Zaborski, Morysiński - Poland
Pursuant to Article 132of the Polish Industrial Law, trademark protection rights cannot be granted for signs that infringe a third party’s personal or economic rights. This is one of the relative grounds for refusal of a trademark registration on which an opposition or invalidation motion may be based. Copyright is one example of a third party’s economic rights that forms the basis to oppose or invalidate a Polish mark.
Copyright arises automatically when a work is created and is not subject to registration. As a rule, the copyright belongs to the author of the work, who can then decide how to use the creation and benefit financially from it.
In order to base an opposition or invalidation motion on copyright infringement, the opponent must prove that copyright exists and that it is the copyright owner. In Poland there is no register for this, so in most cases it is not possible to present a copyright certificate. Parties therefore present agreements, affidavits or testimonials to prove a work’s existence, moment of creation and shape. In most cases, parties will argue about the latter two features, as finding proof of these is challenging. Further, collecting evidence can be time consuming and expensive and a positive result is not certain.
WIPO has introduced a new service called WIPO PROOF, which offers a date and time-stamped digital fingerprint of a file, thereby providing tamper-proof evidence of its existence at a specific point in time. This service can be used to safeguard a digital file of any size, whether it is numeric, an image, executable, text or audio-visual. It must be noted that WIPO PROOF is not a replacement for an IP registration system, although it can be helpful in IP-related disputes, including trademark disputes.
Under the WIPO PROOF system, the file does not need to be sent to external WIPO servers. The data is saved in the user’s browser and a unique token is generated with an assigned digital stamp confirming the date of its generation, which is stored by WIPO for five years. This can then be extended before the storage period expires.
A WIPO PROOF token costs Sfr20 and can be verified online for free – although a WIPO account is not required to do so. WIPO also offers the option to purchase a certificate of the token’s authenticity in the form of a PDF document signed by the organisation (Sfr20).
WIPO PROOF can be treated as an additional element in an IP management strategy. Both tokens and certificates are helpful in proving the existence of a copyright at a specific moment in time and to demonstrate that the file has not been modified since its creation. The fact that the token and certificate are granted by a credible international organisation increases the value of these documents.
Bearing in mind the difficulties connected with proving the existence of copyright in Poland, a document confirming that the work existed in a defined shape at a specific moment in time is extremely useful in any trademark proceeding. It can be a vital tool when filing opposition or invalidation motions before the Polish Patent Office for copyright infringement.