Trademark registration – is your business protected?

A registered trademark protects you from unfair competitors. When you face unfair competition practices, time is of the essence. The parent office does not check if the entity which registers a trademark has the relevant rights. The patent office also does not check if you are the actual owner of the trademark. An unfair entity that has an official decision of the patent office may not only use your logo, but also your market position by offering its own products and services. This may adversely affect your image. To recover protection and force the dishonest player to stop using your trademark, you may need to go through lengthy and costly proceedings in the patent office.

Once you register your trademark, your protection against unlawful use of your trademark will be easier to enforce.

A trademark is also an enterprise’s asset. Depending on the reputation, brand and market position, it may as well be an investment. Registered trademarks may be licensed out or even sold. In this way, the potential buyer reduces the costs of launching a new product or service on the market.

The case of one of our clients can serve as an example of adverse consequences of not registering a trademark.

A board president applied to the patent office to register the trademark of the company he managed. The trademark was the company's business name. There would be nothing wrong about it if it had not been for the fact that the registration was for the president directly instead of the company. The patent office does not check who actually has the rights to the trademark, but only if the trademark has been registered already. Consequently, the patent office registered the trademark, and the rights to dispose of it belonged to the company’s president, who no longer served that function when the trademark was officially registered. One year after the trademark registration the president offered the company to resell the rights to the trademark for half a million Polish zloty.

On behalf of the client, we requested that the rights to the trademark registered by the former board president be invalidated. We argued, among other things, that the registered trademark was in essence the last name of one of the shareholders. The trademark was registered without the shareholder's knowledge and consent in order to misappropriate the rights to the trademark and the company's business name.  Furthermore, the registration of a trademark containing the shareholder's last name without his knowledge and consent breached his personal rights. Trademark registration for speculation purposes, without the intention to use it but only to obtain a financial gain, strongly suggests a bad will of the applicant.

The patent office accepted our arguments and the evidence we presented. The proceedings lasted more than two years and consumed serious money to invalidate the trademark registration and then to register the trademark in the company’s name.

This case shows the consequences of a failure to register a trademark. That is why we recommend using the opportunity to protect your rights to e.g. company name or logo. If a third party infringes on a trademark, the trademark owner has the protection right and may ask the violator to:

Rödl & Partner offers assistance in determining whether your trademark may be registered and, if so, in handling all registration formalities. We also represent our clients in proceedings before the patent office.

If you would like to know more on that subject, please contact our experts – they will be happy to answer all your questions.