Zaborski, Morysiński - Poland
Many rights holders have questioned whether it is worth filing an application for a design or a trademark in Poland because the registration proceedings seem too long. Fortunately, the Polish Patent Office has introduced a fast-track procedure to help with this.
On 17 March 2021 the Polish Patent Office introduced a faster process for examining design and trademark applications. If the application complies with the requirements for expedited registration, it will speed up the registration proceeding considerably.
Fast-track conditions must be met at the time of filing. If an application is found to no longer meet the conditions, it will be exempted and will continue to be processed under the regular procedure. The office will inform the applicant or its representative in writing about the application’s exclusion from the programme.
Fast-track applications must be submitted in electronic form via the patent office’s electronic services platform (PUEUP) using a dedicated accelerated mode. Payment for the application must be made using the electronic payment service (e-payments), which is accessed via the customer's PUEUP account, before sending the application to the office.
During the proceedings, the notification will be processed electronically and the applicant may not opt out of receiving electronic correspondence. A change in the method of delivery will be considered as a circumstance excluding the application from fast-track proceedings.
The accelerated application form must be completed correctly. Irregularities in this respect will be considered as a circumstance excluding the trademark from fast-track proceedings.
The fast-track procedure is only applicable for an individual trademark and cannot be used for certification or collective marks. Moreover, the application must be uniform; otherwise, it will be removed from the programme.
The trademark owner must state the type of trademark that it is applying to register. Some types of trademark (eg, position, pattern, colour or motion marks) may require a description. Failure to provide a description will be cause to exclude the trademark from fast-track proceedings.
In the case of a trademark containing colour elements, the trademark representation must be presented in colour, with the list of colours used, in accordance with the International Classification of Image Elements (Vienna Classification). Applicants are recommended to use the red-green-blue colour palette specification. Moreover, representations must accurately represent all colours to be protected. An indication of colours in the description alone will not suffice.
The indication of colours that do not correspond to the representation of the trademark will be considered as a circumstance excluding the trademark from expedition. Moreover, the representation of the sign in a format that differs from that required by the Polish Patent Office will be considered as a circumstance excluding the application from fast-track proceedings.
Listing goods and services
The list of goods and services must be made using TMclass, which includes a database of harmonised terms. If any term is not derived from the harmonised database, it will be considered as a circumstance excluding the trademark from the fast-track route.
After checking the formal and legal issues of the application, the office will check whether the applied-for mark is eligible for registration. Here it will examine the mark’s distinctiveness and other absolute grounds for refusal.
To speed up the issuance of protection certificates for applications examined under the fast-track process, the applicant or representative, after receiving a decision granting protection for its mark, should pay the registration fees to the patent office account indicated in the decision immediately. Moreover, the applicant or representative must submit a declaration of waiver of the right to submit an application for reconsideration of the case against the decision to grant registration.
In the case of design applications, the design title should be selected from the Design Class database. If earlier priority is claimed, all documents should be attached to the application. Deficiencies in this respect will be considered as a circumstance excluding the application from the fast-track programme.
If the applicant is not the designer, it should indicate the creator and the basis on which they may obtain the design right. Irregularities in this respect will be considered as a circumstance excluding the application from fast-track proceedings.
The representation of the design should be in JPEG format. Attaching an illustration to a file in a different format will be considered a circumstance excluding the application from the expedited process. Moreover, irregularities in the presentation of the design will also be considered as a circumstance excluding it from the process.
After receiving the decision to grant the design right, the applicant or its representative should pay the registration fees to the patent office account indicated in the decision and submit a declaration of waiver of the right to submit an application for reconsideration of the case against the decision to grant registration.
The new fast-track procedure should be welcomed by applicants. Despite the strict requirements and risks of losing expedition privileges, the process should lead to quicker trademark and design registrations before the Polish Patent Office.