Allen & Overy, A. Pędzich sp. k. - Poland
In July and August 2015 Parliament revised the Industrial Property Law (June 30 2000). Based on the amendments which entered into force on November 30 and December 1 2015, several significant changes were introduced into the trademark registration and maintenance processes.
New rules on representation
Before the amendments came into force, only a patent attorney could act as a party's representative before the Polish Patent Office in trademark registration proceedings (ie, in cases relating to the filing and examination of trademark applications). As an exception, a physical person could also be represented by a co-holder, a parent, spouse, sibling or descendant of the party or a person in an adoptive relationship with the party. Under the previous law, a person or entity without a place of residence or registered office in Poland could act only through the mandatory intermediate (ie, the patent attorney).
Based on the amendment which entered into force on November 30 2015, an attorney at law can also act as the party's representative in trademark registration proceedings. Further, a person or an entity originating from the European Union, a European Free Trade Association country or Switzerland can act directly. However, those originating from these jurisdictions must still act through a mandatory intermediary (ie, a patent attorney or attorney at law).
Letters of consent
Until December 1 2015 the Polish Patent Office refused to register a trademark identical or similar to an earlier trademark, even if the owner of the earlier trademark consented to registration.
Based on the amendment which entered into force on December 1 2015, it will be possible to obtain protection for a similar trademark, provided that the owner of an earlier trademark consents in writing.
This will be of commercial importance for entities from a corporate group which use the same or similar designations on a day-to-day basis in different countries and markets. At present, subsidiaries can obtain a right of protection for a trademark in spite of similarity to a mark previously registered by the parent company. The introduction of letters of consent will also make it possible to register trademarks in a situation where independent traders allow for the presence of similar trademarks in trade relations due to the fact that the owner of the similar trademark operates on a different market.
Limitation of the right to prohibit third parties from using trademark
The amendment to the Industrial Property Law has also extended the catalogue of exceptions from the rights holder's prohibition rights. As of December 1 2015, rights holders are no longer entitled to prohibit third parties from using in the course of trade not only their surnames or addresses, but also names and other indications individualising the entrepreneur or its enterprise.
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