New trademark regulations in Poland
Amendment to the Act on Industrial Property Law
02 April 2019
On 20 February 2019, the Polish Parliament passed the amendment to the Act on Industrial Property Law (Industrial Property Law), which is intended to implement the EU 2015/2436 directive to approximate the laws of the Member States relating to trademarks (EU Directive). The new law is expected to enter into force early around mid-March 2019.
1. A new definition of a trademark
The act introduces a new trademark definition which corresponds to the definition included in the EU Directive. The amendment removed the graphic requirement for the representation of a trademark, and therefore provided the opportunity to register new forms of trademarks, including unconventional trademarks such as fragrances, sounds or flavours.
According to the new wording of Article 120 of the Industrial Property Law, a trademark may be any sign enabling the goods of one company to be distinguished from another company's goods and be displayed in the register of trademarks in a manner that allows the determination of the unambiguous and accurate subject of protection.
Although the formal requirement of a graphic representation has been removed, the burden for unconventional trademarks has been transferred to the need to present such a trademark in the register in a way that allows to establish an unambiguous and accurate subject of protection. This requirement reflects the provisions of the EU Directive, specifically point 13 according to which it is essential to require that the sign is capable of being represented in a manner which is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The fulfilment of the above prerequisites may be difficult in the case of unconventional signs.
The amendment also extended the catalogue of signs which are incapable of constituting a trademark. So far, the signs which consisted exclusively of the shape (resulting from the nature of the goods themselves) were not subject to registration. The amendment extended this exclusion, providing that signs consisting exclusively of the shape or other characteristics, resulting from the nature of the goods themselves, or necessary to obtain a technical effect or to increase the value of the goods shall not be the subject of registration.
2. Facilitating the extension of the protection right to a trademark
The amendment reduces unnecessary formalism and accelerates the procedure of extending the protection right to a trademark. So far, the entrepreneurs were obligated to submit applications to the Polish Patent Office (Patent Office) and pay for these applications. In accordance with the amendment, this rather onerous requirement will disappear. It will be enough to pay the fee for the next protection period before the end of the previous one.
It is also worth mentioning that the new regulation does not indicate that the fee for a further period of protection must be made by the rightsholder. In the previous legal status, the application for extension of the protection right could only be submitted by the rightsholder. But this cannot be clearly assessed as an opportunity for anyone to pay a fee with effect for the rightsholder, as according to the new wording of Article 153 paragraph 4 of the Industrial Property Law, the Patent Office may request the payer to submit explanations as to the entitlement to pay a fee.
Further, pursuant to the amendment, the Patent Office will be obliged to inform the rightsholder about the elapsed time of protection in relation to all industrial property rights. However, the rightsholders should continue to control the dates of expiry of protection rights on their trademarks themselves, as the lack of information from the Patent Office about the impending payment deadline will not affect the expiry date of the protection right. Therefore, the rightsholders who fail to pay the fee for the next protection period on time will not be able to rely on the fact that they did not receive a notification from the Patent Office of the impending payment date.
It is also worth to noting that, under present regulations, the trademark holder had an additional cure period of six months in which it could still file for renewal subject to payment of some extra renewal fees. The new regulation will no longer provide for such cure period.
3. The extension of the license holder's rights
Until now, the catalogue of entities who could have filed claims for infringement of trademark protection rights was very limited. In addition to the rightsholder, only the exclusive licensees could have filed such claims, and only if they were disclosed in the trademark register. The non-exclusive licensees had practically no claim against the infringer and could have only tried to oblige the licensor to take appropriate action against the infringer. The licensees could have also tried to obtain an appropriate procedural mandate from the licensor and then act on their behalf; but in such case, the compensation or the return of unjustified profits were to be awarded to the licensor.
According to the new wording of the Article 163 paragraph 11 of the Industrial Property Law, unless the licensing agreement provides otherwise, the licensee may bring an action for infringement of the protection right to a trademark only with the consent of the rightsholder. While the consent of the rightsholder to the trademark is still required for the licensee not to be excluded from the trademark infringer, it appears that if such consent is obtained, the non-exclusive licensee may file claims on their own behalf.
The changes also affected the rights of the exclusive licensee, who according to the new regulation, may bring an action against the infringer of trademark protection rights, if the rightsholder (the licensor) fails to act in a relevant time with an action for infringement.
4. The extension of protection in case of infringement of a trademark
The amendment introduces new rights for trademark owners in the fight against counterfeiting. The amendment regulates in a special way the issue of packaging, labels, tags, elements of the product, and its protection or verification of the authenticity of the trademark, all of which could be used in relation to the goods in a manner that infringes the trademark protection law. The entrepreneurs will be able to demand the omission of placing there a sign identical to his trademark or similar to it. In addition, they may demand the cessation of offering, placing on the market, importing or exporting or storing (for the purpose of offering or placing on the market) labelled packaging, labels or security in such a way.
The amendment states that whoever, for the purpose of placing on the market, including within the European Union (EU), a registered trademark or EU trademark, for which they have no right to use or trade in goods marked with such marks, is subject to a fine, restriction of liberty or imprisonment for up to two years.
Prior to the amendment, the person entitled to the trademark protection right could file claims for infringement of this right against two entities: (i) the direct infringer or (ii) a person who only places goods already marked on the market with a sign if they do not come from the rightsholder or the person who had his permission to use the mark. Pursuant to the amendment to the Industrial Property Law, the circle of responsible entities was extended to a third-party entity whose services were used in violation of the trademark rights.