Zaborski, Morysiński - Poland
The Polish Ministry of Economic Development and Technology has announced a brand-new bill on intellectual property, which replaces the Industrial Property Law of 30 June 2000, which has been amended more than 20 times to date.
The legislator highlights that due to the numerous amendments, the current law is unclear, with multiple interpretational doubts. Moreover, the registration procedure is slow and overly formalised. The projected law aims to rectify this to the benefit of businesses. In addition to the current law, the industrial property legal system as a whole is struggling to keep up with the needs of a modern and fast-growing economy.
The proposed new bill has not yet been published in its entirety, only the essence of solutions included in the project have been releases. With regard to trademarks, the announcement mentions:
- changing the scope of making public all documents at the stage of filing the mark on the website of the Patent Office;
- shortening the period for submission of opposition to two months after the date of publication of information about the application;
- removing the obligatory two-month conciliatory agreement period for the parties in the course of the opposition proceedings; and
- abolishing the joint protection right.
The legislator believes that these changes will speed up the process of trademark registration. It is emphasised that the amendments will be consistent with the principle of freedom of contract, where it is up to the parties to shape their own legal relationship.
The draft changes how disputes with the Polish Patent Office are handled, including trademark cancellation proceedings. At present, the principle is that dispute proceedings before the office take place during hearings. Pursuant to the planned amendments, these proceedings will, as a rule, be adjudicated in closed sessions.
The prospective bill introduces the possibility of mediation as an alternative method of dispute resolution tailored to industrial property cases. Mediation will be voluntary and take place at the request of the parties.
For practitioners, the shortened period to file an opposition and the removal of the cooling-off period may be disadvantageous. Often the time between the publication of the trademark and the opposition deadline is used to negotiate an agreement, thus avoiding litigation. Additionally, resignation of hearings during dispute proceedings before the Polish Patent Office does not seem to be a good direction. The dispute proceeding shall be contradictory, where parties shall have a right to present their arguments not only in writing but also during the hearing. While it is hard to foresee that mediation will succeed in trademark proceedings, it is still good to have a new alternative method of dispute resolution made available.