12 Sep
2018

Trademark procedures and strategies: Poland

Allen & Overy, A Pędzich Spk

Legal framework

Poland’s legal regime of national trademark rights is regulated mainly by the Industrial Property Law (30 June 2000). The provisions regarding trademark rights are harmonised with the EU Trademark Directive. Almost all amendments required by EU Directive 2015/2436 (16 December 2015) have already been introduced. As a member of the European Union, Poland also protects EU trademarks based on EU Regulation 2017/1001 (14 June 2017). Trademarks can also be protected based on the Fair Trading Act (16 April 1993) and the Copyright and Related Rights Act (4 February 1994).

Among the applicable international treaties, the most important are:

  • the Paris Convention for the Protection of Industrial Property (20 March 1883);
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
  • the Madrid Agreement Concerning the International Registration of Marks (14 April 1891).

Unregistered marks

Unregistered marks benefit from the same protection as registered ones if they are commonly known within Poland. In such cases, the owner of commonly known marks may request that an identical or similar trademark not be used in respect of identical or similar goods where use could mislead the public as to the origin of the goods.

To some extent, unregistered marks may be protected under the Fair Trading Act. Similarly, provided that the mark complies with the requirement to be protected as a copyrighted work, the Copyright and Related Rights Act could be applied.

Polish law does not provide for the definition of a ‘commonly known’ standard. Based on doctrine and jurisprudence, the mark must be recognised as a trademark in the whole or a significant part of Poland among at least 50% of potential and relevant customers. The burden of proof of such common knowledge lies with the trademark owner.

Registered marks

A trademark can be applied for and owned by a natural or legal person, or by organisational entities that are not legal persons but in which a statute vests legal capacity.

The application can be filed by the applicant or its professional representative. A natural person may be additionally represented by a joint proprietor of a right, its parents, siblings or a party’s descendants, and persons related to the party on the grounds of adoption. Persons whose place of residence or registered office is not located within the territory of the European Union, a European Free Trade Association member state, a party to the Agreement on the European Economic Area or Switzerland must act through a patent agent, attorney or legal counsel.

If a trademark application is filed by a representative, a written power of attorney, signed by the persons authorised to represent the applicant, is required. The power of attorney should accompany the files when the first legal action is taken and must be filed along with a document confirming the authorisation of undersigned persons to represent the applicant.

Based on Polish law, a trademark may include any sign that can be represented graphically if the sign is capable of distinguishing the goods of one undertaking from those of another. The catalogue of signs which could be protected is open. The Industrial Property Law directly mentions words, drawings, ornaments, colour composition, three-dimensional shapes (including the shape of products or packaging), melodies and any other sound signals.

The applicable regulations provide for two types of ground for refusal:

  • absolute (examined by the Patent Office ex officio); and
  • relative (being the basis for the opposition).

In both cases, the grounds for refusal are in principal synonymous to the provisions of Directive 2015/2436.

Procedures

Examination

After receiving the application, the Patent Office verifies whether it complies with formal requirements. Within two months of the application date, the following information about the mark is published:

  • the priority date;
  • the date and number of the application;
  • the list for goods or services for which protection is sought;
  • the name of the applicant and its seat; and
  • the country code.

After the publication of such information, third parties can submit comments regarding the existence of absolute grounds for refusal. The Patent Office simultaneously examines whether the trademark is eligible for registration and conducts an examination regarding the absolute grounds for refusal. If the Patent Office finds no grounds for refusal, the announcement of the trademark application is published in the Patent Office Bulletin. If there are absolute grounds for refusal, the decision refusing to grant the right of protection in respect of some or all the goods or services covered by the application will be published on becoming final. In the case of a partial refusal, after the decision becomes final, the announcement of the application will be published only in respect of the non-disputable goods or services.

Opposition

Within three months of the publication date in the Patent Office Bulletin, third parties may lodge an opposition against the trademark application based on relative grounds for refusal. The opposition should invoke relative earlier rights which may be affected by registration of the applied-for mark. Once the opposition is lodged, the Patent Office will notify the parties of the possibility of settling the matter amicably within two months of receiving the notification (with the possibility of an extension of up to six months). In the absence of an amicable settlement, the Patent Office will proceed with the examination of opposition. The party which disagrees with the decision can submit a request to re-examine the case or appeal to the administrative court once the decision is final.

Registration

If no opposition is lodged or any lodged opposition is dismissed, the trademark will be registered. It usually takes between seven and eight months from application to registration if no opposition has been entered. In the case of opposition proceedings, the timeframe should be extended to between 12 and 14 months.

If opposition was lodged and deemed well-founded, the Patent Office will refuse to register the trademark.

Removal from register

The Industrial Property Law provides for the invalidation and lapse of trademark protection rights.

The right of protection for a trademark may be invalidated on request, either in whole or in part, if the conditions necessary to obtaining that right have not been satisfied due to the existence of absolute or relative grounds for refusal. Theoretically, the invalidation request could be filed at any time. However, in some instances, a request for invalidation is excluded.

