New approach to trademark registrability

On 16 March 2019 an amendment to the Industrial Property Law (30 June 2000) entered into force. It aims to implement the provisions in the EU Directive 2015/2436 that approximate EU member states’ trademark laws. The amendment has simplified the definition of a ‘trademark’ and, as a result, has removed the graphical representation requirement when filing an application with the Polish Patent Office (PPO). This means that any designation that accurately and unambiguously distinguishes the goods of one company from those of another can now be protected in the Trademark Register.

PPO guidelines

The PPO has published guidelines on non-conventional trademarks on its website (in Polish only). The guidelines clarify what falls within the scope of a trademark and list a new classification of registrable marks. Besides common marks (ie, word, figurative and word-figurative), spatial, position, patterns, colour combinations, sound, moving, multimedia and holographic marks will be accepted, among others. The guidelines provide applicants with a description of the necessary technical characteristics and the format in which the mark must be filed to meet the requirements. The guidelines are particularly useful with regard to non-conventional marks that have not been previously registered on a large scale.

The amendment

The amendment has abolished the requirement for graphical representation when filing an application. Smells and tastes are still not accepted, as the PPO argues that these cannot be represented in the register using technology in a way that could be considered clear, precise, self-contained, easily accessible, intelligible, durable and objective. The PPO backed up its argument in Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt claiming that providing test samples of a smell or taste does not meet the criteria. The same applies to a description of a smell or taste or its chemical formula, which is not a clear, precise and objective representation of a mark, according to the PPO.

Prospects for the future

Non-conventional trademarks have been successfully registered in the past (eg, St Mary's Trumpet Call (Hejnał mariacki), which is played in the tower of the city's Saint Mary's Church in Krakow and a particular shade of orange for the telecommunications company Orange). However, they were treated as exceptions. Under the new amendment, this will most likely be a standard situation. Even though the guidelines explicitly exclude the registration of smells or tastes, the smell of freshly cut grass has been previously registered for tennis balls. With this in mind, the PPO’s restrictive approach to the registration of smells and tastes may need to be revised in line with technological developments in the near future.