Trademark Expiration ' Different Scenarios For Entrepreneurs

• Published date: 13 November 2023
• Subject Matter: Intellectual Property, Trademark
• Law Firm: JWP Patent & Trademark Attorneys
• Author: Ms Patrycja Wrzosek-Mijas

Paying renewal fees on time is not enough to enjoy 10 years of effective protection for your trademark. Contrary to what one might think, filing for a trademark and registering it is not the end, but only the beginning of an entrepreneur's efforts in this respect. In order to make it smooth sailing, trademark owners must take proper care of their interests and ensure that they are comprehensively protected.

Expiration of a trademark means that the trademark becomes invalid, and its former owner loses the right to use it. The trademark which has been formally granted protection by the Polish Patent Office may be protected indefinitely, provided that every ten years, before the protection period expires, a renewal fee is paid for each registered class of goods and services. Unfortunately, however, the failure to pay the renewal fee on time is not the only possible reason for decisions to revoke a trademark being issued. Entrepreneurs often forget that after protection has been granted there may arise circumstances which do not allow for it to continue.

Demotion or promotion?

According to Article 169² of the Polish Industrial Property Law (PIPL) "the right of protection for a trademark shall also lapse on loss by the trademark of distinctive features for the reason that in consequence of the owner's acting or negligence it has become, in the course of trade, a customary mark." It means that a trademark has "degenerated" and become a common symbol for a particular kind of goods, losing its original significance as a designation of a manufacturer or a company. One example of trademark degeneration is "Xerox" - originally a trademark of the company Xerox, later used to mean any copy made by a copying machine. In this case the trademark holder could not be very pleased with such a turn of events. The complete opposite is true for the "Google" trademark. Originally, it was used as a name of Google's Internet browser, but owing to the huge popularity of their product, it is now used colloquially as the verb "to google," i.e. to search the Internet for an answer to one's question or to fulfil the user's other needs. This kind of trademark modification is good for the company's marketing and a dream cherished by many entrepreneurs. However, it is important to remember that it entails a certain risk. If a trademark degenerates, other manufacturers may use it to describe their goods and services without infringing any copyright, with the exception of so-called...