Protecting intellectual property rights
For many years we have been providing legal support for clients—mostly companies, but individuals as well—in management and enforcement of their portfolio of intellectual property rights.
Intellectual property law protects intangible assets, primarily works, patents, trademarks and industrial designs—assets of an “intellectual” nature which when incorporated into material objects become the subject of trade. They are of vast economic importance and often are crucial to the commercial success of an enterprise. Laws govern in detail the manner in which rights to these assets are obtained and how they may be exploited, and also define what actions of third parties constitute infringement of IP rights. There is a separate legal regime for combating unfair competition. It complements the protection afforded to specific types of intellectual property but also provides separate grounds for protection of business interests.
We advise clients and represent them in court in civil and criminal cases concerning infringement of IP rights and unfair competition. We cooperate with customs authorities in proceedings involving seizure of infringing goods. Thanks to our extensive experience over more than two decades, we are one of most highly specialised teams in Poland in this field of law.
When required for the specific case, we establish interdisciplinary teams made up of lawyers specialising in different fields of law, and we also work closely with distinguished scholars in this area.
We provide legal assistance in obtaining and maintaining protective rights to trademarks, patents, industrial designs, utility models and geographical designations.
Our services include:
- Assessment of trademarks, industrial designs and utility models to determine whether they are capable of registration, based on a review of Polish and international databases
- Filing trademarks for registration under relevant procedures—
- Polish (Polish Patent Office)
- European Union Intellectual Property Office – EUIPO (formerly OHIM)
- International, under the Madrid System (World Intellectual Property Organisation, Geneva)
and monitoring the course of registration proceedings
- Filing industrial designs, utility models and geographical designations for registration, and monitoring the course of registration proceedings
- Registration of inventions and validation of patents
- Monitoring of deadlines of payment of official fees in Poland and abroad, including fees for obtaining, maintaining and renewing exclusive rights
- Representing clients in disputes concerning invalidation of exclusive rights, before the Polish Patent Office, EUIPO, and the courts
Holders of IP rights may enter into transactions involving those rights. Rights may be transferred or licensed to third parties. More and more often IP rights are also pledged as security for indebtedness.
As part of our services in this area, we draft and review various types of agreements, including:
- Agreements on assignment of trademarks, patents, industrial designs and utility models and related registration rights
- Licensing agreement for IP rights
- Agreements on coexistence of exclusive rights
- Agreements creating security interests in IP rights
- Distribution and franchise agreements
- Agreements assigning or licensing use of know-how and unregistered trademarks
Intellectual property rights are threatened by unauthorised use by third parties. The law contains detailed regulations concerning protection of specific exclusive rights as well as principles of fair competition, but proper application of these rules requires familiarity with judicial practice at the EU and Polish levels.
We act in many such cases, involving such matters as:
- Use of trademarks that are confusingly similar to registered marks
- Unlawful use of patents, industrial designs and geographical designations
- Infringement of trade dress, and such items as colour, shape, and advertising slogans registered as trademarks
- Unlawful use of trademarks on counterfeit goods
- Planning and implementing programmes for monitoring use of trademarks in order to prevent erosion of the mark
- Infringement of renowned trademarks
- Product imitation
- Unlawful parallel imports
- Trademark infringement in internet domain names
- Unfair advertising
- Protection of product names, packaging and external form
- Organising and conducting promotional and advertising campaigns, including contests
- Protection of trade secrets and know-how.
In such cases we
- Respond to inquiries and prepare legal opinions
- Conduct judicial proceedings (civil and criminal)
- Conduct negotiations and mediation
- Draft settlements
- Cooperate with customs and law enforcement authorities
We offer comprehensive services to holders concerning online use of IP rights, and also advise third parties interested in legal use of IP rights.
Our services include:
- Combating trademark infringement in internet domain names, including conducting judicial and arbitration proceedings (specifically before the Internet Domains Arbitration Court at the Polish Chamber of Information Technology and Telecommunications)
- Combating trademark infringement and unfair competition on websites, including meta-tags
- Conducting criminal proceedings to prosecute online trademark and patent infringement
- Conducting legal audit of websites, online broadcasts, portals and the like
- Monitoring of websites, internet auctions, portals and the like to protect IP rights
Establishing cooperation with auction sites and negotiating solutions with them to prevent IP abuses in online auctions.