Introduction:

Language: Polish

Capital: Warsaw     

Area: 312,679 km2

Population: 38,454,576 (2016)

Currency: Zloty (PLN)

Religion: Roman Catholics (87%)

Geographical situation: in Central Europe, bordered by Germany, Belarus, Russia, Czech Rep., Slovakia, Lithuania and Ukraine.

 

International treaty membership:

Singapore Treaty on the Law of Trademarks (July 2, 2009)

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (March 4, 1997)

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (March 4, 1997)

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (March 4, 1997)

Madrid Agreement Concerning the International Registration of Marks (March 18, 1991)

Convention Establishing the World Intellectual Property Organization (March 23, 1975)

Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (December 10, 1928)

Paris Convention for the Protection of Industrial Property (November 10, 1919)

 

Legislation:        

Act No. 331 of May 11, 1994, amending the Act on Trademarks

Act of June 30, 2000, on Industrial Property (as amended by Act of January 23, 2004, and Act of June 29, 2007)

 

Government Institutions:

Patent Office of the Republic of Poland

 

Type of trademark:

Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, colours or colour combinations, three-dimensional forms, the three-dimensional form of a good or its packaging, holograms, sound marks and any combination of the mentioned signs.

The following trademark types are registrable: trade marks, service marks, collective marks, certification marks and trade names.”

 

Ground for refusal :

A trademark shall not be registrable if:

- it is contrary to law or to the principles of society;

- it infringes the personal or economic rights of third parties;

- it contains incorrect statements;

- it contains the name or abbreviated name of the Republic of Poland or its symbols, emblem, national colors or national anthem, the insignia of the armed forces, the national hallmark of quality or the safety mark;

- it contains the name or armorial bearings of a Polish voivodship, town or community, the reproduction of a Polish decoration, a distinction, an honorary or military medal or military insignia; in cases where this is justified, such a mark may be registered if the competent State organs or authorities have given their approval;

- it contains the name, abbreviated name or symbols (armorial bearings, flags, emblems) of a member State of the Paris Union for the Protection of Industrial Property or the name, abbreviated name or symbols of an intergovernmental organization to which one or more of the member States of the above-mentioned Union belong, or the Olympic symbol, where the applicant is unable to establish that he is authorized to use such mark in his economic activities.

 

Registration of a trademark for goods of the same kind shall not be permissible where:

- it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;

- it is similar to a trademark that is well known in Poland as a trademark for goods of another enterprise to an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;

- it is similar to a trademark previously registered in Poland of which the protection has expired, if less than three years have lapsed between the date of expiry of the right deriving from the registration of such trademark and the date at which the similar mark is filed by another enterprise;

- it constitutes the protected denomination of a plant variety;

 

Application content:

One and the same application may relate to one trademark only. In the case of colour trademarks, a sign that incorporates one arrangement of colours shall be considered as one trademark.

The application for registration of a trademark shall state the name of the applicant, the trademark and the goods for which the trademark is intended.

 

Application process:

An application for registration of a trademark shall be deemed to be made on the day on which it is filed with the Patent Office or is handed in at a Polish post office bearing the address of the Patent Office.

For each trademark application, the information on which is to be published, the Patent Office shall draw up a search report containing the citations of the earlier identical or similar trademarks, destined for the same or similar goods or services and communicate it to the applicant for information purposes only.

During the procedure, the Patent Office shall ensure that the mark filed satisfies the statutory requirements for registration and that it does not infringe third party rights

Thus the Patent Office will have formal and distinctiveness examination, which means that it will verify in a first time if all the documents required for the application were provided, then if the mark is distinctive and does not meet absolute ground for refusal.

Then the Patent Office will publish the application opening a three months period for opposition.

After this period if no opposition have been filed or rejected, the mark will be granted the protection and will be publish in the register and the monthly Official Gazette “Wiadomosci Urzedu Patentowego”.

 

Refusal:

The time limit for filing an appeal against a decision of the Patent Office shall be two months as from notification of the decision to the party concerned and the time limit for objecting to a determination made by the Patent Office shall be one month as from notification of the order to the party concerned.

During the examination procedure, the Patent Office may direct the applicant to remedy any omissions or defects in the application within a period of three months, failing which the procedure shall be discontinued. The time limit may, at the request of the applicant, be extended for a further three months and, in cases where this is justified, for two additional three-month periods, after payment of the appropriate fees.

Where the mark filed does not satisfy the statutory requirements for registration or infringes third party rights, the Patent Office shall notify the applicant and those persons whose rights are infringed and shall invite them to submit their comments within three months. The applicant will have three months to provide observations.

 

Rights of exploitation and related delay:

The term of the right of protection shall be 10 years counted from the date of filing of a trademark application with the Patent Office.

The term of protection may, at the request of the right holder, be extended for subsequent ten-year periods in respect of all or of a part of the goods. The request for renewal shall be done within the last year of protection, plus a 6 months grace period after the expiry.

The owner of the right deriving from registration of a trademark may require the cessation of acts that infringe or are likely to infringe his right deriving from registration of the trademark.

The owner of the right deriving from registration may require, under the general principles of law, payment of damages, surrender of the unlawful profits made from the infringement of the right deriving from registration and also publication of an appropriate statement.

 

Transfer and conditions:

The right of protection for a trademark may be assigned or be subject to succession.

The right of protection for a trademark may also be assigned in respect of certain goods for which the right of protection has been granted, if the goods for which the trademark remains registered on behalf of the vendor are not of the same kind. Once assigned, the right in question shall be dealt with as independent of the right enjoyed by the vendor.

 

Certification:

A certificate of protection shall be issued for each trademark that is registered.

 

Withdrawal and cancellation:

The application can be withdrawn any time until the publication.

The right deriving from registration of a trademark shall expire if the person entitled has not used the mark within a period of five consecutive years in the Republic of Poland. The right deriving from registration of a trademark shall not expire if the owner of the right can prove that he was unable to use the trademark for a justified reason.

Trademark protection can be revoked on opposition by third person if they prove they have an earlier right for a similar or identical trademark. However, A request for invalidation of the right of protection shall not be admissible on the ground that it conflicts with an earlier trademark or the personal or economic rights of the requesting party have been infringed, where the requesting party has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

The trademark protection can also end if the owner decides to surrender his right.

Bad faith during registration can also be a ground for the invalidation of a trademark.

 

Customs protection:

The measures to protect trademarks in customs proceedings in Poland are provided in EU Regulation 1383/2003, which came into effect in the territory of the European Union (including Poland) on July 1 2004. This regulation determines the actions and measures to be taken by customs authorities against goods deemed to infringe IP rights. The territory of Poland as a member state of the European Union is subject to an additional regulation (EU Regulation 1891/2004), which came into effect with retroactive effect as of July 1 2004.

The trademark right owner can file an application for customs protection with the Main Customs Chamber in Warsaw to prohibit the import or export of any infringing goods. Goods, convinced of infringement by the court after claims by the right holder, will be destroyed.

 

Sources:

 

EU Regulation 1383/2003,

Act No. 331 of May 11, 1994, amending the Act on Trademarks

Act of June 30, 2000, on Industrial Property (as amended by Act of January 23, 2004, and Act of June 29, 2007)

 

 

Vincent Lagier

創作者介紹

眾律國際法律/專利商標事務所

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