Legal protection over designations characteristic for an enterprise, services or goods may grant numerous privileges. This is the best tool to prevent your competitors from using your trademark. The trademark market is wide and rich and the decisions taken at the very beginning of the registration process are likely to bring about inevitable consequences.
Various systems of protection
Trademark protection is of territorial character. What it means is that by filing for protection within one territory only, we may obtain the right within that particular territory and not in the whole world. We may choose among the systems composed of either individual countries or groups of countries. Each system is governed by its own rules, including fees which are different for every system.
1. The national protection
There are 3 different systems of protection by which you can protect your designation. The first one is the national system.
The system allows to have a trademark protected in one, chosen country. There are different offices responsible for providing such system of protection and granting exclusive rights.
The place where to file the application
In Poland an institution responsible for these matters is Polish Patent Office. On its website (provided also in English) one can find information on crucial topics, inter alia the duties of applicant and templates of applications.
The territory of protection
Positive completion of the application process rewards you with an exclusive right for a trademark. From now on it will be protected within the territory of Poland.
Expenses
The one-off fee for filling an application in Polish Patent Office is 450 zł (paper form) or 400 zł (electronic form) in case you file for protection in one Nice class only. Supposing you wish to have your trademark protected in more classes, then every class costs 120 zł extra. The fee table for other services is available on Polish Patent Office website.
2. The regional protection
The next system of trademark protection one can choose is the regional protection. In this system you are able to obtain a right in the whole area by filling only one application in one institution only.
There are several regional systems of protection, including the European Union system and the Benelux system of trademark protection.
The most popular regional system among Polish applicants is trademark protection within the European Union.
The place where to file the application
An office which enables applicants to obtain protection within EU is EUIPO (European Union Intellectual Property Office). Here you can find all the needed information regarding application process and application templates. EUIPO, except for the standard procedure, offers so-called Fast Track procedure which allows to obtain the protection sooner (even in one month).
The territory of protection
The protection spreads over all the 28 Member States of the European Union. In order to obtain the right within the whole EU, one needs to fill in only one application. None of later actions are required; your trademark is granted the protection as EUIPO issues the decision.
Expenses
The expenses of registering trademark are higher than those in national procedure. The one-off fee for filling in an application is 850 euro for every Nice class if done via electronic form (if you wish to hand in the application in person in the EUIPO’s headquarters in Alicante, then the fee is 150 euro more). The Office extra charges for every additional class.
3. The international protection
This system seeks to grant an exclusive right within the territory of the countries worldwide which form contracting parties to Madrid Agreement. The procedure consists of several steps.
The place where to file the application
The responsible office is WIPO (World Intellectual Property Organisation). In order to be granted an international protection, one has to submit an application to the state office of the country of his origin (more information about the country of one’s origin to be found here). In case of Poland being the country of origin, the international application should be filed to WIPO Office in Geneva via Polish Patent Office.
An application in English or in French with the list of demanded countries of protection should be filed. The templates are given on WIPO website. In the case of standard applications (again when Poland is the country of origin) the MM2 template should be used.
After WIPO’s formal verification of the application, it is submitted to the state offices which are to decide on whether to grant the protection. The decision is based on the legal acts of the country of origin. As soon as the right is granted by the state office, an applicant obtains the protection in the chosen country.
The territory of protection
The applicant chooses the countries he wishes to have his trademark protected from a group of 114 contracting parties to the Madrid Agreement. The protection is granted in every country declared after so-called validation – activation of a right.
Expenses
The expenses defrayed in relation to the procedure in WIPO are the highest comparing to those in two other procedures. The applicant has to pay the first instalment, supposing that the country of origin is Poland, of 600 zł to the Polish Patent Office. Secondly, one is charged a fee of 653 or 903 swiss francs, depending on the trademark’s colour. The tables with other expenses, included additional costs for an application for more than three Nice classes, were given here.
The choice of the system of protection over a trademark
A choice of the most appropriate system of protection may be determined by many factors. One should bear in mind the markets his goods or services will be available on and the possible profits of protection on every market. Moreover, what has to be remembered if considering international protection, are the requirements needed in every country of protection.
The strategy of intellectual property protection should be precisely set out. Possible mistakes may ruin business’ good will and impose high fines on entrepreneurs.