Changes in Trademark Law

Changes in trademark law

Warsaw, April 2016

Contents

Radical changes in trademark law ...... 3 Registration of “Poland” trademarks will be easier to obtain ...... 4 Change in trademark registration system ...... 5 Easier to revoke or invalidate a trademark...... 8 Authors ...... 10 Intellectual Property ...... 11 About Wardyński & Partners ...... 12

Radical changes in trademark law Monika Wieczorkowska, Marzena Białasik-Kendzior The fairly long waiting time for registration of trademarks at the Polish Patent Office often means that instead of seeking protection in Poland, businesses decide to register with the European Union Intellectual Property Office (EUIPO, formerly OHIM). Although much more expensive, proceedings there are generally fast and simple. Major changes have now been made to Poland’s Industrial Property Law with the aim of making the Polish Pa- tent Office more competitive with EUIPO. The Industrial Property Law of 30 June 2000 ity. Enterprises operating within a single capi- was recently amended by two separate acts: tal and organisational group, but as separate the first one dated 24 July 2015, which en- entities with different names, had particular tered into force on 1 December 2015, and the problems. These enterprises could not regis- second dated 15 September 2015, entering ter similar trademarks even if the similarity into force on 15 April 2016. involved a designation used by entities from One of the key changes in trademark law the same group and a relevant statement was made by the first amending act, already in submitted (e.g. a letter of consent or a coex- force, is the introduction of letters of con- istence agreement). In situations of this type, sent, i.e. a declaration which can be used to the Patent Office did not recognise agree- gain registration of a trademark similar to an ments between the enterprises. earlier mark if the holder of the earlier mark Under the new regulations, the Patent Office consents. Previously, apart from a conflict will register a trademark if the applicant sub- with a mark that had already expired, there mits the relevant consent of the proprietor of was no legal basis governing the issue of the earlier trademark. Thus the Parliament submission of letters of consent in proceed- adapted the trademark law to meet the expec- ings before the Patent Office. tations of the market, making life easier for The basic function of a trademark is to dis- many enterprises. Recognition of letters of tinguish the goods of one enterprise from the consent will translate into a greater number of goods of other enterprises. Thus the Patent positive decisions on trademark registration. Office refused to register a later mark if it These provisions will have the most relevance found that it was identical or similar to an in trademark cases filed between 1 December earlier mark for the same or similar goods. 2015 and 15 April 2016, when the second Rulings by the administrative courts con- amendment introduces a new system for reg- firmed this restrictive approach. istration of trademarks. Although this practice was sanctioned by the regulations, it did not reflect commercial real-

Registration of “Poland” trademarks will be easier to obtain Monika Wieczorkowska, Marzena Białasik-Kendzior Apart from the recognition of letters of consent, a major change in trademark law already in force is the possibility of registering a mark containing the name Polska or Poland (or the abbreviations RP or PL), or the name of a Polish locality, without the need to obtain the consent of the relevant authorities. Businesses often seek protection for trade- Significantly, although not expressly covered marks that include the name of the country or by the Industrial Property Law, attempts to other geographical name. Notwithstanding register trademarks using foreign-language rulings by the courts that the use of the word versions of the country name were also de- “Polska” always requires legitimation by the nied. The Patent Office and the administra- state, enterprises use the word “Polska” tive courts both recognised that the word merely to indicate the location of their firm or “Poland” is commonly used as an official to show some other obvious commercial designation of the republic, and even audi- connection to Poland. In most instances con- ences unfamiliar with English associated “Po- sumers correctly grasp the intended meaning, land” with the name of the country. because they are aware of the realities of A consequence of this was numerous deci- commercial life and are accustomed to the sions refusing to register trademarks that con- extensive presence of the word in the names tained the name of the country or a Polish of enterprises and on goods. city. Enterprises still wanting to register such But previously this designation could be reg- marks applied instead to the EU Intellectual istered only in adjective form (e.g. Zielnik Property Office (EUIPO, formerly OHIM), Polski, Polskie Przysmaki, Polski Bus), unless which registered such marks without requir- the applicant could show authorisation, spe- ing proof of any consent. cifically permission from the relevant authori- Therefore, removing the ban on registration ty or consent of an organisation to use the of trademarks containing the name or abbre- name in commerce. The problem was that in viation of the Republic of Poland or the many instances no permission could be ob- name of a city or other location in Poland tained from the relevant authority because should eliminate this problem and result in there were no regulations designating the a major increase in the number of trademarks relevant authority. No state or local authority registered by the Polish Patent Office. has been vested with the competence to issue permission to use the name “Polska” in Unfortunately, the new regulations apply only commerce, and the same applies to the names to filings made on or after 1 December 2015. of Warsaw and many other cities, as well as Poland’s national symbols.

