In Polish legal system an act which regulate industrial property matters is called the Industrial Property Act. 15th April 2016, as a consequence of the amendment of the polish Industrial Property Act, the system of trademark protection changed. The previous system, called research system, was replaced by the registration system. The launched adjustment of the Act has imposed new crucial duties on entrepreneurs. Monitoring of trademark data bases has become the most urgent.
The new procedure
The new procedure is now simplified and one of its scope is to upgrade the process of gaining an exclusive right over trademark. The new system is composed of several main phases.
Disclosure of information in Register Plus database
As soon as the application is submitted to the Polish Patent Office, the Office has maximum two months to disclose the information about the trademark’s application in a database called Register Plus. In this data base one is able to find all the applications of trademark with core details about them – such as the priority date and the list of goods or services for which the trademark was filed. As a matter of fact, there may be trademarks listed in Register Plus which will not be granted the protection. It is so due to the fact that the absolute grounds of protection which preclude obtaining the protection over trademark are examined in the next phase of the procedure.
he examination of absolute grounds of protection
The absolute grounds of protection are listed in article 1291 of the Industrial Property Act. The Polish Patent Office examines if they are present within the files trademark. These are inter alia:
Article 1291. 1. A right of protection shall not be granted for signs which:
- cannot constitute a trademark;
- are not capable of distinguishing, in trade, the goods for which they have been applied;
- consist exclusively of elements which may serve, in trade, to designate, in particular, the type of goods, its origin, quality, quantity, value, intended use, manufacturing process, composition, function, or usefulness;
- consist exclusively of elements which have entered everyday speech or are customarily used in fair and well-established trade practices;
6) have been applied for in bad faith;
7) are contrary to public policy or morals;
12) as for their nature, may mislead the public, in particular as to the nature, quality, or the geographic origin of the goods; (…)
The announcement of trademark application in Biuletyn Urzędu Patentowego (The Bulletin of the Polish Patent Office, abbr. BUP) and the delivery of the notification.
Supposing that the trademark is positively recognised by the Office, it is published in BUP.
Parallelly, the Polish Patent Office issues the notification with the previous trademarks which may be similar to the trademark filed and are protected for the same goods or services (art. 1461 section 6 of the Industrial Property Act). Such notification is sent exclusively to the applicant and is not binding for him. What it means is that the Polish Patent Office examines the similar trademarks with the scope of finding potential collision, nevertheless the only consequence of such examination is the notification mentioned before, sent only to the applicant himself.
- The opposition period
The owner of previous trademark who noticed the possibility of infringement of his exclusive right may file an objection within three months, starting with the moment of publication of the application of allegedly infringing trademark in BUP. According to article 1321 of the Industrial Property Act such an opposition may be filed on four basis:
- Infringement of personal or property rights of other persons.
- Identity or similarity to trademark with earlier priority which designates identical or similar goods or services
- Identity or similarity to renowned trademark with earlier priority
- Identity or similarity to commonly noted trademark with earlier priority which designates identical or similar goods or services.
- Granting legal protection
Unless the Polish Patent Office recognises any obstacles within absolute grounds of registration and none objection was filed during the opposition period, the exclusive right will is granted.
The procedure of obtaining the right of protection has been notably modified. Before 15th April, the Polish Patent Office was obliged to examine both relative and absolute grounds of protection. An examination of the obstacles of absolute ground according to the previous system was composed of an examination of similar or identical trademarks with earlier priority. If any obstacle was recognized, the Office did not grant the right of protection.
Conversely, pursuant to the new rules, any identical or similar trademark with the earlier priority should not create an obstacle for granting a protection, if not reported by third parties in the opposition period. The Office examines trademark data bases but only with the aim of submitting a notification for the applicant exclusively. The notification is a kind of warning for an applicant that there might be a conflict between trademarks in the future. Its only recipient is applicant himself and the notification is not binding. The result is that the owner of the trademark of the earlier priority will not be informed that there might be conflicting trademarks successfully registered.
Monitoring of trademark data bases
Pursuant to the amendment of the Industrial Property Law Act, the responsibility for keeping the trademarks protected does not belong to the Polish Patent Office any more. The recently introduced system imposes this duty on trademarks’ owners. Monitoring of trademark data bases with the scope of finding potential conflicts is their new obligation. This control has become the mandatory element of remaining protection and it requires to be performed after obtaining the right of protection over a trademark.
The trademark owners should constantly, beginning with 15th April 2016, scrutinise the Bulletin of the Polish Patent Office. The responsibility for successful protection is now on them and not on the Office. The Bulletin is issued on the Polish Patent Office’s website every week, on Monday. The new procedure has created a tool of quick reaction if a conflicting mark appears. The possibility to file an objection within three months counting from the moment of the publication in the Bulletin was introduced. By this mean the trademark owners can avoid long-term and costly litigations in the future.
The consequences of the amendment
The amendment of the Industrial Property Law Act has caused the consequences which are extremely influential for successful protection of intellectual property. Completely new task of controlling the newly registered trademark was imposed on entrepreneurs. This control has to be performed regularly due to the fact that every day several new applications are filed to the Polish Patent Office. The awareness of the new duty may save the trademarks owners from numerous risks in the future.