Allen & Overy LLP
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. Following 16 March 2019, when the last legislative action towards harmonisation was taken, 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 benefit from the same protection as registered ones if they are commonly known within Poland. In such cases, the owner of the commonly known mark may request that an identical or similar trademark not be used in respect of identical or similar goods where the 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 by a significant part of the relevant customer base in Poland, however, the scope varies depending on the specific product and sector. The burden of proof of such common knowledge lies with the trademark owner.
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 is capable of distinguishing the goods of one undertaking from those of another and can be demonstrated in the trademark register in a way that the scope of granted protection can be clearly and accurately determined. The catalogue of signs which could be protected is open. The Industrial Property Law directly mentions words (including surnames), figures, letters, digits, colours, spatial objects (including the shape of a product or packaging), as well as sounds. Although not explicitly excluded, the official guidance issued by the Patent Office indicates that scents remain outside of this catalogue due to the lack of technology that would allow for their clear and accurate demonstration in the register.
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 with the provisions of Directive 2015/2436.
After receiving the application, the Patent Office verifies whether it complies with formal requirements. If it does not and it can be remedied, the Patent Office might call on the applicant to do so, otherwise the proceedings will be discontinued.
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. In either case, the Patent Office will be able to refuse to grant the right of protection only once it collects and considers the applicant’s statement regarding the occurred grounds.
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. In a limited scope, the opposition may be also based on absolute grounds for refusal – if the application considers the trademark to be excluded from registration under the national legislation, the EU law or an international agreement providing for the protection of geographical indication, designation of origin, a traditional term for wine or traditional speciality guaranteed.
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.
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 submitted. 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 obtain that right have not been satisfied due to the existence of absolute grounds or – in a limited scope – relative grounds (existence of the earlier right) for refusal. Theoretically, the invalidation request could be filed at any time. However, in some instances, a request for invalidation is excluded. This includes situations where:
- the claim is based on the existence of the earlier trademark or infringement of the applicant’s economic or moral rights, but the trademark in question was successively used for a period of five years without the applicant’s objection – this does not apply if the trademark in question was obtained in bad faith;
- the trademark in question was granted despite the existence of certain absolute grounds for refusal (in principle, synonymous with the provisions of Article 4 (1b-1d) of Directive 2015/2436), but it acquired a distinctive character in the ordinary course of trade by the time that the invalidity request was submitted;
- the claim is based on the existence of the commonly known trademark, but the trademark in question was successively used for a five-year period without the applicant’s objection – this does not apply if the trademark in question was obtained in bad faith; and
- the claim is based on the same earlier rights and same legal grounds as the opposition that was already finally dismissed.
The Industrial Property Law provides for additional regulations regarding the invalidity requests based on the existence of the earlier trademarks. These are, in principle, synonymous with the provisions of Article 46 of Directive 2015/2436.
Regarding the trademark’s expiry, the Industrial Property Law provides that a trademark protection right may primarily lapse due to the expiry of the term for which it was granted or if 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 remaining grounds for expiry are generally related to the trademark owner’s actions (eg, non-use) or consider the improper use of collective and guarantee marks. These are, in principle, synonymous with the provisions of Articles 19-21 and 35 of Directive 2015/2436, respectively.
The decision confirming the lapse of the protection rights is issued by the Patent Office, except for where the protection right has lapsed due to the expiry of the term for which it was granted.
Invalidation and declaration of the lapse of the said right are initiated on written request and, in principle, settled under contentious proceedings by the Dispute Adjudicating Panels of the Patent Office (following 1 July 2020 – alternatively before the common court, in case of a counterclaim based on the invalidity or expiry of the protection right). 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 does not require a separate motion, just a timely payment with a clear indication of the renewed protection right. The Patent Office notifies the owner of the deadline six months prior. In the case of licence registration, the applicant might expect a decision within two months.
The official Patent Office search, E-Search (E-Wyszukiwarka), is available online in Polish, English and French and is free of charge: https://ewyszukiwarka.pue.uprp.gov.pl/search/simple-search. The search engine is based on a series of adjustable attributes:
- type of IP right;
- content of abstract;
- representation (eg, Vienna classification, colour and description);
- list of goods (eg, Nice classes);
- basic information (eg, relevant dates, category of rights, name or title, application and exclusive rights number, years of protection paid, start of opposition period, decision type, mark feature, current status and English title);
- priority (eg, date and country of priority);
- additional information (eg, application information, exhibition details, expected fee and date of payment for the next protection period);
- publications (eg, publication details and documents cited in search report);
- people involved in the case (eg, opponents, applicants and representatives);
- oppositions (eg, date of filing and publication and opposition status); and
- claims (eg, conversion and transmission).
