Changes to trademark law from 16 March 2019 | In Principle

An amendment to the Industrial Property Law took effect on 16 March 2019, transposing into Polish law the Trademark Directive (2015/2436). The amendment is not revolutionary but will certainly have huge practical implications.

The changes have been made primarily to better align the EU and national trademark systems. The main changes include:

• Removal of the graphical presentation requirement from the definition of a trademark
• Modification of the list of marks that are not registrable, i.e. the “absolute” grounds preventing registration of a trademark, in particular:
  • There is now an option of registering trademarks containing religious, patriotic, or cultural elements. Now the only elements that cannot be registered are elements of high symbolic value, in cases where using a trademark of that kind could offend religious or patriotic feelings or national tradition.
  • Now, during the registration process, it is not only the shape of the mark that will be examined, as has been the case. Other features will also be examined to determine the extent to which they follow from the nature of the product itself, are necessary to achieve a technical effect, or substantially increase the value of the product.
• Extension of the catalogue of relative grounds preventing registration of a trademark by adding a new relative ground, namely that a proprietor with a registered geographical indication or designation of origin can prohibit subsequent use of the trademark
• Changes relating to collective marks
• Replacement of the term “collective guarantee mark” with the term “guarantee mark”
• Mechanisms making it easier to renew a trademark—where a written application and issuance of a decision were required to renew a trademark, now the only requirement is payment of the fee for the subsequent protection period
• An obligation for the authority to notify proprietors of exclusive rights of an impending deadline for payment of the fee for the subsequent period
• More precise provisions for registration of a mark by an agent or representative of the proprietor, acting without the proprietor’s consent
• Modification of provisions on invalidation proceedings (additional requirements that have to be met by the party seeking invalidation of a trademark)
• Abolition of restrictions on transfer of protection with respect to certain types of products and abolition of the previous restrictions on partial transfer of protection
• Broader rights of a licensee, specifically with respect to a licensee’s claims for trademark infringement
• Expansion of the range of entities liable for trademark infringement to include intermediaries whose services are used by a third party when infringing a trademark
• Giving trademark holders additional claims for trademark protection when for instance the following are infringed:
  • The right to prohibit preparatory activities connected for example with use of packaging, labels, elements of the product, protective measures on a product, or other measures
  • Rights in cases where registered trademarks are featured (reproduced) in dictionaries, encyclopaedias, or other such reference works
  • The right to prevent transit of products bearing a counterfeit trademark.

The amendment of 20 February 2019 can be found here (in Polish).

This issue discusses selected aspects of the recent changes. We hope you find it useful.

Anna Pompe, adwokat, Intellectual Property practice, Wardyński & Partners