Rules of representation for unconventional marks in Poland
The requirement for graphic representations in trademark applications was abolished in Poland and most EU members states by the EU Trademark Directive (2015/2436). Since then trademarks can be represented in any appropriate form using generally available technology, provided that the representation is clear, precise, self-contained, easily accessible, legible, durable and objective. This change has made it significantly easier to register non-traditional marks. Such marks can now be registered provided that the scope of what is being protected can be properly determined in any manner or form that can be represented in the registering office.
Below we present information on Polish Patent Office (PPO) and EUIPO acceptable file formats of representation of individual types of trademarks.
Type of trademark
Electronic file format
The word mark shall be presented by submitting the sign in standard notation and layout with no graphic elements or colours.
The figurative mark shall be presented by submitting a reproduction of the sign including its
all elements and colours, where appropriate.
The word-figurative mark shall be presented in a single JPEG file. At the PPO, in paper applications the trademark shall be presented on a single print of between 8cm x 8cm and 10cm x 10 cm or on a single A4 sheet.
Colour marks must be presented as a colour reproduction or colour combination without marked contours. The presentation shall show the colour arrangement together with the colour indication through reference to recognised colour codes. The application must include a description indicating the distribution of colours and their proportions.
Shape or 3D trademark
PPO – JPEG
EUIPO – JPEG, OBJ, STL, X3D
Shape marks should be presented in an application by a graphic reproduction (representation) of the shape (including a computer-generated image) or photographic reproduction that may contain different shots. It is possible to file just a single shot of 3D trademark if the 3D effect is visible. The PPO accepts reproductions in JPEG format. The EUIPO accepts JPEG, OBJ, STL and X3D formats.
Position marks shall be presented by filing a reproduction that precisely shows the mark set-up and its size or proportion positioned on the specific area of the product. Elements that are not the subject of protection shall be clearly marked as excluded (eg, by a dotted line). The position trademark shall be filed as a JPGE file, with the application including a description stating how the position mark is used on the goods. If the position trademark is also a colour trademark, the colour must be defined.
Both the EUIPO and the PPO accept reproductions of a JPEG file format as a representation of a pattern trademark. The mark shall be represented by submitting a reproduction showing the pattern of repetition, which may be accompanied by a description detailing how its elements are repeated regularly.
PPO – JPEG, MP3 (up to 50MB)
EUIPO – JPEG, MP3 (up to 2MB)
Sound marks should be presented by submitting either an audio file enabling the reproduction of the sound or by presenting audio by means of a record music (musical notation). The representation of sound marks in the form of musical notation should therefore contain all the elements necessary to interpret the melody (eg, key, tempo and text, if applicable). The presentation of a sound mark can be filed in the form of an MP3 (of up to 5MB for the PPO and up to 2MB for the EUIPO) or JPEG file. The audio file can be filed on a pendrive, CD or DVD at the PPO. If the applicant files both an audio file and musical notation, the PPO will ask it to choose one of these forms to represent the trademark.
PPO – JPEG, MP4 up to 50 MB
EUIPO – JPEG, MP4
A motion mark shall be presented in the form of a video file (MP4 of up to 50 MB) or a series of consecutive still images showing movement or change in layout (JPEG). At the PPO a video file must be filed on a pendrive, CD or DVD when a hard paper application is filed. If still images are used, they shall be numbered, or listed in the order of appearance. The applicant may file a trademark description that shall be in accordance with trademark presentation and shall not extend the scope of protection.
PPO – MP4 up to 50 MB
EUIPO – MP4 up to 20 MB
The multimedia mark shall be represented by submitting an audiovisual file containing the combination of the image and the sound. A mark of this kind must be submitted to the PPO in an audiovisual file containing a combination of images and sounds. This means that multimedia trademarks shall be filed in the form of an MP4 file of up to 50 MB at the PPO and up to 20 MB at the EUIPO. At the PPO a paper application must be accompanied by a video filed on a pendrive, CD or DVD.
PPO – JPEG, MP4 up to 50MB
EUIPO – JPEG, MP4 up to 20MB
Hologram trademarks shall be represented by submitting a video file or a graphic or photographic representation containing the views necessary to sufficiently identify the holographic effect in its entirety. For an application for registration of a hologram trademark, the graphical representation of the mark must clearly depict all the material features of the mark, including all its views from different angles. In practice, it might be difficult to graphically represent a hologram with many features which vary at different angles.
JPEG, MP3, MP4
The new wording of the trademark definition abolishing requirement for a graphical representation is proving extremely helpful for trademark applicants. It may also play a role in increasing the number of unconventional trademarks registered, however, as yet there has been no noticeable uptick in applications for such marks.
It remains to be seen to what extent the new trademark definition will meet the needs of the market and what problems will arise when it is used in practice, as well as to how much these new opportunities will be used by entrepreneurs.
This is an insight article whose content has not been commissioned or written by the WTR editorial team, but which has been proofed and edited to run in accordance with the WTR style guide.
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