E-Search offers two types of search, varying in how these attributes are used:
- a simple search, which compares the key word against all available attributes; and
- an advanced search, which allows for selecting the attributes to be compared against the key word and specifying whether the searched item should feature the defined attribute.
Although E-Search is significant progress over the previous search engine (Register Plus), it still does not offer the possibility of searching by graphic.
Enforcement of registered and unregistered rights is pursued through civil proceedings. The timeline for the proceedings has been significantly affected by the covid-19 pandemic, but customarily includes:
- 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 mark, compared to the trademark registered with earlier priority, is used in respect of identical 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. Infringement also occurs where the trademark is used in an advertisement that constitutes an act of unfair competition under the Fair Trading Act, or as a trade name or business name, unless its use does not interfere with the possibility of distinguishing the relevant products.
As of 1 July 2020, the claims of a party whose trademark rights have been infringed are pursued in a dedicated procedure for IP cases before the specialised departments of the common courts. Five departments were created in the Regional Courts of Warsaw, Gdańsk, Katowice, Lublin and Poznań to act as first-instance courts; and two departments were created in the Courts of Appeal of Warsaw and Poznań to act as the second-instance courts.
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. The claims can also be pursued against the party who offers the labelled products that were obtained neither from the trademark owner nor the person authorised to use the trademark, as well as against the parties whose services were used in the course of the infringement.
Also, 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). The Industrial Property Law also provides for additional claims that are, in principle, synonymous with the provisions of Articles 10(4), 11, 12 and 18 of Directive 2015/2436.
Trademark infringement is also subject to penal provisions. According to applicable regulations, anyone who labels goods with a counterfeit national or EU trademark or a registered national or EU trademark to which he or she is not entitled, with an intention of putting the goods on the market, or markets the goods labelled with said marks, 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.
Further, the new IP procedure provides for a package of three types of discovery claim, which are a mixture of new and existing solutions. These serve to discover the circumstances surrounding the IP rights infringement (extraction purpose) and securing certain materials for the purposes of producing the evidence in the related infringement litigation (conservative purpose). Although similar, these measures differ in scope and applicability to accommodate a variety of IP cases:
- Securing the means of evidence – this can be applied against the defendant or any third party that might enable securing the means of evidence. It aims to physically preserve certain materials that will allow for producing evidence in any future IP litigation. The claimant is not required to explicitly indicate facts that are meant to be proven, as this measure is designed to gather facts about the scope of the infringement. The court’s decision on granting this measure can be changed or repealed if the reason for granting it has changed or ceased to exist. The court may do so upon the motion filed by the party that was obliged to disclose the concerned materials, as well as by the defendant.
- Disclosure or issuing the means of evidence – the aim is to extract the means of evidence that is at the defendant’s disposal, particularly banking, financial or commercial documents. Compared to the first measure, this requires a greater level of specification from the claimant in terms of indicating what is actually requested and demonstrating that it is indeed in the possession of the defendant.
- Request for information – the most specific of the three measures, as the scope of information that may be requested is limited to data on the origin and distribution networks of goods or services, if obtaining them is necessary to pursue an IP-related claim. This can be applied against the defendant or any third party that may possess or have access to this information.
The new IP procedure also provides for two types of IP-specific claim. The first applies in infringement cases regarding trademarks (but also industrial designs) and provides the possibility for a counterclaim based on the invalidity or expiry of the relevant exclusive right. Such cases were previously only reviewed by the Polish Patent Office and this will remain the case as an alternative to the abovementioned counterclaim in infringement cases. To avoid re-examining the same case, the new IP procedure provides for the conflict rules between the IP courts and the Polish Patent Office (including the obligatory suspension of the civil proceedings).
The second type of IP-specific case is a declaratory claim that aims to confirm that certain actions that have already been taken or will be taken by the claimant do not constitute infringement of the industrial property rights. This serves as a protection against investments that may turn out to be unprofitable if they cannot be executed due to existing IP rights. The declaratory claim must be preceded by communication between the claimant and the exclusive rights holder, in which the potentially infringing actions are discussed.
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. Upon the owner’s consent the holder of an exclusive licence entered in the register may bring proceedings for infringement and ask for remedies to the same extent as the owner, unless otherwise stipulated in the licence agreement. However, such consent is not required if the owner was called on to take actions relating to the infringement and failed to do so within a given term. To obtain compensation for the loss, the licensee might join the infringement proceedings initiated by the owner.
Trademark rights might overlap with regulations regarding copyright, design and unfair competition.
If a trademark is ‘the work’ within the meaning of the Copyright Act and related rights, it may be protected as such. 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.
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 Polish: https://www.piit.org.pl/__data/assets/pdf_file/0016/8521/STATUT_20.03.2018_wersja_jednolita.pdf.