If the owner of an earlier trademark, a person vested with a moral or economic right or the holder of the commonly known trademark has acquiesced, for a period of five successive years, to the use of a later trademark, being aware of such use, that person will no longer be entitled on the basis of those earlier rights to apply for a declaration that the later trademark is invalid in respect of the goods or services for which the later mark has been used. However, if the rights holder acquires the rights in bad faith, the exclusion of the invalidity request does not apply.

An application for a declaration of invalidity will also be dismissed if a right of protection has been granted for the trademark which:

  • is not capable of distinguishing the goods for which it was applied for;
  • consists only of elements that have entered everyday speech or are customarily used in trade; and
  • has acquired a distinctive character in the ordinary course of trade by the date of application for invalidation in consequence of its use.

Additionally, an application for a declaration of invalidity will be dismissed if an opposition based on the same earlier rights and the same legal grounds has been finally dismissed.

The Industrial Property Law provides that a trademark protection right may lapse because the expiry of the term for which it was granted or the owner declares the surrender of the right before the Patent Office with the consent of persons who enjoy rights from the trademark (eg, a licensee).

The grounds for revocation are generally related to the trademark owner’s actions (eg, non-use). Trademark protection will also lapse if the mark loses its distinctive character or is liable to mislead the public. Where the grounds for revocation of rights exist in respect of only some goods or services for which the trademark is registered, the owner’s rights will be revoked in respect of those goods or services only. The decision confirming the lapse of the protection rights is issued by the Patent Office.

A trademark lapses as a result of non-use if a registered trademark is not put to genuine use for the goods covered by the protection right within a continuous five-year period from the date of issue of the decision granting trademark protection and if there are no important reasons for non-use. The five-year period is counted from the date of issue of the decision granting a trademark protection right.

The dilution of the trademark as grounds for refusal should be a consequence of the owner’s actions or omission to act. The dilution is defined as a loss of distinctive character by the trademark, which becomes a customary sign consisting solely of elements that can be used in trade to label the kind of goods; their quality, quantity and price; their intended purpose; the manufacturing process and time and place of manufacture; composition of the goods; and their function or shelf life – with respect to the goods for which it was registered.

The revocation of the trademark can also be based on the fact that the trademark may mislead the public, in particular, as to the character, properties or geographical origin of goods. Similar to other grounds for refusal, the misleading character must be a result of the actions of the owner or, with its consent, any third party.

Invalidation and declaration of the lapse of the said right are initiated on written request and settled under contentious proceedings by the Dispute Adjudicating Panels of the Patent Office. The contentious proceedings have an adversarial character and rely on the parties’ initiative to prove their rights and statements with the Patent Office acting as an arbitrator. The contentious proceedings are concluded with a decision. The Patent Office is bound by the scope of the motion and the legal basis indicated by the applicant.

The Industrial Property Law does not provide for statutory terms regarding trademark registrations, therefore the timeframe depends on the circumstances of the case. Assuming a limited amount of required correspondence, unopposed registrations usually take between seven and eight months. A lodged opposition extends this timeframe to 12 to 14 months, as it involves an examination of the opposition in the contentious proceedings.

Procedures regarding an already registered trademark customarily involve shorter timeframes. A change of name requires between two and four months. The renewal procedure requires a timely payment and application, and takes approximately one month to finalise. In the case of licence registration, the applicant might expect a decision within two months.

The official Patent Office search, Register Plus, is available online in Polish and English and is free of charge: http://regservtd.uprp.pl/register/regviewer.

Register Plus offers two types of search:

  • a simple search by registration number, application number and filing date; and
  • an advanced search by registration date, priority date, owner, representative, Vienna classification, Nice classification, trademark name and list of goods and services (in addition to the search criteria available for a simple search).

Neither option offers the possibility of searching by graphic. Register Plus is therefore used primarily for verifying the status of a trademark rather than conducting a thorough comparison research.

Enforcement

Enforcement of registered and unregistered rights is pursued through civil proceedings. The timeline for the proceedings include:

  • the initial one to two-year period in the first-instance court;
  • the subsequent period of up to one year if the appeal is filed; and
  • the period of a further year if the cassation is filed with the Supreme Court.

The party seeking protection demonstrates all of the conditions to prove that infringement has occurred. Thus, the trademark owner must provide all necessary evidence, including evidence of trademark use.

The enforcement can be initiated in case of the threat of infringement. In such a case, the party seeking protection can request an order prohibiting the defendant from proceeding with acts which would infringe the trademark.

‘Infringement’ is the unlawful use in trade of a protected mark. Trademark infringement occurs where an identical or similar mark is used in respect of identical or similar goods. Except for the double identity, the trademark is protected against public confusion. Reputable trademarks are also protected in the case of use of identical or similar marks for any goods. Instead of confusion, the owner must prove that such use may result in an unfair advantage or be detrimental to the distinctive character or repute of the earlier mark.

