Allen & Overy, A. Pędzich sp. k. - Poland
On 16 March 2019 the Polish Industrial Property Law underwent significant changes with regard to trademarks, in an effort to align it with the EU Trademarks Directive (2015/2436). One of the most significant alterations is the introduction of so-called ‘guarantee marks’, which replace the previous, scarcely regulated ‘collective guarantee marks’.
Guarantee marks – previous and current regulations
Unlike traditional trademarks, which serve to distinguish the source of goods or services, guarantee marks attest that the certified goods or services meet certain standards, particularly in terms of the materials used, the manufacturing process, the performance of the service and their quality or accuracy, among other characteristics.
The Industrial Property Law already provided for collective guarantee marks. These could be granted only to incorporated entities, which then had to establish a regulation governing the mark’s use; any company that wished to use the mark had to comply with the conditions provided in that regulation. The registrant could not use the mark itself but was responsible for controlling users’ compliance with the provided conditions.
The amended Industrial Property Law elaborates on this concept by directly adopting the directive’s provisions. Most importantly, the new regulations assume the same definition of guarantee marks but merely broaden the scope of entities to which such marks can be granted. Now, any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for a guarantee mark, unless it is involved in business that includes the supply of goods of a certified kind. Further, the Polish regulations also adopt the permissible derogation provided in Article 28(4) of the directive by allowing for the registration of guarantee marks that consist of elements that may designate the goods’ geographical origin.
The amended Industrial Property Law does not provide for a separate registration procedure for guarantee marks, so the general rules apply, with an additional requirement regarding the regulation governing the mark’s use. The new provisions repeatedly emphasise that this must be appended to the application and should specify:
- the persons authorised to use the mark;
- characteristics that are meant to be guaranteed by the mark and the method for testing these;
- how the mark’s use will be supervised; and
- conditions for using the mark, including sanctions.
The application will be refused if:
- the applicant fails to append this regulation to its application or submits regulations that are contrary to public policy or morality; or
- granting the protection right would put the public at risk of being misled regarding the character or significance of the mark.
Due to the fact that the amendment replaced the previous collective guarantee mark with the new guarantee mark, comprehensive transitional provisions have been provided to determine the status of pending and finalised registrations.
In the first case, the new regulations apply, which effectively means that all pending registrations will result in granting the protection right subject to the new law, provided that the registrant submitted the regulations governing the use of the mark before 16 June 2019. Otherwise, the registration process will be discontinued. In the latter case, the registrant could transform an already-granted collective guarantee mark into a new guarantee mark by submitting the relevant regulations by 16 September 2019. Otherwise, the already-granted registration remains governed by the old regulations.
Assessing the new changes
Although guarantee marks are not unique to the Polish Industrial Property Law, the new regulations are a positive development.
The previous collective guarantee marks were moderately popular among Polish companies. While the latest EU Trademarks Directive provides for guarantee or certification marks, it does not oblige member states to approve the registration of these. The Polish authorities decided to implement such a possibility within the Polish Patent Office; otherwise, companies would have faced a more expensive procedure before the EUIPO.
By introducing more comprehensive and detailed regulations, the amended Industrial Property Law has broadened the appeal of guarantee marks while simultaneously creating no additional financial burden upon applicants.