious international IP STARS ranking as Rising Star 2022?

Nina is a part of a Patpol team since 2015, and in September 2021 she completed with success attorneys exams and become a trademark and design attorney.

On a daily basis, she represents Patpol?s Polish and foreign clients in proceedings regarding trademarks and industrial designs before the Polish Patent Office (UPRP) and the European Union Intellectual Property Office (EUIPO). She also prepares applications for industrial designs and trademarks in international procedure. She is a graduate of the Warsaw School of Economics and a fourth-year law student at the Kozminski University.

The award is a great confirmation of Nina?s everyday hard work for our clients.

Congratulations and we look forward to further successes!

In a week, members of the Supervisory Board and ECTA Committees will meet in charming Ljubljana!

Joanna Piłka, will represent Patpol ? as she has been doing for many years ? by participating in ECTA Design Committee which is dealing with industrial designs cases and law.

During panels and meetings, the delegates will focus on current issues concerning intellectual property in Europe, discuss the strategic plans of the Association, ongoing projects and the latest IP developments.

See you in Ljubljana!

It has been a wonderful time in Madrid. We are glad that after so many months we were able to meet again in such a large group of friends and also make new business acquaintances.

Thank you for inspiring lectures, dynamic debates and lots of good energy.

During the conference, Patpol was represented by Aleksandra Kryśka, Deputy Manager of the Department of Trademarks and Industrial Designs, and Jakub Słupski, attorney at Patpol Legal.

See you next year.