Polish trademark law is codified in the Industrial Property Law Act (“IPLA”). Under IPLA, any sign which is capable of being represented graphically and of distinguishing the goods of one undertaking from those of another undertaking may be a trademark. The first thing that usually comes to your mind when you think of a trademark is logo. Indeed, statistically speaking, most trademarks are graphical marks or word and device marks. These kinds are called traditional trademarks. However, IPLA allows also other forms of trademark, provided they are capable of being represented graphically. This is where Polish law differs from the European Union law on Union trademarks contained in Regulation 2017/1001, which has recently abandoned the requirement of graphic representation and instead requires the sign to be capable of being represented on the register “in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.
Polish trademark law permits the registration of not only words, designs and ornaments, but also of colour compositions, three-dimensional forms including the shape of goods or of packaging, and melodies or other sounds. Signs in the latter group are referred to as non-traditional trademarks. The list above does not limit the possible forms of non-traditional trademarks and is only given by way of example. There may be also position trademarks, olfactory trademarks, taste trademarks etc., although there are currently no trademarks registered in any of the latter two categories, probably due to difficulties with their graphic representation.
The trademarks database of the Polish Patent Office contains plenty of registered non-traditional trademarks, including those more particularly described below.
The Municipality of Kraków obtained protection for the sound of the famous Mariacki Church trumpet call (registration number R.238511). The graphic representation requirement was satisfied by submitting the staff notation for the melody. The mark was registered for class 35 services (Nice Classification), such as advertising and business management.
Podlaska Wytwórnia Wódek “POLMOS” S.A. (a spirits producer) registered a position trademark consisting of a leaf of a grain crop in a bottle (the bottle itself not being covered by the application). The trademark, which has registration number R.217387, is registered for class 33 goods, comprising alcoholic beverages except beer. The application was accompanied by an outline of a bottle with a leaf inserted diagonally (see to the right).
Polski Koncern Naftowy Orlen (the largest Polish oil company) obtained the registration of a graphic and 3D mark used for, among other things, fuel, fuel purchases and payments management services, catering services at fuel stations, fuel tanking services, retail sales whereby goods are grouped and presented in fuel station shops so that customers can comfortably see or buy them (registration number R. 286823).
Okręgowa Spółdzielnia Mleczarska w Łowiczu (a milk producer) registered a mark consisting of words, graphics and 3D shapes and described as “łowickie mleko zawartość tłuszczu 3,2% UHT nowa zakrętka” [Łowicz milk 3.2% fat content UHT new cap] (registration number R.274503). The mark, depicted below, is used for milk.
On the practical side, registering a non-conventional trademark is usually much more difficult than a traditional trademark. If registration of the former is denied by the Polish Patent Office, the basis is typically original lack of distinctive character as IPLA specifically forbids the registration of signs which are not capable of commercially distinguishing the goods for which they are filed. However, a sign originally devoid of distinctive character may acquire distinctiveness through use. Thus, IPLA permits registration if, before the filing, the sign acquired distinctiveness in ordinary commercial conditions as a result of its use. Acquired distinctiveness must be proven and evidence may include, for example, recognition or awareness surveys among the relevant public, market research showing the market share of the underlying goods, data on use extent and intensity.
Businesses continuously look for new marketing solutions that offer better customer outreach and acquisition opportunities. We can thus expect them to follow the market success and registration experience of, for example, single-colour sings (see Union marks Milka, Orange, T-mobile) or jingles (Nokia) and become increasingly bold in using and filing non-traditional trademarks.
Check what we refer to:
- Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark
- Industrial Property Law Act of 30 June 2000