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A new and potentially superior trademark registration system has been introduced in Poland. Effective April 15, 2016, existing trademarks – whether identical or similar, will be taken into account by the Patent Office (“PO”) only if the holder of the earlier right files an opposition with regard to a later trademark application. Thus it is now incumbent upon holders of Polish trademarks to do a legal review of any new applications filed. The system is not foreign to many international trademark practitioners as it is common in many jurisdictions. But it is new to Poland, and the need for closer, self-policing of your marks, has been heightened. Here are some basic precepts of the reform in Poland.
Examination Of The Application
The application for registration of a trademark will be notified in the Polish Patent Office Bulletin (“Biuletyn Urz?du Patentowego”) immediately, once mandatory grounds of refusal to registration are ruled out. Before the publication, but no later than 2 months after the application for registration is filed, the PO will disclose the application in the PO’s online database. The PO will prepare a review of earlier conflicting trademarks with respect to the trademarks to be published, however, the results of the review will be made available only to the applicant. It is the existing trademark holders who will have to monitor the PO’s databases and the Bulletin in order to learn of any potential conflicting applications filed later.
An opposition may be filed within 3 months of the date of publication of the trademark application in the Polish Patent Office Bulletin and this deadline cannot be extended. This is yet another reason for regular review of your trademark portfolio. Holder of an earlier trademark or holder of an earlier moral or economic rights may oppose a registration of a trademark only on relative grounds. The Patent Office immediately notifies the applicant of the filed opposition and notifies the parties to the proceedings of the option to resolve the dispute amicably within 2 months of the delivery of the notice. This deadline may be extended to 6 months at the parties’ joint request. After that, the PO requests the applicant to formally respond to the opposition within a specified time limit.
In the response, the applicant enters pleas and presents all facts and evidence in support thereof. This means that all the evidence needs to be provided early in the proceedings, i.e., during the opposition proceedings. It is not clear whether the obligation to present all facts and evidence pertains to the opposition alone. Literal interpretation of the regulation shows that it doesn’t. The PO will not consider the claims and evidence not filed within the stipulated time limit, unless the party shows that their filing had not been possible or that the need to file them arisen later. Further claims and evidence are filed within a month of the day when their filing became possible or the need to file them arose.
The PO delivers the response to the opposition to the opposing party and specifies a deadline for stating the reply and supplementing the evidence. The applicant may address the opposition within a time limit established by the PO. One may assume that, after the above outlined exchange of positions, the PO may request a party to express its position on the materials presented by the other party within a specified time limit. A hearing in opposition proceedings may be held ex officio or at a party’s request, if the PO deems it reasonable.
The party applying for trademark registration may plead that the trademark, being the subject matter of the opposition, has not been used in an effective manner for a continuous period of 5 years prior to the application for registration of the later trademark, unless there are material grounds for its non-use or the period of 5 years from the registration of the earlier trademark has not lapsed. The option to enter the plea is limited by the deadline for filing of the response to the opposition. In the case where the plea is acknowledged, the Patent Office dismisses the opposition. A question may be raised as to the PO’s standpoint regarding European community trademarks based on which an opposition is filed, i.e., whether it will suffice to show the use in the EU, as The Patent Office considers the opposition within its limits and is bound by the legal grounds stated by the opposing party. Only after the opposition is dismissed or acknowledged in whole or in part will the PO permit or refuse the registration of a trademark.
Once the opposition is decided, the parties may file for reconsideration of the case. However, the new provisions preclude the filing of a motion for invalidation of a trademark right, if the opposition based on the same earlier rights and legal grounds was dismissed under a final decision. Therefore, one is prevented from filing for invalidation of trademark protection right in the event where an opposition was filed earlier based on the same legal grounds.
Apart from opposing, one may also submit remarks regarding the trademark application until such time as a decision is made on trademark registration. The comments may only be based on mandatory grounds.
Assessment Of The New System
The Opposition System should significantly precipitate the registration of trademarks which has historically been a rather lengthy process.. Moreover, the Polish system of trademark registration will be more aligned with the system applicable in the EU. Parties to proceedings may, however, struggle with some of the solutions such as the requirement of presenting all evidence within a specified time limit under the pain of being disregarded by the PO. What is more, following the regulations may initially prove to be difficult as some issues lack clarity and it will be necessary to develop practices with regard to them. This can be a treacherous journey into uncharted waters, but we are experienced trademark counsel that can lead you to a successful registration, or even a successful opposition based upon a prior trademark.
Should you have any questions, I will be pleased to further assist.
Monika Zuraw, PhD
Attorney-at-law | Partner
Bieniak Smoluch Wielhorski Wojnar i Wspólnicy Spólka Komandytowa
tel.: +48 22 420 59 59
fax.: +48 22 420 59 60
address: ul. Ks. I. J. Skorupki 5
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