Allen & Overy, A. Pędzich sp. k. - Poland
The Polish Parliament is working on amendments to the Industrial Property Law (30 June 2000) that will alter the definition of a ‘trademark’ and the procedure for extending trademark protection. The amendment is necessary due to the need to implement the provisions of EU Directive 2015/2436 into Polish law, which aims to approximate EU trademark laws. The bill amending the Industrial Property Law was passed by the Lower Chamber on 17 January 2019. On 24 January 2019 the Senate (higher chamber of the Parliament) made several corrections, which are being examined by the Committee of Economy and Development in the Lower Chamber. It is expected that the bill will be adopted soon, as the deadline for implementing EU Directive 2015/2436 passed on 15 January 2019.
Changes to the definition of a trademark
The law states that a designation that can be represented graphically can be registered as a trademark only. This requirement is outdated given the state of the economy and technological progress. As it stands, this definition of a ‘trademark’ excludes the possibility of obtaining protection for non-traditional trademarks (eg, sound, fragrances or holograms) which already function in the market. Consequently, according to the proposed new definition of a trademark, any designation that allows the goods of one company to be distinguished from those of another and to be presented in the Trademark Register in a way that allows the unambiguous and accurate subject of protection to be determined can be registered. In particular, an expression (eg, a name, drawing, letter, digit, colour, sound and a spatial form) of a product, including its shape or packaging, can be registered as a trademark.
Changes in the trademark protection extension procedure
Trademark protection may be extended at the holder's request for all or some of the goods for 10-year periods. A request for an extension must be filed before the end of the protection term, though no earlier than one year before it ends. The protection fee must be paid when the request is filed, for an additional fee and within six months from the end of the protection term. This time limit cannot be re-established. The Patent Office will refuse to extend protection if the application is received after the time limit or if the fee is not paid.
According to the proposed amendment, payment of the fee for the next protection period by the trademark owner or a person authorised by law or contractually authorised to make such payment will be sufficient to extend the period of protection. In addition, the Patent Office will inform the rights holder about the impending payment deadline for the next protection period.
The solutions set out in the bill will result in a de-formalisation of the renewal process, and will make processes in the Patent Office faster and more efficient. This change will affect roughly 2 million entrepreneurs who have already registered their trademarks with the Patent Office.