Can a word be a trademark ?

Many companies dream of creating a trademark that is easily recognisable and associated with their product or service. However, such a strategy does not always pay off. Sometimes a trademark can become so popular that it starts to function as a generic name and loses its legal protection. Trademarks are signs that serve to identify the products or services of a particular trader in the marketplace. These marks can take many forms, such as words, graphics, colours, sounds or shapes.

Trademarks are important for building a brand’s image and reputation, as well as for protecting an entrepreneur’s industrial property rights. To obtain the right of protection for a trademark, an application must be filed with the Polish Patent Office (Urząd Patentowy) and the specific goods or services to be protected by the trademark must be indicated in this application. The right of protection for a trademark may be granted to only one holder or to several holders jointly, depending on the type of the mark and the nature of the entities.

InPost is fighting to retain its trademark ‘paczkomat’ (parcel machine). This is a combination of the words ‘paczka’ (parcel) and ‘automat’, which directly indicates the characteristics of a device for sorting and dispensing parcels. The mark was registered by the Patent Office in 2010, but has since started to be used by other companies and consumers to denote this type of device.

InPost claims that this is an infringement of its rights and is demanding that competitors and the media stop using the word ‘paczkomat’. However, it is not that simple. According to the law, a trademark must have conceptual sameness in relation to a good or service, and cannot indicate their characteristics or features. If a trademark becomes generic, it loses its protection and can be used by anyone. This risk is particularly true for companies that market new and innovative products or services. The more original a product is, the more difficult it is to come up with a non-descriptive name for it. And the catchier the name, the greater the chance that it will become widespread and degenerate.

Therefore, companies should be careful when choosing a trademark and take care to protect it. It is not enough to register a mark with the Patent Office, it is also necessary to monitor its use in the market and take action against its abuse. Consumers and the media also need to be educated about the correct variety and spelling of a trademark. A catchy trademark can be a trap, but also an opportunity for success. It all depends on how the company uses it and takes care to protect it.

Do you have any doubts about trademarks ? Contact us !

tel. (+48) 536 34 34 32

sekretariat@blumski.pl

Our law firm is experienced in trademark registration, and this experience is backed up by practice in civil litigation and a matter-of-fact approach to legal matters.