Products and services offered
Start by identifying the goods and services your business offers or realistically plans to offer. An overly broad list increases costs, while one that is too narrow may leave part of the business without suitable protection. Tools for preparing a list under the Nice Classification include TMclass. Industrial design tools, such as DesignClass, are not a substitute.
Target markets
Identify the countries in which the brand will be used. Protection may be national, EU-wide or obtained for selected territories through the international system. An EU trade mark covers EU Member States, not the entire EEA. An EU application alone therefore does not provide protection in Norway, for example.
Costs
As explained above, the cost of obtaining trade mark protection depends on two factors: the number of classes of goods and services and the territorial scope of protection.
National trade mark
According to the Polish Patent Office’s fee schedule, filing an ordinary trade mark for one class costs PLN 450, or PLN 400 electronically. Each additional class increases the application fee by PLN 120. Fees for granted protection and publication are also payable. The PLN 920 total in the previous version should not be used: it did not even equal the sum of the components listed there. The budget for a specific application must be calculated from the current schedule, taking account of the number of classes, type of mark and representative’s fees.
EU trade mark
The EUIPO’s basic fee for an electronic application for an individual EU trade mark is EUR 850 for one class. The second class costs an additional EUR 50 and each subsequent class EUR 150. This totals EUR 900 for two classes and EUR 1,050 for three. These are official application fees, excluding representative’s fees and any dispute costs.
International trade mark
The Madrid System allows protection to be sought in selected member countries or organisations through a single international application. It does not create automatic worldwide protection; the competent offices assess protection in their territories.
An international application may be based on a basic application or registration with the national or regional office of origin. It is therefore not always necessary to wait for a national registration to be completed. Check the conditions for using the system and whether the international application’s scope matches its basic application or registration.
WIPO fees depend on factors including the territories selected, the number of classes and the type of mark. Use WIPO’s official fee calculator; do not assume a fixed supplement for every country.
Some designated territories charge individual fees. Check the calculation for the specific date and application configuration.
Calculating the fee can be difficult. Help is available from the calculator provided by WIPO on its website.
Research
Once the above details have been established, investigate whether the proposed trade mark is available. Skipping this step exposes applicants to unnecessary expense and wasted time. Remember that protection cannot be obtained for a trade mark similar to one previously applied for, or one that is well known and in use. Nor can protection be obtained for a previously registered geographical indication.
Official registers and the following tool are useful when searching for earlier trade marks: TMview. DesignView concerns industrial designs, not trade marks. A search result is not yet a conflict risk assessment: the signs, goods, services, territories and earlier rights must be compared.
Search using several criteria: the wording of the sign, graphic elements, goods and services, and territory. The absence of an identical result does not establish that the mark can be registered or safely used.
Filing a trade mark application
A trade mark application may be filed personally or through a professional representative: a Polish attorney-at-law, advocate or patent attorney. Applications may be filed on paper or online. An international trade mark registration application is submitted to WIPO through the Polish Patent Office on the designated MM2 form.