Change in trademark registration system Monika Wieczorkowska The second amendment to the Industrial Property Law, which enters into force on 15 April 2016, introduces major changes in the procedure for obtaining protective rights to a trademark—replacing the current examination system with a register system. Poland is one of the few countries in Europe But the system has its drawbacks. Its primary following an examination system for trade- weakness is the fairly long time it takes to mark filings. Under this system, before grant- wait for the grant of protection, as well as the ing protection to a trademark, the Polish Pa- complicated procedure. And sometimes en- tent Office conducts a full formal and sub- terprises applying for protection in Poland are stantive examination. The Patent Office refused even though in practice there is no checks not only whether the designation real risk of confusion to consumers. Prior meets the requirements for a trademark marks, including EU trademarks (formerly (known as “absolute grounds”), but also known as Community trademarks) which are whether the trademark conflicts with prior often not even used in Poland, can formally rights, for example another trademark identi- block registration of later national marks. In cal or similar to the one filed (“relative most cases the holders of the earlier rights are grounds”). If the Patent Office does not find not aware that their marks are preventing any grounds for refusal, it issues a decision other entities from gaining rights, because granting protection to the trademark. But if it they are not involved in the procedure before finds a conflict, the offices refuses protection the Polish Patent Office and do not incur any in consideration of the public interest, i.e. the of the related costs. interests of consumers and the rights of the End of formal blocking of trademarks proprietor of the earlier trademark. Starting 15 April 2016, a register system for An advantage of the examination system is trademark filings will function in Poland, as it the relatively high degree of legal certainty. does in the EU Intellectual Property Office While obtaining protection for the mark does (EUIPO, formerly OHIM). Under the new not guarantee the proprietor that it does not system, the Patent Office will conduct a for- infringe any earlier marks, the examination of mal legal examination and verify only that the the marks conducted by the Patent Office is trademark meets the absolute grounds for scrupulous and should prevent registration of protection. a mark identical or similar to an earlier mark The Patent Office will also notify the appli- for the same or similar goods or services cant of the existence of prior identical or sim- where there is a risk of confusion to consum- ilar trademarks for the same or similar goods ers as to the origin of the goods or services. or services. The purpose of this is to encour-

5 age legal certainty and to communicate clearly Patent Office’s biweekly bulletin (Biuletyn to the applicant the potential barriers to regis- Urzędu Patentowego). tration in the form of third-party rights. The act also provides for the possibility of So de facto the Patent Office will continue to asserting in the response to the opposition conduct a merits examination, but if it finds the objection of failure to make genuine use conflicting trademarks it will not refuse on its of the prior mark for an uninterrupted period own initiative to grant protective rights to the of five years prior to the date of filing of the mark due to a conflict with prior rights. The application for the trademark which is the change in system will make it easier for appli- subject of the opposition, for the goods cov- cants to register trademarks due to elimina- ered by the opposition. If this objection is tion of the situation of formal blocking of upheld, the office will deny the opposition. a trademark by the existence of prior rights. It This is a beneficial change. Currently there is should also expedite the application process, also a possibility of asserting the objection of as notice of the trademark filing will be pub- non-use of the earlier trademark, but it re- lished within two months at the latest after quires commencement of a separate proceed- the filing. (Currently the Patent Office is re- ing for invalidation of the prior mark, pro- quired to publish an announcement promptly longing the proceeding and generating addi- after three months following the application tional costs. date, but in practice the information is pub- The amendment also eliminates the rule that lished four months after the application is the opposition proceeding is discontinued filed.) and a decision is issued invalidating the deci- Filing of comments and opposition sion granting protection to the trademark if Under the new system, after information the proprietor does not file a timely response about the trademark filing is published, to the opposition. Under the new rules, the comments can be presented concerning the Patent Office, like EUIPO, will consider the existence of circumstances preventing the opposition and issue a decision upholding it grant of protection. Currently comments can or denying it even if the applicant does not be filed referring to both absolute grounds present its position on the opposition. and relative grounds. Under the amended law, This is a beneficial change. It has sometimes it will be possible to file comments only happened in the past that enterprises that based on absolute grounds, and opposition have incurred high costs to obtain exclusive only on relative grounds. rights to a trademark very quickly lost those The time for filing of opposition will also rights because of failure to file a timely re- change. Under the old law, opposition could sponse to opposition. The reasons have var- be filed after grant of protection for the ied, but typically it was unfamiliarity with the trademark, within six months after publica- law, mistakes in the circulation of corre- tion in the Patent Office’s monthly journal spondence, or the too-brief period for filing (Wiadomości Urzędu Patentowego). From 15 April a response. Proprietors often did not realise 2016, opposition may be filed before protec- that it would have been sufficient to file tion is granted, only within three months after a simple statement that the opposition is publication of notice of the application in the groundless. Sometimes this benefits proprie-

