Allen & Overy, A Pędzich Spk - Poland
When a company’s logo becomes recognised as one of its most valuable assets rather than a mere characteristic, it is clear that it has begun to focus its attention on trademarks and sees them as a versatile carrier of its reputation. Market practice in recent years confirms that this recognition has resulted in an increased interest in securing claims by encumbering trademarks with pledges. However, while Polish regulations on this issue are straightforward, confusion may arise as to the distinction between a registered and ordinary pledge and its entry into the Polish Patent Office’s (PPO) trademark register.
Polish regulations provide for two types of pledges, which differ in terms of the formal requirements to successfully establish them:
- an ordinary pledge, which requires a written agreement with notarised date authentication; and
- a registered pledge, which requires a written agreement and subsequent entry into the Register of Pledges held by the Polish regional courts.
Entering a pledge into the trademark register is not an obligatory step, although it is a uniformly advised solution. The reason for such unanimity is that an entry is presumed to be valid and publicly known. This in turn prevents third parties from relying on a claim that is attached to a pledge.
Taking the necessary steps to submit an entry is therefore a worthwhile precaution. This applies particularly to ordinary pledges, as in the following case of a registered pledge:
- the same presumptions are already associated with the pledge’s entry into the Register of Pledges; and
- an entry into the trademark register is automatically submitted to the PPO by the regional court, so no further actions are required.
In other words, entering an ordinary pledge into the trademark register requires the party to take action, unlike entering a registered pledge, which is done automatically.
Entry into the trademark register
Although there are no particular forms for entries into the trademark register, there is a general requirement that all submitted documents are in Polish and are original or certified copies (or sworn translations). Consequently, the costs incurred during the process of entering a pledge into the trademark register are for notarisations or sworn translations.
The motion is also subject to a minor fee per entry. This means that even when requesting multiple entries in one motion, each request will be settled separately. The fee is for ordinary pledges only – in the case of registered pledges, the court holding the register submits the motion to the PPO automatically and free of charge. However, in this case, the motion for an entry into the register itself is subject to a separate fee.
The motion, along with the necessary documents, can be filed either by a party to the pledge agreement or the representing legal attorney (ie, patent attorney, advocate or attorney at law). If the company’s seat is situated outside of the European Union, the European Free Trade Association or Swiss Confederation, representation by legal attorney is mandatory. In addition to legal fees, appointing a legal attorney to represent the company involves the stamp duty cost for a power of attorney but relieves the company from having to notarise all submitted documents as certification can be done by the representing attorney.
Once the motion is filed, the PPO makes an entry within three months. An urgent review of the motion might be requested, but recognising such a request is at the PPO’s discretion. In practice, the typical timeframe is between two and three weeks. Once an entry is made, it is disclosed in the D column of a particular trademark in the trademark register. However, it will not be available in the Polish online searches provided by the PPO, such as Register Plus.
Consequently, to confirm or verify whether a certain trademark is encumbered with a pledge, personal access to the trademark register (at the PPO’s headquarters) or a request for an excerpt from the register is required.