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 2 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- 3 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. 4 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