New industrial property law proposal aims to reduce trademark procedure timelines
Works on the new industrial-property law in Poland are now in progress. In April 2022, the government delivered the proposal, prepared by the Polish Patent Office and the Ministry of Economic Development and Technology, for public consultations. The act includes many changes to IP practice, and aims to regulate institutions and procedures for the protection of industrial property, propose new solutions to protect exclusive rights, and simplify and shorten processes, including the granting of protection.
The project, which had wide consultation from the public, introduces significant changes to trademark regulation, as outlined below.
Changes to the publication of applications
The new act will eliminate the need to publish an application in the Bulletin of the Patent Office. In the case of trademarks, the disclosure of the mark and the subsequent publication after examining the so-called absolute grounds for refusal will occur on the office's website. The public notice of a trademark application is important because it is the starting point for the filing of oppositions, and the scope of the information to be made public and how it is to be made available will be determined by the Prime Minister in a resolution.
Significantly, the time allowed to submit oppositions will be reduced. Currently, the parties have three months from the publication of the trademark application in the Bulletin of the Patent Office to file an opposition. This will be decreased to two months from its public publication.
The project shortens the cooling-off period too. Currently, we have two months of cooling off that may be prolonged by another four months by a party’s motion. The new regulation shortens the cooling-off term to two months. Moreover, the cooling off will not be obligatory and will be granted only on both parties’ motions filed within one month of informing the applicant about the opposition. If such a motion is not filed, there will be no cooling-off period.
The scope of matters settled during the dispute proceeding will remain largely unchanged. There are monthly deadlines for certain activities, which may be extended by another month if a party informs the office in writing that the set deadline will be impossible to keep.
The most significant amendment regarding dispute proceedings is the fact that disputes will no longer be settled at hearings, instead, they will now be resolved in closed sessions. Designation of the hearing will remain at the office’s discretion; however, a party can request one. According to the act’s authors, it aims to accelerate the proceedings, the lack of hearings may aid this, but in many cases, it may be necessary to schedule a hearing to clarify the facts of the case.
The proposed amendments introduce the principle of concentration of evidence. The office will disregard facts and evidence not submitted within the prescribed time limit unless a party proves that this was not possible, or that the need to refer to the evidence arose later.
Joint protection right
One change to trademark policy is the resignation from the existing institution of joint protection right for marks. In the explanatory memorandum of the new law, it is underlined that Directive 2015/2436 does not provide for such a category of law. The proposed bill refers to the general provisions of the Civil Code on co-ownership.
Expiry date and renewal of trademarks after conversion
Currently, trademarks that are conversions of EU marks are valid and thus renewed 10 years from the date of the application for conversion to a national trademark, which has caused some confusion regarding renewal dates. The proposed amendment provides for a change in the expiry date of such marks. Suppose the application for the conversion of an EU mark is filed during the protection period; in that case, the fee for a further 10-year protection period must be paid at the expiry of that protection period.
Currently, trademark applicants pay an initial fee, and afterwards, issuing a conditional decision granting the right of protection, they pay a protection and publication fee for the granted right. The draft provides for replacing this with a single fee payable immediately upon application, as is the case with EU trademark applications.
These changes assume that the timelines of trademark proceedings will be reduced, however, it is not easy to assess whether this will be the case, and some controversy may arise from shortening the deadline for submitting an opposition. Resignation from setting the cooling-off period ex officio, among other things, will create differences with EU trademark regulations. The practice shows that during the time before official trademark publication and the cooling-off period, extended at the parties’ joint request, it was possible to settle more than once by mutual concessions.
Despite how the proposed amendments read, the effective acceleration of trademark proceedings cannot be based on the shortening of the parties’ deadlines; even the best solutions will fail if the office is insufficiently staffed. Only when it is will decisions be issued quickly and correctly.
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