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Michał Ziółkowski

Senior Associate
+48.22.653.4291
Fax +48.22.653.4250
Michał Ziółkowski is a Senior Associate in the K&L Gates Warsaw office. He is a patent & trademark attorney in the intellectual property practice providing advice to clients on all aspects of patent, trademark, and copyright law as well as related fields. He focuses on trademark and design law of the European Union.

Michał is a representative in registration, opposition and invalidation proceedings before the Polish Patent & Trademark Office, the EUIPO, WIPO as well as in court proceedings regarding industrial property matters. Michał cooperates with various K&L Gates offices and acts on behalf of our international clients interested in trademark protection in the EU region and worldwide. Michał Ziółkowski’s experience includes global trademark portfolio development & management, intellectual property audits, anti-piracy work based both on copyright and trademark law, patentability analysis, trademark infringement studies. Michał prepares assignment of rights and license agreements, as well as opinions and other agreements related to trademarks, patents, utility models, industrial designs, copyrights, trade secrets and domain names.

Professional Background

Prior to joining K&L Gates, Michał practiced in the Warsaw office of a Washington-based international law firm, focusing on intellectual property law. He also previously worked in the Warsaw office of another international law firm, mainly dealing with IP matters during due diligence processes and IPOs. He gained experience at several other international law firms during his studies.

Achievements

  • Minister of Economy Award for the best thesis on the protection of industrial property rights in the fifth edition of a contest organized by the President of the Patent Office of the Republic of Poland (2007)
  • ECTA AWARD 2016, 3rd prize in the Professional Category: the best article regarding EU trademark law, "Graphical representation requirement as a condition of trademark protection in EU law - current concepts and planned changes"

Professional/Civic Activities

  • Michał Ziółkowski is a member of INTERPOL’s Office of Legal Affairs (OLA) experts’ forum
  • Member of ECTA & MARQUES

Speaking Engagements

  • Trainings for entrepreneurs regarding brand building, development and protection
  • Trainings in industrial property rights protection for customs and law enforcement bodies
Selected Publications
  • Article “Easier depiction of colorful trademark by using color code,” Rzeczpospolita daily, January 27, 2017
  • Article “Changes pertaining to the graphic representation requirement of a trademark in Directive 2015/2436,” Przegląd Prawa Handlowego (Commercial Law Review) no. 12/2016, December 2016
  • Article “Cheaper protection of trademarks and designs,” Rzeczpospolita daily, November 2, 2016
  • Article “How to legally protect products internationally,” Rzeczpospolita daily, October 21, 2016
  • Article “Trademark should be distinctive,” Rzeczpospolita daily, September 23, 2016
  • Article “Acquired distinctiveness as a prerequisite of trademark protection,” Przegląd Prawa Handlowego (Commercial Law Review) no. 6/2016, June 2016
  • Article “Movement marks for effective brand promotionę," Rzeczpospolita daily, March 2, 2016
  • Article "Registrability of a component part of a complex product as an industrial design,” Przegląd Prawa Handlowego (Commercial Law Review) no. 12/2015, December 2015
  • Article “Graphical representation requirement as a condition of trademark protection in EU law,” Białostockie Studia Prawnicze Zeszyt 19 (Bialystok Legal Studies Book 19), November 2015
  • Article “Easier electronic signature, reduced fees, new definitions,” Rzeczpospolita daily, October 23, 2015
  • Article “Protection of unconventional trademarks,” Rzeczpospolita daily, June 12, 2015
  • Trademarks and Unfair Competition Quarterly Bulletin, K&L Gates Jamka sp.k., May 2015
  • Article “Fast Track registration of Community trademarks,” Rzeczpospolita daily, March 11, 2015
  • Article “Typology of trademarks based on their sensory perception and graphical representation in the register,” Przegląd Prawa Handlowego (Commercial Law Review) no. 1/2015, January 2015
  • Representing clients in trademark registration matters, trademark portfolio development, management and protection, including opposition proceedings before the OHIM. Acting on behalf of: (i) a global US firm involved in the rental of industrial equipment; (ii) Italian and US construction chemistry producers; (iii) an Australian manufacturer of plumbing and roofing materials; (iv) a US investment advisory firm; (v) a multinational fashion industry firm; (vi) a US clothing manufacturer; (vii) an Australian beverages producer; (viii) a US medical instruments producer, (ix) games producers.
  • Representing clients in trademark registration matters before the Polish Patent Office. Acting on behalf of: (i) a Polish entertainment company, (ii) a Polish medical equipment distributor, (iii) a Polish cigarette filler tubes producer, (iv) a Polish beauty clinic, (v) a US clothing manufacturer.
  • Counseling in trademark invalidation proceedings before the Polish Patent Office and Provincial Administrative Court for a renowned French food producer.
  • Representing before the Polish Patent Office a renowned US audio equipment producer in trademark opposition and invalidation proceedings.
  • Representing before the Polish Patent Office a jewelry manufacturer in industrial design invalidation proceedings.
  • Counseling in court trademark disputes for a renowned Italian construction chemistry producer.
  • Counseling for a Polish construction company in patent invalidation proceedings before the Polish Patent Office and administrative courts.
  • Counseling in trademark portfolio development matters and branding issues for international alcoholic beverages producer.
  • Coordinating the IP part of a transaction for a large, multinational bank pertaining to the sale of its affiliated entities in Poland, especially transfer of trademarks and domain names, valuation issues and licensing.
  • Preparing assignment of rights agreements pertaining to trademarks and coordination of transfer of rights processes for a: (i) renowned Polish cosmetics producer, (ii) Polish soft drinks producer, (iii) Polish alcoholic beverages producer.
  • Working on intellectual property issues during the due diligence processes for: (i) a multinational aircraft producer, (ii) energy sector companies, (iii) German digital publishing house.
  • Preparing national and Community applications for Customs actions. 
  • Acting and counseling clients from the entertainment, gaming and clothing industries on anti-piracy matters.
  • Cooperating with Customs and other law enforcement bodies in Poland and Central and Eastern Europe in actions taken against counterfeit goods and assistance in methods of distinguishing fakes from originals.
  • Combating piracy and attending Police and Customs raids.