“Meat from Vysočina” can’t be packed in Poland

Today, authors of new brand names often have problems. Inspiration is running dry and often people just create variations on familiar themes. Then the issue is, just how similar a variation is or isn’t, whether or not an idea is viable.

At our offices we do an initial search, where the first part is registrations, to decide if the brand name can even be registered. The second part is figuring out whether or not there is any risk of a problem or dispute in its use without registration. Sometimes we cut the client short right away, advising not to even try a given variant. At other times we may, for example, think it has a 60 percent defensibility and it’s up to the client whether or not to listen to their marketing department and try to register and use the brand name.

For registrations, the Industrial Property Office issues the final verdict. However, as mentioned before, a brand name can be used even without recording it in the trademark register. Registration does bring some advantages, mainly giving a stronger position when enforcing the user’s rights. In the case of any dispute they can present their certificate of registration and have practically won. But without it, they have to prove their historical rights, for example rights based on long-standing use of the brand. That is, of course, more complicated. But not all is lost.

So if you’ve been selling a product for ten years under one brand name and your competitor registers the same brand in the ninth year, you’ll most likely have to dispute it. But here the law is on your side, since you can declare your competitor’s registration invalid as the holder of the unregistered mark, putting you in a very similar situation to that of a registered trademark owner. But this requires more extensive proof.

In our practice we of course make sure a new mark is in compliance with the new consumer protection regulations, which define what claims can be made without misleading customers. Our client, a retail chain, wanted to start selling “Meat from Vysočina”, because it was from animals raised in the area. But it was processed and packed in Poland. Here, the regulations forbid such a designation.