The claims of a party whose trademark rights have been infringed are pursued in civil proceedings before the common courts. Except for EU trademarks, there are no specialised trademark or IP courts to deal with infringement.

The owner may request the infringing party to cease the infringement, deliver the unlawfully earned benefits and, in the case of a faulty infringement, remedy the damage inflicted. Damages are available in the case of faulty infringement, which may be remedied either on general terms (calculated on the basis of the rights holder’s demonstrated loss) or through the payment of cash to an amount corresponding to the licence fee or other relevant remuneration which would be due for pursuing the claim for the owner’s consent to use the trademark. Punitive damages are not allowed. However, monetary compensation may be requested along with the delivery of the unlawfully earned benefits. Additionally, the owner may request the publication of the court judgment in its entirety or in part (or information about the judgment in the form specified by the court).

Trademark infringement is also subject to penal provisions. According to applicable regulations, anyone who labels goods with a counterfeit trademark or a registered trademark to which he or she is not entitled with a view to putting the goods on the market, or markets the goods labelled with said mark, is liable to restriction of liberty or imprisonment of up to two years. Additionally, where a perpetrator commissioned the offence through his or her permanent source of income or committed the said offence in respect of high-value goods, he or she is liable to imprisonment of between six months and five years.

Interim relief is available in the form of securing the claims for each party or participant to the infringement proceedings if said party substantiates its claim and legal interest in the security for a claim. The security may be awarded either before or during proceedings.

There are two further types of interim relief that might be claimed under the Industrial Property Law:

  • seizing the evidence at the trademark owner’s request (filed before or during proceedings); and
  • an information claim – to secure infringement claims, the trademark owner may request information including business names and addresses of producers, manufacturers, distributors, suppliers and other previous possessors of goods or providers of infringing services and the volume of goods or services. The security may be awarded either before or during proceedings.

Ownership changes and rights transfers

The agreements regarding ownership changes and rights transfers should be made in writing under pain of nullity. If a change in the trademark registry is made based on these documents, originals should be submitted. If a copy is submitted instead of the original, it must be certified for compliance with the original by the applicant’s representative, provided that said representative is a patent agent, attorney or legal counsel, or otherwise by a notary.

Use of the trademark by a licensee is attributable to the owner in terms of the required use necessary for non-expiry of the trademark. The holder of an exclusive licence entered in the register may bring proceedings for infringement and ask for remedies to the same extent as a trademark owner.

Related rights

Trademark rights might overlap with regulations regarding copyright, design and unfair competition.

If a trademark is a work within the meaning of the Copyright Act and related rights, it may be protected as a work. There is also the possibility of protecting the trademark as a design. However, the possibility of a design’s protection depends on its novelty; therefore, if a trademark has previously been registered or used, design protection will be not available.

Online issues

There are no specific provisions protecting mark owners against unauthorised use in domain names, websites, hyperlinks, online advertisements or metatags. These can be protected under the general terms of the applicable IP law.

In the case of maintenance infringement of an internet domain name in the ‘.pl’ domain, the resolution could be submitted to a specialised unit – the Court of Arbitration in Matters Concerning Internet Domain Names at the Polish Chamber of Information Technology and Telecommunications. Submissions for resolution are based on the arbitration clause between parties. The court rules are available online in English:

www.piit.org.pl/__data/assets/pdf_file/0024/4668/Rules_of_the_Arbitration_Court_v2010.pdf

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Krystyna

Krystyna Szczepanowska-Kozłowska
Partner
[email protected]

Krystyna Szczepanowska-Kozłowska is a partner at Allen & Overy, heading the IP practice. She is a legal adviser with over 20 years of experience.

She provides clients with cutting-edge advice on a wide range of IP issues relating to patents, trademarks and copyrights, both contentious and non-contentious. She advises on complex cases, working with both national and international clients on high-profile and strategic matters. She represents major international companies in their high-profile and exceptionally complex patent and trademark disputes, which involve a significant amount of technical expertise. She advises on cases shaping the fundamentals of patent litigation in Poland and providing the benchmark for patent cases. Professor Szczepanowska-Kozłowska is particularly recognised for her in-depth knowledge of the life sciences, telecoms, media and pharmaceuticals sectors.

Jakub Zabraniak

Jakub Zabraniak
Associate
[email protected]

Jakub Zabraniak is an associate in the IP department at Allen & Overy A Pędzich spk. He graduated from the faculty of law at the University of Warsaw in 2017. Before joining Allen & Overy, Mr Zabraniak worked at the Warsaw office of a pharmaceutical company and gained experience in public administration. He is also a graduate of an exchange law programme at the Katholieke Universiteit Leuven, Belgium. He specialises in intellectual property and pharmaceutical law, and works mainly for companies from the life sciences, telecoms, insurance and banking sectors.