An amendment of the Industrial Property Law enacted on February 20th, 2019, constituting implementation of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015, aiming at approximation of the Member States’ laws on trademarks, introduced a new definition of trademark.
Discontinuation of the Graphical Presentation Requirement
One of the key changes introduced by the amendment is discontinuation of the graphical presentation requirement, which was included into the previous definition of the trademark. Discontinuation of that requirement allows to file applications for registration of new trademarks types, which before was not allowed by the Polish law. Therefore, the new Article 120 of the Industrial Property Law stipulates:
- A trade mark may be any marking capable of being represented graphically if it is capable of distinguishing the goods or services of one undertaking from those of another.
- A trade mark, within the meaning of section 1, may in particular be words, drawings, ornaments, combinations of colors, spatial forms, including the form of goods or of their packaging, and also melodies or other acoustic sounds.
According to the above definition, there is no need to present trademark in the graphic form. However, in order to enable the relevant state organs and public to determine clear and accurate subject of the protection granted to the right holder, it has been determined that trademark can be presented in any form, with use of publicly available technique, only if it can be reproduced in the register in clear, precise, independent, accessible, understandable, durable and objective way. The above mentioned criteria has been settled in the case law, i. a. in the judgment of December 12th, 2002, in the case C-273 Sieckmann, as well as indicated in the preamble of the above mentioned directive.
However, it has to be remembered that every marking which is intended to be subject of the protection, should have distinctiveness and should be able to be perceived in an uniform cognitive act. Application for trademarks registrations are examined by the Polish Patent Office in the legal-formal as well as substantive aspect. Discontinuation of the graphical presentation does not mean that the other obstacles to trademark registration shall not apply. Before applying for trademark registration, you should still remember about that few general rules.
Types of Trademark
According to the amendment, the following types of trademarks can be registered:
- word mark,
- figurative mark,
- figurative mark containing word elements,
- shape mark,
- color / color combination mark,
- position mark,
- sound mark,
- pattern mark,
- motion mark,
- multimedia mark,
- hologram mark,
- other mark.
Word mark is a mark consisting exclusively of words or letters of Latin alphabet (upper and lower case), digits, other standard typographic characters or combination of them. Word trademark should be presented in the application by presenting the mark in standard transcription and layout, without any graphic elements or colors – in case of word marks, words itself are the subject of protection. It should be also remembered, that a mark being a standard text in not standard layout, e.g. vertically, diagonally or with use of not standard font, may be considered to be a figurative mark containing word elements.
Figurative mark consists of not standard typographic characters, styling or layouts of graphic elements, also with use of colors. Figurative trademark should be presented by reproduction of the mark showing all of its elements and – in the relevant case – its colors, but it has to be remembered that a combination of colors in the mark being only their connection, may be considered to be a color / color combination mark.
Figurative Trademark Containing Word Elements
Figurative mark containing word elements is a mark consisting of word and graphic elements connection, also with the use of colors. A figurative trademark containing word elements may constitute a combination of graphic and word elements, word elements written by not standard font or in not standard color, word elements presented in not standard layout, letters other than Latin and a combination of the above elements.
Shape mark is a mark which comprises or consist of three dimensional shape, e.g. box, packing, product itself or look of such things. A shape trademark may constitute a combination of shape with other elements such as word elements, graphic elements, tags etc.
Color / Color Combination
Color trademark is a mark consisting of one color or color combination without contours. In the scope of color trademarks, graphical presentation has to be of precise and durable character. A combination of two or more colors, determine in abstractive way and without contours, should be described by accurate instructions determining constant way of matching the colors.
Position mark is a mark showing in the particular way the mark position on the product. A position trademark should be presented in the application by showing its exact position and size or proportions to the product. Elements not being the subject of the application for registration, should be marked as excluded by the dotted line. A precise description of the mark placement on the product, should be attached to the application.
Sound mark is a mark which consist of sound or a combination of sounds. To the application for registration an audio file or a musical notation (musical scores) should be attached.
Pattern mark is a mark exclusively consisting of a set of regularly repeating elements. This kind of trademark may cover any type of products and services, however most often it concerns products such as paper, fabric, clothing, leather goods, jewelry, wallpaper, furniture, tiles, tires, building material etc. Pattern should be presented in the application as repeating layout of elements (a description explaining how the elements are repeating regularly may be attached).
Motion mark consist of, or extends to, a particular movement or a change of position of the mark elements. Apart form the motion itself, the mark may also include words, graphic elements and animated characters. The motion trademark should be presented in the application by a video or a series of still subsequent images, showing the movement or change of the position (in the event of use of still images, the should be numbered or accompanied with a description explaining their order).
Multimedia mark is a mark consisting of, or extending to, a combination of image and sound. Apart form the image and sound, the mark may also contain words, graphic elements etc. The multimedia trademark should be presented in the audiovisual file containing a combination of image and sound.
Hologram is a mark consisting of elements with holographic characteristics. Hologram trademark should be presented by video, graphic or photographic file containing frames indispensable to show the whole holographic effect in the proper way.