Please be aware of the upcoming amendment to the Polish Industrial Property Law concerning the changes in the procedure of obtaining protection rights for a trademark. As of 15 April 2016, there is a change in the procedure for granting trademark protection rights in Poland. The most important change is the change of the examination system – where the Polish Patent Office (further: PPO) examines whether the applied trademark is not identical or similar to any prior trademarks and refuses protection where a risk arises that the public may, in particular, be misled into thinking that a trademark may be associated with an earlier trademark – into the opposition system.
In the new procedure:
- Formal examination – once filed the PPO will examine trademark applications only in terms of formal issues. At the same time the application will be published in the PPO official database.
- Essential examination – the PPO will examine absolute grounds for refusal, without checking potential collisions with prior trademarks. If the PPO decides, for example, that that the applied sign may not be a trademark, is devoid of a sufficiently distinctive character or was applied in bad faith, it will dismiss the application.
- If no absolute ground of refusal is found, the trademark application will be published in the Polish Patent Office Bulletin (approx. 2 months from filing the application).
- Third parties may file remarks based on the absolute ground of refusal from the publication date up to registration date.
- Third parties may file an opposition within 3 months of the Polish Patent Office Bulletin’s publication.
- The earlier trademarks which are the base of the opposition shall be cited;
- The opposition fee shall be paid;
- The opposition may be based just on the relative grounds of refusal;
- The PPO will set a 2 months cooling off period which may be extended to 6 months;
- All evidence must be presented with the first writ so as not to be dismissed;
- If no agreement is concluded within the cooling off period, the case will be decided upon by the PPO. The PPO is bound with the legal and factual basis of the opposition;
- The party that does not accept the PPO’s decision, may file a motion for the re-examination of the case.
- If no opposition is filed or the opposition was dismissed, the decision on granting the protection shall be issued. If the PPO accepts the opposition as justified, the trademark application will be dismissed.
The aim of this change is to shorten the duration of the trademark registration procedure – from approx. 18 -24 months to approx. 6 months. The unused or abandoned prior trademarks will not constitute registration obstacles as long as they are the basis of the opposition. As the PPO will not send notifications of new trademark application to owners of earlier rights, they will be forced to carry out their own monitoring of trademark applications. Considering the opposition proceedings, it is important to collect all evidence at the beginning of the case as they may be presented only with the first writ.
We will be happy to answer any questions you may have regarding the amendments of the Polish Industrial Property Law, Polish or European trademarks or any legal matters regarding Poland.
