Category: News

Author: Nina Jankowska, Polish and European Trade Mark and Design Attorney

The process of choosing the name for one?s brand does not seem to be easy. The market of today is full of thousands of products and it is becoming more and more difficult to invent an original designation which could be easily distinguished from other names, and it would be catchy and quickly remembered by consumers. Apart from this, there is yet another issue to be checked: namely, whether an identical or similar name has already not been applier or registered on behalf of another party. To put it simply, the Applicants must also make sure if they are not infringing someone else?s prior rights, and automatically do not put themselves to the risk of generating unwanted legal costs.

What requirements must a name or logo fulfill in order to obtain registration?

Obtaining legal protection for a name or logo is possible through registration as a trademark. However, not every name and logo is suitable for registration. The Patent Office will register a trademark on condition that it fulfills the absolute and relative grounds of registration.

First and foremost, a trademark should be capable of being distinguished from other signs which are already used and registered, so that a consumer can distinguish the name and logo of one entrepreneur from those of others.

As regards the absolute grounds of registration, it is required that a trademark does not indicate directly the goods designated with the mark, or the services for advertising which it is used. In other words, a trademark shall not be descriptive in relation to the goods or services, for which it is intended.

For example, if one tried to register the word ?laptop? as a trademark for ?laptops or computers?, it would be denied registration as being descriptive and devoid of distinctive character. Another analogous example would be an application for registration of a trademark being the phrase ?The Best Apples? for apples or other fruit. Such mark, just as in the previous case, would be denied registration by the Patent Office.

A name applied for registration cannot also be composed of the elements which have already entered into common language, or are customarily used in fair and established trading practices.

What is also essential, one cannot create a trademark which is contrary to good morals, it offends religious beliefs, patriotic feelings, or national tradition…

Continue reading on IP-Blog.pl

New article on IP-Blog.pl by Nina Jankowska

In my previous publications on IP Blog I have already discussed the problems encountered by applicants in connection with registration of trademarks having some reference to hemp and cannabis (The symbol of cannabis is contrary to public policy and a trademark containing it cannot be registered in the European Union.A trademark cannot contain the symbol of cannabis. But is it always so sure?). This time I would like to present the case of three EUTMs and the most recent decisions of the EUIPO Board of Appeal concerning these marks, dating from the first quarter of 2021.

The first case concerns the trademark of the European Union WELL WEED no. EUTM 018282503:

The above trademark was applied by three physical persons from Sardinia, an Italian island in the Mediterranean. The application covers only two classes: 22 (cannabis) and 34 (tobacco and tobacco products (including tobacco substitutes).

The mark met with refusal of granting protection by EUIPO due to being contrary to public policy and accepted principles of morality, which exist in only part of the European Union (art. 7 par. 1 letter f) and art. 7 par. 2 of the Regulation (EU) 2017/1001 on the European Union Trademark).

Read the full article by Nina Jankowska on IP-Blog.pl

In order to patent a new chemical compound, which is to be used for medical purposes, it is necessary to present already in the patent application the results of a research confirming its therapeutic effects.

In the latest issue of the magazine “The World of Pharmaceutical Industry” (“Świat Przemysłu Farmaceutycznego”) Barbara Milczarek, a patent attorney at Patpol, discussed the obligation of a sufficient disclosure of invention in the context of the application procedures.

We invite you to read the full article in polish.

Author: Agnieszka Skrzypczak

On 24 March 2016 a Spanish company, Gaudí BCN Projects S.L., filed in EUIPO a trademark application no. 015270077 having the following representation:

The above mark was applied for services in class 35 (among others for ?sale in shops or via global telematic networks of promotional or advertising goods, works of art, craft objects, publications, cultural goods and, in general, goods relating to the life and work of the architect Antoni Gaudí?) and class 42 (including among others ?research relating to design and architecture; design services for architecture; expert opinion relating to technology; services for the provision of technological information?). The mark was registered by EUIPO on 29 July 2016.

Subsequently, on 28 November 2018 a Spanish foundation Junta Constructora del Temple Expiatori de la Sagrada Familia  (Fundación) filed in EUIPO a request for invalidation of the above mentioned trademark in whole in respect of all the services from classes 35 and 42.

The request for invalidation of the trademark EUTM 015270077 GAUDÍ ORIGINAL INSPIRATED was based upon art. 8(1)(b) CTMR, art. 8(5) CTMR, art 7(1)(g) CTMR, art. 60(1)(b) EUTMR, art. 60(1)(c) EUTMR, art. 58(1)(c) EUTMR and art. 60(1)(a) EUTMR. The party filing the request referred to the following prior rights as obstacles to the registration of the trademark  GAUDÍ ORIGINAL INSPIRATED:

1. Spanish trademark no. M 2 738 950 ANTONI  GAUDI registered in classes 38, 39 and 42;

2. Spanish trademark no. M 2 790 473    registered in classes 9,14, 16, 21, 25, 28, 35, 39, 41 and 43;

3. A European Union trademark no. EUTM 15141641 MUSEU GAUDI registered in classes 9, 16 and 41;

4. The right to the first and last name ?ANTONI GAUDI?;

5. The right to the personal image of ANTONI GAUDI;

The Invalidation Division of EUIPO, on 14 April 2020, issued a decision on invalidation of the trademark EUTM no. 015270077    in whole. The decision was based upon the collision with the earlier right to the surname.  On 1 June 2020, Gaudí BCN Projects S.L. from Spain filed an appeal against the above decision, however the EUIPO Board of Appeals by virtue of a decision no. R 1100/2020-5 of 29 January 2021 dismissed the appeal and sustained the decision on invalidation of the subject mark in whole in respect of all the services in classes 35 and 42.

The Board of Appeal argued in the reasons of its decision that the Opponent (Junta  Constructora del Temple Expiatori de la Sagrada Familia (Fundación)) in the discussed case for invalidation was authorized to represent the rights of Antonio Gaudí and may prohibit a third party from using a trademark including the aforesaid family name in Spain. Moreover, the Applicant (Gaudí BCN Projects S.L.) had not proved that he had the Opponent?s express consent to apply for a trademark including the surname GAUDI which is famous worldwide and in Spain.

How does it work in Poland?

Please read full article on IP-Blog.pl

We are happy to announce that Patpol has been awarded the title “Symbol of Effective Management 2021”!

For 11 years, the jury of the poll “Symbol of Effective Management 2021” has been awarding the companies and institutions that are characterized by innovative operation, specialist knowledge and remarkable experience. We would like to thank the jury for their appreciation!

On behalf of Patpol, the award will be received by Managing Director Izabella Dudek-Urbanowicz during the ceremony, which will be taking place on November 19, 2021 in Katowice.