Change in trademark registration system
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 following an examination system for trademark filings. Under this system, before granting protection to a trademark, the Polish Patent Office conducts a full formal and substantive examination. The Patent Office checks not only whether the designation meets the requirements for a trademark (known as “absolute grounds”), but also whether the trademark conflicts with prior rights, for example another trademark identical or similar to the one filed (“relative grounds”). If the Patent Office does not find any grounds for refusal, it issues a decision granting protection to the trademark. But if it finds a conflict, the offices refuses protection in consideration of the public interest, i.e. the interests of consumers and the rights of the proprietor of the earlier trademark.
An advantage of the examination system is the relatively high degree of legal certainty. While obtaining protection for the mark does not guarantee the proprietor that it does not infringe any earlier marks, the examination of the marks conducted by the Patent Office is scrupulous and should prevent registration of a mark identical or similar to an earlier mark for the same or similar goods or services where there is a risk of confusion to consumers as to the origin of the goods or services.
But the system has its drawbacks. Its primary weakness is the fairly long time it takes to wait for the grant of protection, as well as the complicated procedure. And sometimes enterprises applying for protection in Poland are refused even though in practice there is no real risk of confusion to consumers. Prior marks, including EU trademarks (formerly known as Community trademarks) which are often not even used in Poland, can formally block registration of later national marks. In most cases the holders of the earlier rights are not aware that their marks are preventing other entities from gaining rights, because they are not involved in the procedure before the Polish Patent Office and do not incur any of the related costs.
End of formal blocking of trademarks
Starting 15 April 2016, a register system for trademark filings will function in Poland, as it does in the EU Intellectual Property Office (EUIPO, formerly OHIM). Under the new system, the Patent Office will conduct a formal legal examination and verify only that the trademark meets the absolute grounds for protection.
The Patent Office will also notify the applicant of the existence of prior identical or similar trademarks for the same or similar goods or services. The purpose of this is to encourage legal certainty and to communicate clearly to the applicant the potential barriers to registration in the form of third-party rights.
So de facto the Patent Office will continue to conduct a merits examination, but if it finds conflicting trademarks it will not refuse on its own initiative to grant protective rights to the mark due to a conflict with prior rights. The change in system will make it easier for applicants to register trademarks due to elimination of the situation of formal blocking of a trademark by the existence of prior rights. It should also expedite the application process, as notice of the trademark filing will be published within two months at the latest after the filing. (Currently the Patent Office is required to publish an announcement promptly after three months following the application date, but in practice the information is published four months after the application is filed.)
Filing of comments and opposition
Under the new system, after information about the trademark filing is published, comments can be presented concerning the existence of circumstances preventing the grant of protection. Currently comments can be filed referring to both absolute grounds and relative grounds. Under the amended law, it will be possible to file comments only based on absolute grounds, and opposition only on relative grounds.
The time for filing of opposition will also change. Under the old law, opposition could be filed after grant of protection for the trademark, within six months after publication in the Patent Office’s monthly journal (Wiadomości Urzędu Patentowego). From 15 April 2016, opposition may be filed before protection is granted, only within three months after publication of notice of the application in the Patent Office’s biweekly bulletin (Biuletyn Urzędu Patentowego).
The act also provides for the possibility of asserting in the response to the opposition the objection of failure to make genuine use of the prior mark for an uninterrupted period of five years prior to the date of filing of the application for the trademark which is the subject of the opposition, for the goods covered by the opposition. If this objection is upheld, the office will deny the opposition. This is a beneficial change. Currently there is also a possibility of asserting the objection of non-use of the earlier trademark, but it requires commencement of a separate proceeding for invalidation of the prior mark, prolonging the proceeding and generating additional costs.
The amendment also eliminates the rule that the opposition proceeding is discontinued and a decision is issued invalidating the decision granting protection to the trademark if the proprietor does not file a timely response to the opposition. Under the new rules, the Patent Office, like EUIPO, will consider the opposition and issue a decision upholding it or denying it even if the applicant does not present its position on the opposition.
This is a beneficial change. It has sometimes happened in the past that enterprises that have incurred high costs to obtain exclusive rights to a trademark very quickly lost those rights because of failure to file a timely response to opposition. The reasons have varied, but typically it was unfamiliarity with the law, mistakes in the circulation of correspondence, or the too-brief period for filing a response. Proprietors often did not realise that it would have been sufficient to file a simple statement that the opposition is groundless. Sometimes this benefits proprietors of earlier marks whose opposition would not have been upheld otherwise, but succeeded in eliminating later trademarks from the register for purely procedural reasons and without incurring significant costs.
It should be stressed that this change applies only to trademarks. The rule discussed above has not been eliminated in the case of other industrial property rights, i.e. industrial designs, utility models, and patents.
Another provision introduced by the amendment should also reduce costs. Currently, when opposition is held to be groundless, the case is resolved in an adversary proceeding and the decision is issued following a hearing. The new system does not provide for a hearing. The decision to uphold or deny opposition will be made by an expert from the Patent Office. However, if a party does not agree with the decision by the office, it may seek reconsideration. Then, if the office considers it to be warranted, a hearing may be scheduled at the office’s own initiative or at the request of a party.
Significantly, the new rules of procedure in opposition cases require the party filing the opposition to submit evidence within the appropriate time or waive the right to rely on the evidence. Under the old rules, a party filing opposition could attempt to evade this evidentiary requirement by commencing a new proceeding, to invalidate the trademark, based on new evidence not raised before. The second amendment to the Industrial Property Law eliminates the possibility of filing an application for invalidation when 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 treatment of the parties. Under the old rules, an applicant that obtained a negative decision—unlike the holder of prior rights—had no opportunity to submit new evidence and commence another proceeding on the same matter.
Initiative required of trademark holders
It should also be mentioned that unlike EUIPO, the Polish Patent Office will not send notice of trademark filings to holders of prior rights. This means that holders that want to prevent the registration of conflicting trademarks must conduct their own monitoring of trademark applications and file opposition to marks that may infringe their rights. Thus the initiative of a trademark holder should not end upon obtaining exclusive rights; after entry into force of the new regulations, the holder should actively oppose registration of conflicting marks. This imposes additional obligations on holders of prior rights and requires them to incur the costs of potential opposition proceedings.
Despite these inconveniences, the new model for trademark registration represents a revolutionary change which should increase the number of trademark filings and make it easier for enterprises to obtain protection within the national trademark system. Effective functioning of the new system should particularly encourage Polish applicants to select national protection, without the need to apply to EUIPO. Despite the undoubted advantages of protection at the EU level, the costs of obtaining and maintaining it are usually very high for trademark holders.
Monika Wieczorkowska, Intellectual Property Practice, Wardyński & Partners
