Poland - changes to trade mark registration proceedings
Adopts procedure similar to the EU trade mark registration procedure
14 December 2018
In a bid to simplify and speed up trade mark applications, the Polish trade mark registration system has undergone some substantial changes.
The Polish Patent Office will no longer examine whether a trade mark is identical or similar to existing trade marks or whether it infringes third party rights. It is now the trade mark holder who must monitor pending applications and file an opposition in order to prevent a registration.
Under the previous procedure, third parties could provide the Polish Patent Office with circumstances that, in their view, should prevent a registration. The Polish Patent Office was not bound by these observations and they were a rarely used remedy.
From April 2016, this the Polish Patent Office stopped conducting ex officio examinations of relative grounds in trade mark applications. Relative grounds for a refusal will only be examined if an opposition is lodged within three months of the announcement of the filing of the application. As such, the opposition may now be filed prior to the registration of the trade mark. If the opposition is considered justified, the Polish Patent Office will refuse to grant a protection right for the trade mark.
What are the implications?
The new procedure is similar to the EU trade mark registration procedure before the European Union Intellectual Property Office. However, the impact of the changes remains to be seen. While the amendments simplify the examination process for applicants and shortens the registration process, it also requires more effort from holders of registered trade marks, who now need to monitor new applications by other parties and if necessary oppose them. The absence of an opposition could result in a contentious trade mark being granted protection.
For a more detailed examination of this development and other recent IP stories please see the Clifford Chance's Global Intellectual Property Newsletter. This is our quarterly publication which provides an overview of the most recent IP developments in major jurisdictions around the world.