Allen & Overy, A. Pędzich sp. k. - Poland
The updated Industrial Property Law, which entered into force on 16 March 2019, has transformed the legal position of holders of non-exclusive trademark licences in Poland.
The amendments, which were necessary to implement the provisions of the EU Trademarks Directive (2015/2436) into Polish law, level the differences between the rights of licensees of EU trademarks resulting from Article 25 of the EU Trademarks Regulation (2017/1001) and licensees of Polish trademarks. They are intended to provide legal certainty and consistency in the applicable case law.
Suing for trademark infringement in Poland
The updated law extends the range of entities authorised to file an action with regard to a trademark infringement. Until 16 March 2019, only the holder of an exclusive licence recorded in the Trademark Register could enforce its claims in the event of an infringement to the same extent as the trademark owner, unless the licence contract stipulated otherwise (Article 163(1) in connection with Article 76(6) of the Industrial Property Law). The licensee’s capacity to sue for trademark infringement was thus limited; if the licence had not been recorded in the Trademark Register, an exclusive licensee had no authority to file an action against the entity that infringed the mark. In addition, there was no specific case law on the issue of whether non-exclusive licensees have the right to enforce a trademark in their own name.
Now holders of both exclusive and non-exclusive trademark licences have the right to enforce the marks they license in their own name, regardless of whether the licence is registered in the Trademark Register. However, certain requirements must still be met.
A licensee may bring an action for infringement only with the consent of the rights holder, unless the licence agreement provides otherwise. The new Article 163(1)(1) of the Industrial Property Law does not specify the form of such consent – it may be given either in the licence agreement or through a separate written declaration of will from the rights holder. In the absence of such consent an exclusive licensee may also bring proceedings if the trademark owner fails to bring an action for infringement in due time.
New abilities to join proceedings
If a licensee has not been authorised to enforce a trademark in its own name in the licence agreement or a separate declaration from the rights holder, it will still be able to act against an infringement. According to the new Article 163(1)(2), a licensee is authorised to join trademark infringement proceedings instigated by the rights holder . As this provision does not differentiate between a non-exclusive and an exclusive licensee, it appears that this right applies to both.