Legal Eye: Much ado about trademarks

Especially visible in telecommunications of late, re-branding is not uncommon in other fields, such as hotels or business services. I can't begin to tell you how many coffee mugs, t-shirts and other trinkets I have accumulated over the last few years as re-branding inevitably begets promotional products.

Behind the baubles, though, lies a fairly non-descript pile of papers. Protecting that brand name is (or should be) a trademark. An agreement licensing the use of a trademark can be a dull read, but a lucrative arrangement for its owner.

Trade name vs. trademark

Your company name and the name under which you sell your products are two separate legal animals. PTK Centertel still sends me the bill for my mobile phone, even though the service I'm using is no longer called Idea, but is now labeled Orange. It's the product or service name that you protect by trademark.

The trademark gives you the sole right (in other words, your very own monopoly) to use that brand name for your type of goods or service, including the right to license that trademark to someone else.

Registration

Do pass the Patent Office; do pay the registration fee to get your monopoly. A trademark exists upon its registration in the patent and trademark office in the country in which you want to use the trademark.

The registration process can take a couple of years, but your trademark is protected as of the date of filing for registration. Your monopoly is initially granted for 10 years in Poland. If you keep paying renewal fees and keep using the trademark, though, you can keep that monopoly indefinitely.

License

Now comes the lucrative part. With the monopoly in hand, it's yours to use.

When new investors acquire a company, they typically look at ways of improving the company and its profitability. One of these methods may be integrating it into a larger network of companies, such as the Polish-only Idea into the pan-European Orange. Pursuant to a license agreement, the new investors (holders of the trademark rights) would allow the acquired company to use the trademark, in return for trademark licensing fees. Typically, a trademark license agreement would be one of several agreements between the new investors and the acquired company. But, as it engenders re-branding and all that goes with it, this form of agreement is certainly the one that creates the changes most visible to consumers.

Consumer alternatives

If you don't like the re-branding, look elsewhere. Fortunately for mobilephone users, portability is your right.

In fact, in February 2006, the Telecommunications Law was amended to make it explicit that pre-paid cellular subscribers also had the right to move their numbers to another network. Portability does not just apply to mobile phones, but also to landlines (as long as you are in the same geographic area). The primary limitation on portability is that there is no mixing of landline numbers with mobile-phone numbers.

With all this talk of branding, I should check on my firm's supplies of inscribed paraphernalia. You never know when someone will need a nifty Rymar and Partners pen.

Judith Gliniecki is the Managing Partner of Rymar and Partners; e-mail: j.gliniecki@rymar.pl