Key changes to the Polish industrial property law
A number of key changes to the Industrial Property Law governing trade mark registrations (among other things), are currently being implemented in Poland. The next package of amendments will significantly change the current trade mark registration procedure before the Polish Patent Office (PPO).
The trade mark registration procedure in Poland is currently based on a detailed examination of the trade mark applied for, covering both absolute and relative grounds for refusal. From 15 April 2016, the procedure will focus only on formal aspects, involving examination of absolute grounds, but no longer encompassing examination of relative grounds, e.g. potential conflicts between the trade mark applied for and an earlier registered trade mark due to its similarity or identity.
The new procedure aims to align Polish trade mark regulations to EU trade mark procedure before EUIPO. The latter does away with relative grounds objections at the examination stage, leaving it to interested parties to take up opposition proceedings instead. On one hand this simplifies the examination process for applicants by obviating the need for them to respond to citation objections; however on the other hand, the procedure imposes more effort and financial cost upon registered EU trade marks holders due to the need to monitor and oppose new applications to counter any potentially infringing activity.
Letters of consent
For the first time in the Polish legal system, the next package of amendments will also implement grounds for letters of consent. These are useful for businesses when dealing with trade marks which are similar or identical to existing registrations. Currently such letters are accepted only where the PPO objects to a mark on grounds there is a conflict with an earlier registration. However, following the introduction of the new approach to examination discussed above, letters of consent will be accepted by the PPO as a method for the parties to settle issue arising under opposition proceedings.
In the past, letters of consent were accepted by the PPO without any legal basis. However, administrative courts considered this to be ineffective and not capable of overriding the PPO’s refusal of a trade mark registration when a conflict with an earlier registered trade mark was found. This had the effect that independent businesses, and even companies in the same group, could not consent to their similar marks co-existing on the register.
With the implementation of the new Polish trade mark regulation, the binding effect of such letters of consent has finally been confirmed and the difficulties with market co-existence of similar trade marks, particularly within a company group, should be easier to resolve.
Given that letters of consent are a new institution under Polish law, a number of practical issues connected with their application may still arise, including whether a trade mark holders’ consent may be transferred to the beneficiary’s successor, or whether the withdrawal of consent after registration will cause the registration to lapse. These issues will be addressed by the PPO’s practice and administrative court decisions in due course.
Originally published in BrandWrites 6th Edition. Co-authored by Justyna Sienkowska.