Allen & Overy, A. Pędzich sp. k. - Poland
In September 2015 Parliament revised the Industrial Property Law (June 30 2000). The amendment will enter into force on April 15 2016 and introduce significant changes to the trademark registration process. The new rules of procedure will increase the competitiveness of the Polish Patent Office in relation to the Office for Harmonisation in the Internal Market (OHIM) and the number of national trademark applications by accelerating and simplifying the registration process.
At present, Poland uses the trademark examination system to register trademarks. For each application the Patent Office checks:
- the distinguishing features of the designation;
- the possibility of infringement of third-party rights; and
- whether the trademark contains prohibited symbols or signs.
In addition, the Patent Office examines whether the applied-for trademark is identical or similar to any prior designations, and refuses to grant protection if an applied-for trademark is found to be similar to a prior trademark in a way that will lead to confusion as to the origination of the goods or services bearing the mark.
This extensive examination results in a long registration procedure – often more than one year. For this reason, many Polish businesses prefer to register their designations with OHIM in spite of the higher costs (€900 for a community trademark and €110 for a national trademark).
Under the new regulations, the registration procedure will be simplified. As of April 15 2016, the opposition system will be introduced in Poland; it is already used in many EU member states and at OHIM.
Under the new procedure the Patent Office will examine trademark applications only in terms of formal issues and absolute grounds for refusal. Any potential conflict with prior trademarks will no longer be subject to ex officio examination by the Patent Office. This should shorten the trademark registration procedure to six months. Further, this could be an incentive to businesses which act only in Poland to register national applications.
The owners of a prior identical or similar trademark will have the right to object to the registration after the publication of the trademark application. The Patent Office will publish the application (including the applicant's name and a description of the mark and the relevant goods and services) within two months of filing (currently, three months).
If no objections are filed within three months of publication of the application, the trademark will be granted. Filing an objection will not guarantee that the right is not granted; however, the Patent Office will be obliged to examine the relative grounds for refusal (ie, the existence of any prior identical or similar trademarks). As a result, the new model will mean that if the owner of a prior trademark does not file an objection, any unused prior trademark will no longer constitute an obstacle to registration.
However, the new opposition procedure may be inconvenient and expensive for owners of earlier trademarks. In contrast to the OHIM registration procedure, the Patent Office will not notify the owner of a prior trademark of an application to register a trademark identical or similar to its mark. Therefore, in order to object to applications for similar or identical trademarks within the deadline, rights holders will have to monitor all new trademark applications filed with the Patent Office carefully and on a daily basis. Since Poland has few coexisting independent trademark protection systems, this could be a major challenge. Of course, rights holders can hire specialised search agencies to save time, but this will increase the cost of managing a trademark portfolio.
The new provisions of the Industrial Property Law may also limit the number of motions for trademark invalidation. The law provides for the evidence preclusion system in opposition proceedings. A party which files an opposition must present evidence within a set timeframe, otherwise the Patent Office will not consider such evidence. Until now, a motion for trademark invalidation was used as a workaround for this evidence preclusion system. When the owner of a prior trademark failed to provide evidence in opposition proceedings, it usually instigated simultaneous invalidation proceedings and presented new evidence and arguments in those proceedings. The amendment to the law will eliminate the possibility to file a motion for trademark invalidation once an opposition based on the same legal grounds and the same earlier trademark has already been finally dismissed.
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