Implementation of Trademark Directive (EU) 2015/2436 into Polish law brings new definition of trademark. According to the new wording of Polish Industrial Property Law, a trademark can be any designation that makes it possible to distinguish the goods of one enterprise from the goods of another enterprise and possible to present them in the register of trademarks in a way that makes it possible to determine the unambiguous and exact subject of the protection granted. The trademark may, in particular, include words, drawings, ornaments, colour arrangements, spatial forms, including the form of goods or their packaging, as well as melodies or other sound.
The abolition of the requirement of graphical representation of the trademark upon filing a trademark application is deemed as significant change of trademark regulation. The only requirement is the possibility of presentation of a trademark in a register in a manner allowing the authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. This opens up an easier way to register many unconventional characters such as holographic trademarks, sound trademarks and multimedia trademarks.
Below we present information on Polish Patent Office trademark representation requirements regarding new types of trademarks:
Sound trademark is a trademark that consist exclusively from sound or sounds combination.
The sound trademark should be presented by submitting either an audio file enabling the reproduction of the sound or by presenting audio by means of a record music (musical notation). The representation of sound trademark in the form of musical notation should therefore contain all elements necessary to interpret the melody, like key, tempo, text, if applicable. The presentation of sound trademark can be filed in the form of an MP3 (not bigger than 5MB) or JPEG file. The audio file can be filed on pendrive, CD or DVD. If the applicant files both the audio file and the musical notation, the Polish Patent Office will ask to choose one of the forms of representation of the trademark.
Polish Patent Office stays on the position that there is no need to file a trademark description of sound trademark as trademark presentation defines the subject of protection. Polish Patent Office notices that other ways of presentation of sound trademark, for example onomatopoeia, sonogram shall not be accepted because they are not be able to provide unambiguous and exact subject of the protection. Moreover, trademarks consisting of sound and other elements (for example movement) shall not qualify as sound trademarks, but will be considered as e.g. multimedia.
A motion trademark includes moving images, which can combine colors, sounds and aspects of product designs.
Before the amendment, these marks were often presented frame by frame, with a description of how the items moved. After the amendment, a motion mark shall be presented in the form of a video file (MP4 of up to 50 MB) or a series of consecutive still images showing movement or change in layout (JPEG). When paper trademark application is filed, the video file shall be filed on pendrive, CD or DVD. If still images are used, they shall be numbered, or listed in the order of appearance. The applicant may file a trademark description that shall be in accordance with trademark presentation and shall not extent the protection.
A multimedia mark is a combination of image and sound. It may also include other elements like words or graphics.
The multimedia mark shall be represented by submitting an audio-visual file containing the combination of the image and the sound. A mark of this kind must be submitted to the Polish Patent Office in an audiovisual file containing a combination of images and sounds. This means that multimedia trademarks shall be filed in the form of an MP4 file of up to 50 MB. When paper trademark application is filed, the video shall be filed on pendrive, CD or DVD.
Multimedia trademarks cannot be presented in the form of a fixed list images with the addition of an audio medium. They shall not be presented with the help of two media, of which one contains an audio file and the prints a graphic file. Polish Patent Office stays on the position that there is no need to file a trademark description of multimedia trademarks as trademark presentation defines the subject of protection.
A pattern mark consists exclusively of a set of elements which are regularly repeated.
As a representation of pattern trademark, Polish Patent Office accepts a reproduction or JPEG file format. With respect to this category of marks, the mark shall be represented by submitting a reproduction showing the pattern of repetition. The representation may be accompanied by a description detailing how its elements are repeated regularly.
The new wording of trademark definition may play a role in increasing the number of unconventional trademarks registered. However, we have not noticed significant increase of unconventional trademarks applications in Poland.
In continuation of this article, we will present information of representation requirements of other types of trademarks including holograms or positional trademarks and sum up table. Stay tuned.