Bill will force courts to apply Madrid Agreement and Protocol


The Polish government has introduced a bill into Parliament seeking to transpose the provisions of the Madrid Agreement and Madrid Protocol into national law.

The Polish Constitution provides that international agreements should be directly executed by all interested parties, including the Patent Office and the courts hearing IP cases. Indeed, the Patent Office has implemented procedures regarding international registration of trademarks using forms in French. For instance, a notification of temporary rejection of an international registration made by the World Intellectual Property Organization (WIPO) on the grounds that the mark applied for is confusingly similar to an earlier registered trademark would be sent to the applicant with a note highlighting the provisions in Polish law under which such a decision was made.

This system, which worked more or less at the Patent Office level, sometimes broke down in the courts before which the office's decisions may be appealed - namely, the Warsaw District Administrative Court and then the Highest Administrative Court. Administrative courts review only whether the Patent Office's decisions are granted in compliance with laws in force in Poland. It has happened, in a few cases at least, that the administrative courts overturned decisions of the Patent Office to refuse international trademark applications on the grounds that the Patent Office's objections were made in French rather than Polish. Section 4 of the 1999 Law on the Polish Language provides that Polish is the official language of the public administration offices and courts. Thus, the courts argue, the Patent Office may not issue a decision to reject an international registration using a foreign language. This position poses a serious problem, as according to Rule 6 of the Common Regulations under the Madrid Agreement concerning the International Registration of marks andthe Protocol Relating to that Agreement, trademark filing documentation, such as the list of goods for which registration is sought, and any correspondence regarding such filing can be made in English or French. This language issue also applies, to some extent, to Patent Cooperation Treaty applications and European Patent applications.

To try and solve this problem, the bill introduced in Parliament provides that (i) international agreements regulate the language in which proceedings regarding industrial property protection under these agreements are conducted, and (ii) in proceedings before the Polish courts, a Polish translation may be requested.

The bill also contains provisions on procedures regarding the registration of international trademarks. The Patent Office does not enter into a correspondence with the applicant, but only with WIPO. Foreign applicants must be represented by a Polish patent attorney in all proceedings before the Patent Office. So if a foreign applicant, after notification of temporary refusal of its application in Poland, still wants to transform its application into a Polish national application to which Polish law applies, the Patent Office's decision will be delivered to the international applicant through the intermediary of its Polish patent attorney. This change will benefit foreign applicants as they will receive the full text of the decision and its justification, which has not been the practice so far. If the foreign applicant fails to appoint a Polish patent attorney, the note sent to WIPO will be considered as a satisfactory basis to enter changes into the international register.

Further, the bill will provide the possibility to nullify an international registration, which until now was not regulated by domestic law.

Janusz Fiolka, Dr Janusz Fiolka Patent & Trademark Attorney, Krakow

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