6 tors of earlier marks whose opposition would treatment of the parties. Under the old rules, not have been upheld otherwise, but succeed- an applicant that obtained a negative deci- ed in eliminating later trademarks from the sion—unlike the holder of prior rights—had register for purely procedural reasons and no opportunity to submit new evidence and without incurring significant costs. commence another proceeding on the same It should be stressed that this change applies matter. only to trademarks. The rule discussed above Initiative required of trademark holders has not been eliminated in the case of other It should also be mentioned that unlike industrial property rights, i.e. industrial de- EUIPO, the Polish Patent Office will not signs, utility models, and patents. send notice of trademark filings to holders of Another provision introduced by the prior rights. This means that holders that amendment should also reduce costs. Cur- want to prevent the registration of conflicting rently, when opposition is held to be ground- trademarks must conduct their own monitor- less, the case is resolved in an adversary pro- ing of trademark applications and file opposi- ceeding and the decision is issued following tion to marks that may infringe their rights. a hearing. The new system does not provide Thus the initiative of a trademark holder for a hearing. The decision to uphold or deny should not end upon obtaining exclusive opposition will be made by an expert from rights; after entry into force of the new regu- the Patent Office. However, if a party does lations, the holder should actively oppose not agree with the decision by the office, it registration of conflicting marks. This impos- may seek reconsideration. Then, if the office es additional obligations on holders of prior considers it to be warranted, a hearing may be rights and requires them to incur the costs of scheduled at the office’s own initiative or at potential opposition proceedings. the request of a party. Despite these inconveniences, the new model Significantly, the new rules of procedure in for trademark registration represents a revolu- opposition cases require the party filing the tionary change which should increase the opposition to submit evidence within the number of trademark filings and make it easi- appropriate time or waive the right to rely on er for enterprises to obtain protection within the evidence. Under the old rules, a party the national trademark system. Effective filing opposition could attempt to evade this functioning of the new system should particu- evidentiary requirement by commencing larly encourage Polish applicants to select a new proceeding, to invalidate the trade- national protection, without the need to apply mark, based on new evidence not raised be- to EUIPO. Despite the undoubted ad- fore. The second amendment to the Industri- vantages of protection at the EU level, the al Property Law eliminates the possibility of costs of obtaining and maintaining it are usu- filing an application for invalidation when ally very high for trademark holders. opposition was previously filed based on the same legal grounds and the same prior rights and was denied with legal finality. The purpose of the new rule is to ensure the equal

Easier to revoke or invalidate a trademark Monika Wieczorkowska

The amendment of the Industrial Property Law entering into force on 15 April 2016 also introduces major changes in regulations governing the loss of the protective rights to trademarks. First and foremost, the amendment elimi- cording to the case law and the legal litera- nates the requirement to demonstrate a legal ture, a legal interest is an objectively existing interest in seeking revocation or invalidation qualification arising out of substantive law, of trademark rights. However, the grounds i.e. it must be based on a specific provision of for revocation or invalidation have not law. It cannot be contingent or hypothetical changed. but must actually exist at the time the given legal standard is applied. One of the main grounds for revocation of a trademark is failure to use the trademark. Meanwhile, given the huge number of trade- Other grounds include the loss of distinctive marks registered and protected in Poland and character, where the mark has become mis- the European Union, limiting their number leading, creating a risk of confusion among by eliminating protection for marks that are consumers as to the nature, properties or not being genuinely used in commerce or geographical origin of the goods, or where which could conflict with others seems the owner of the mark has been deleted from a worthy goal and hardly controversial. the relevant register. This is why EU trademark law and the The grounds for invalidation of the protective trademark regulations of most of the member rights to a trademark are failure to meet the states do not require proof of a legal interest statutory conditions for obtaining registration when applying for revocation of a trademark or conflict with prior rights. for non-use. Problems with standing Elimination of this requirement from Polish It has often been difficult for applicants to law means that any person will be able to prove that they have a legal interest in seeking apply for revocation of a trademark that has revocation or invalidation of a registered not been genuinely used for an uninterrupted trademark, partly because of the problems period of five years, so long as the person with interpretation of this requirement in the files an application and pays the relevant fee, existing case law. The concept of a “legal without having to prove a legal interest. interest” was not defined in the Industrial This change should significantly expedite Property Law, but it was accepted that it is decisions on revocation of trademarks, elimi- the same as a legal interest providing standing nating situations where issues surrounding to sue under the Civil Procedure Code. Ac- proof of a legal interest made it difficult or

