If you are working to market a product, you should consider how to protect it and avoid infringing on the intellectual property rights of others. It pays to start thinking about how you can effectively avoid infringement and respond to an attempted breach of your exclusivity space early in the planning phase. You need to be aware of your options and strategically choose the best path for a given product. The principles of protecting intellectual property rights are universal and also apply to entrepreneurs who choose to go online.
Before the start
First, the most important thing is to look at your product or service and learn the tools you can use to effectively protect your intellectual and industrial property.
In this article, we mainly focus on brands.
A trademark can be any sign that helps to distinguish one company’s goods from another company’s and that can also be registered in a trademark register. For example, a trademark can consist of words including surnames, drawings or graphics, letters, a combination of letters or numbers, colors, packaging or even sounds.
A well-chosen brand plays a significant role in the development of a company’s business strategy and, in relation to competitors, is a powerful marketing tool that helps a company succeed in the market.
Step 1 – Search
In order to consciously develop a strategy for protecting intellectual property in a company, it is worth having a trademark search carried out. Even if the sign has been developed with the greatest care, it cannot always function as a trademark. From a legal point of view, there are a number of requirements that a mark must meet in order to be registered and used safely in commerce. By researching the sign to be designed, you can estimate your chances of being registered and avoid collisions with trademarks that are already protected.
A trademark search is a search and analysis, carried out by patent attorneys, of earlier trademarks that are identical or similar to the named sign with regard to the risks associated with applying for trademark registration and trademark use. The search serves to check whether the entrepreneur who has already registered an identical or similar trademark to designate identical or similar goods and services is not entitled to any exclusive rights in this regard. If older similar signs are found, it is possible to change the mark itself or the list of goods and services in the application to increase your chances of protection and avoid a conflict when the product is already on the market. It is advisable to use the specialized services of patent attorneys for this purpose.
If the search leads to a positive result or the entrepreneur decides that he is ready to take the stated risk, he can proceed to the next step – the application.
STEP 2 – Application
First, we determine the scope of protection of the mark – we define it by specifying what goods or services the mark is intended to be used for. To do this, it is necessary to consider what is to be offered under the brand, but also in which direction the business can develop. It is better and cheaper to file a trademark application for the categories that may be introduced in the future as well, as scope extension after filing is no longer possible.
Another question to answer when applying for a trademark registration is where the goods or services will be offered. A trademark is protected in a specific territory. One is always tempted to protect it globally, unfortunately, although it is possible to adopt such a strategy, the cost for a start-up company may be too high to bear. The most frequently chosen solution is to register a trademark at national level in Poland or in the EU, the latter option offers you uniform protection in all countries of the European Union.
Why register a trademark? Registration confers on the trader a monopoly on the use of the sign in question and thus the right to prohibit other persons from using an identical or similar sign used to designate identical or similar goods/services where the use of such a sign could do so mislead an average consumer as to the origin of the goods. So the question is whether the customer could be confused when buying the goods or whether manufacturers could be linked.
This is a very effective law – the registered trademark is protected from the filing date and the registration procedure in the Polish or EU office takes about 4 months.
The property right is granted for 10 years and can be extended.
STEP 3 – Monitoring
The registration rights obtained are to be “guarded” later. The Office does not inform about subsequent registrations of trademarks that could be considered similar to ours. It is up to the entrepreneur to ensure that no one enters his area of protection. Violations can lead to harmful consequences. IP law firms offer services to monitor databases and notify clients about registrations of similar or identical trademarks.
Step 4 – Verification that the actions taken are lawful
The next step is to learn how the entrepreneur’s rights can be violated and how the entrepreneur can unknowingly violate someone else’s rights.
On the Internet, it often happens that an infringement of the law already takes place when a website is created. Choosing an Internet domain name should be done with great care. As part of the trademark search, it can also be checked whether the domain exists with a selected name. When registering domains, the rule is “first come, first served”. The right to use the Internet domain name is not checked in any way by the registrar. Should the chosen name nevertheless infringe the rights of another person to a trademark, the said person has the right first of all to demand the cessation of use of the name and the payment of the profit made or the payment of compensation for the unlawful use.
An infringement of rights can also result from the fact that goods are offered or sold that do not come from the trademark owner, but are nevertheless unlawfully marked with the trademark of this entrepreneur. Such products may be of inferior quality, contain substances hazardous to consumers, or may not meet safety standards. Selling non-genuine products can make the entrepreneur liable to the brand owner.
Another element of doing business that can cause problems is the way products are presented as part of online sales. When downloading photos and product descriptions from the manufacturer’s website, care should be taken to ensure that the manufacturer authorizes such activities or obtains its written consent. The use of the photos found on the Internet may expose the entrepreneur to liability for copyright infringement. It should be strongly emphasized that the assumption that what is provided on the Internet can be freely copied and used for business activities is wrong and such actions can expose the entrepreneur to liability, including financial ones.
The entrepreneur should regularly evaluate the activities carried out on the Internet. Nevertheless, when ordering a product that is to be sold later, it is recommended to check the seller and the country of purchase and to avoid buying, for example, on popular Chinese auction websites where the products are indicated as similar, almost the same. When presenting products, regardless of whether they were bought from a wholesaler or manufactured by an entrepreneur, you should have them photographed yourself, unless you have express permission, preferably in writing, to use photos from the Internet. Do not reference or compare other goods using trademarks or company names. If the use of a trademark is required, a word mark should be chosen rather than a figurative mark. The use of competitor names in Google Ads should also be avoided, as according to case law such action can be considered unfair competition or an infringement of intellectual property rights.
Step 5 – Prevent breaches
If the entrepreneur’s trademark rights are infringed upon by someone using a trademark owned by the entrepreneur in the name of an online domain, the entrepreneur can try to settle the matter amicably, ie through negotiation and contracting to obtain rights to the domain. He may also go to court and seek arbitration. The Arbitration Court for Internet Domains at the Polish Chamber of Information Technology and Telecommunications and the Arbitration Court at the National Chamber of Commerce in Warsaw are responsible for .pl domains.
In the event of infringement of trademark or copyrights to photos through publication without the consent of the author, the rights holder can also initiate civil legal action in addition to amicable negotiations.
In both cases, the entrepreneur is entitled, among other things, to assert claims before ordinary courts for injunctive relief, elimination of the consequences of tortious acts, compensation for damages on general terms or payment of unjustified profits.
Step 6 – Use of brand protection programs
A notable way for the entrepreneur to protect his rights is the support that the most popular online sales platforms offer to owners of registered intellectual property rights.
Some of the platforms make working with them conditional on proof that a given company takes active steps to protect its developed intellectual property, ie it has registered trademarks or industrial designs.
Joining trademark protection programs on such sales or auction platforms gives the entrepreneur the opportunity, for example, to report unauthorized use of the trademark owned by the entrepreneur and to request removal of a problematic listing or auction.
STEP 7 – Periodic review of rights
If you are active on the market, it is worthwhile checking your offer from time to time for the effectiveness of the protection granted and analyzing the intellectual property portfolio. Perhaps there is a need to secure the products in new territories, or perhaps the original application was too broad and the list or territories could be reduced, or perhaps there are new products or names that should be protected? Be sure to follow the renewal schedule or hire a specialized law firm to do the job.
The benefits of exclusivity are very tangible – apart from ensuring exclusivity of use, they increase the company’s reputation and value and are an excellent tool in your business strategy. Therefore, the support of specialist IP lawyers can be of enormous help in such important decisions.