How to effectively protect intangible assets?

To make sure your rights are not infringed, it is best to actively protect your intellectual property rights.

A rapidly growing Germany company from the cosmetics and daily cleaning supplies industry had one special asset – a well-recognisable device mark depicting a pearly smile. The company’s name, internet domain and a whole family of flagship products all relied on that mark. Moreover, the mark was registered with the EUIPO.

Goods were sold from Germany across Europe also online. However, sales began to shrink at some point. Orders, especially from Poland, arrived in far fewer numbers. The company decided to investigate the reason for the plummeting sales. 

Assisted by Rödl & Partner’s lawyers the company found out that a company from Western Poland registered an identical trademark with the Polish Patent Office and was granted protection rights for that mark in Poland. The registration was done a few months after the German company registered its trademark with the EUIPO.

Moreover, the Polish company set up a domain with a near identical name, through which it offered its own products (identical when it came to the nature and intended use to the original company’s). On its website, the company published fake opinions and rankings showing very poor ratings of the products protected by the EUIPO, and very good ratings of the Polish company’s portfolio. Consequently, the company’s customers in Poland were diverted to products sold under the identical but fraudulently registered name.

Since the deadline for objection had already passed, the German company decided to protect its trademark and applied to the Patent Office to nullify the protection right of the trademark registered later. The nullification became successful after 6 months.

You could wonder how the same trademark was registered by the Polish Patent Office if the EUIPO had already registered it before. 

This is perfectly possible. The Polish Tax Office checks only legal and formal aspects of the registration application as well as the absolute criteria for protection (e.g. the distinguishing features, no violation of public law order and customs). Collisions with earlier rights are not checked at all. The Patent Office sends information about identical or similar trademarks for the same or similar goods and services only to the applicant for registration. On the other hand, those who have already been granted the protection and registered their trademarks are not notified of e.g. a pending procedure for registration of an identical or similar mark.

This history teaches us that trademark registration with the EUIPO is not enough. Effective protection of assets, e.g. intellectual property rights such as trademarks, requires regular monitoring of trademark registration applications. If any new, colliding, trademarks are to be registered, you will have to raise an objection with the Patent Office. If you have missed the deadline, you will need to apply for nullification.