8 impossible to obtain a ruling in such cases, mark for a portion of the goods or services, outweighing the substantive aspects of the maintaining the date of priority, upon pay- case. ment of a fee. This means that if the applica- Invalidation of trademarks tion for invalidation does not apply to all the goods and services, the portion not covered The obligation to prove a legal interest is also by the application can be set aside and the being eliminated in proceedings for invalida- invalidation proceeding will involve only cer- tion of a trademark, but only where the appli- tain goods and services. Then two identical cation is based on “absolute grounds,” i.e. the but independent trademarks will be registered fundamental requirements that must be met for different goods and services. This will be for a trademark to be registered. Marks that advantageous for the holder because it will be do not meet these requirements should not able to freely dispose of the unthreatened be registered, and if they do obtain registra- rights, for example by selling them, even tion they should be invalidated not because of though an invalidation proceeding is pending conflict with the rights of other entities but in with respect to the same mark for other light of the public interest, for example be- goods and services. cause they could be misleading, contrary to public policy, or generic. Transitional regulations Meanwhile, in the case of invalidation of a In order to ensure equal treatment of all ap- trademark registration because of conflict plicants in proceedings seeking revocation or with prior rights (trademarks, rights to a busi- invalidation of trademarks, the transitional ness name or other personal rights or proper- provisions for the amendment provide that it ty rights), a rule is introduced that only the will not be necessary to prove a legal interest holder of such prior right may file an applica- with respect to applications concerning tion for invalidation—in other words, practi- trademarks registered under either the new or cally speaking, the applicant must be an entity the old regulations. with a legal interest in seeking invalidation. Significantly, in the case of an application for invalidation of a trademark, regardless of whether the grounds for the application are absolute or relative, the amendment provides for the possibility of splitting the rights to the

Authors

Marzena Białasik-Kendzior is a lawyer and specialist in the Intellectual Property Practice. She specialises in intellectual property law, and particularly trademark law. She has great experience conducting cases for obtaining and maintaining protection of rights to Polish, international and EU trademarks. For many years she has served clients in disputed trademark proceedings before the Polish Pa- tent Office, the European Union Intellectual Property Office (formerly OHIM), and the administrative courts.

E-mail: [email protected]

Monika Wieczorkowska is a patent attorney in the Intellectual Property Practice. She handles intellectual property law, advising clients on such matters as trademarks, industrial designs, and inventions. She represents clients in administrative proceedings and disputes before the Polish Patent Office, the Polish courts, and the European Union Intellectual Property Office (formerly OHIM). She gained experience in the field of intellectual property working at a renowned firm of patent attorneys.

E-mail: [email protected]

Intellectual Property

For many years we have been providing legal  Filing trademarks for registration under support for clients—mostly companies, but relevant procedures— individuals as well—in management and en- o Polish (Polish Patent Office) forcement of their portfolio of intellectual property rights. o EU (European Union Intellectual Property Office – EUIPO, formerly We advise clients and represent them in court OHIM) in civil and criminal cases concerning in- fringement of IP rights and unfair competition. o International, under the Madrid We cooperate with customs authorities in pro- System (World Intellectual Property ceedings involving seizure of infringing goods. Organisation, Geneva) Thanks to our extensive experience over more and monitoring the course of registration pro- than two decades, we are one of most highly ceedings specialised teams in Poland in this field of law.  Filing industrial designs, utility models and When required for the specific case, we estab- geographical designations for registration, lish interdisciplinary teams made up of lawyers and monitoring the course of registration specialising in different fields of law, and we proceedings also work closely with distinguished scholars in  Registration of inventions and validation of this area. patents We provide legal assistance in obtaining and  Monitoring of deadlines of payment of maintaining protective rights to trademarks, official fees in Poland and abroad, includ- patents, industrial designs, utility models and ing fees for obtaining, maintaining and geographical designations. renewing exclusive rights Our services include:  Representing clients in disputes concerning  Assessment of trademarks, industrial de- invalidation of exclusive rights, before the signs and utility models to determine Polish Patent Office, EUIPO, and the whether they are capable of registration, courts. based on a review of Polish and interna-

tional databases

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