Thanks to Poland’s membership in the European
Union, Polish undertakings have an opportunity to
employ an interesting vehicle for protection of
their trademarks, namely the Community Trade
Mark (“CTM”). The CTM offers certain features that
are of significance for undertakings: they vest the
registered owner of the trade mark with the
exclusive right to use it, while at the same time
prohibiting any third parties from doing so. The
scope of protection extends to the entire EU.
The detailed provisions on the Community trade
mark are laid down under Council Regulation (EC) No. 207/2009 of 26 February 2009 on the
Community trade mark. The Community trade
marks are registered with the Office for
Harmonisation in the Internal Market (OHIM), which
is located in Alicante, Spain; however, in the case
of infringement of the CTM rights by a third party,
the owner is able to enforce its claims only before a
domestic court: Regional Court in Warsaw – Court
for Community Trade Marks and Industrial Designs.
The Community trade mark may be comprised of
any marking which can be presented in a graphic
form, in particular of words (including names),
drawings, letters, digits, shape of the product or
packaging thereof, as long as such marking enables
differentiation of goods or services of one
undertaking from those of other businesses. The
granting of CTM protection means that the owner is
vested with the exclusive right to use the trade
mark as part of its business operations within the
EU. The trade mark owner can have third parties
which do not have his consent enjoined from
placing the trade mark on goods or packaging
thereof, offer goods, place them on the market, or
store them under the same trade mark, import or
export goods under the same trade mark, use the
trade mark in commercial documents and in
advertising.
It should be noted that the CTM protection is
effective not only in the event a third party
infringes on the rights of the CTM owner by using
the same trade mark, but also when trade marks
that are only similar to the CTM are used for
identical/similar products to the ones enjoying the
protection.
The term of protection offered by the CTM
registration is 10 years. The period may be
extended by further ten-year increments. The trade
mark owner is required to actually use it over a
period of 5 years from registration. Otherwise, the
owner may lose the CTM protection rights. Pursuant
to the Regulation, the rights arising under the CTM
are transferrable and can be for example
encumbered with a pledge in accordance with the
national legislation.
The application for registration of a Community
trade mark can be filed both directly with OHIM in
Alicante, Spain, and through the Polish Patent
Office, which is required to pass it on to OHIM. A
registration application filed with the Polish Patent
Office produces the same effect as if filed on the
same day with OHIM. However, if the application is
forwarded by the Polish Patent Office after expiry
of two months from the date of receipt, it is
deemed to have been submitted on the date on
which it is received by OHIM. In the course of the
registration procedure, detailed checks are carried
out to ensure if the same or a similar trade marks
do not happen to have been already granted
protection. A valid CTM registration vests the owner
with trade mark protection rights in all the EU
member states. The cost of obtaining the CTM
protection is lower than the cost the owner would
have to pay to obtain protection rights to its trade
mark in all the member states under their
respective national regulations.
In the face of the continuous increase in the
volumes of Polish exports to the European markets
it may be worthwhile to consider obtaining
effective and inexpensive protection of one’s trade
marks throughout the European Union.
MILLER, CANFIELD,
W. BABICKI, A. CHEŁCHOWSKI I WSPÓLNICY SP.K.
ul. Batorego 28-32
81-366 Gdynia
Tel. +48 58 782-0050
Fax +48 58 782-0060
gdynia@pl.millercanfield.com
ul. Nowogrodzka 11
00-513 Warszawa
Tel. +48 22 447-4300
Fax +48 22 447-4301
warszawa@pl.millercanfield.com
ul. Skarbowców 23a
53-125 Wrocław
Tel. +48 71 780-3100
Fax +48 71 780-3101
wroclaw@pl.millercanfield.com
Disclaimer: This publication has been prepared for clients and professional associates of Miller Canfield. It is intended to provide only a summary
of certain recent legal developments of selected areas of law. For this reason the information contained in this publication should not form the
basis of any decision as to a particular course of action; nor should it be relied on as legal advice or regarded as a substitute for detailed advice in
individual cases. The services of a competent professional adviser should be obtained in each instance so that the applicability of the relevant
legislation or other legal development to the particular facts can be verified.