More changes in the Industrial Property Law
The amendment of 24 July 2015 to the Industrial Property Law doesn’t enter into force until 1 December 2015, but another amendment has already been published—dated 15 September 2015 and entering into force on 15 April 2016. Letters of consent are the most important change introduced by the first amendment, while the second amendment will revolutionise the system for obtaining protective rights to trademarks. The changes will affect the registration procedure and the grounds for lapse of protective rights.
The purpose of the new amendment is primarily to raise the competitiveness of the Polish Patent Office against the EU’s Office for Harmonisation in the Internal Market (OHIM) by expediting and simplifying procedures and lowering costs. This should all translate into more trademark filings at the national level.
The amendment does not introduce any fundamental changes in the grounds for refusing to grant protective rights to a trademark. The division is maintained between absolute grounds, which are examined by the office on its own initiative (Industrial Property Law Art. 1291), and relative grounds, which can serve as the basis for objection (Art. 1321). These grounds are clarified somewhat, however, by assigning them to separate articles of the law.
Change in system
The biggest change introduced by the second amendment is a shift from the current “examination” system to an “objection” system.
Poland is one of the few European countries still using an examination system. Under this system, the Patent Office conducts a full formal and substantive review, reflecting both absolute and relative grounds for denial of protection to a trademark. When the full examination is completed, a decision is issued registering or refusing to register the trademark. An advantage of this system is the relatively high degree of legal certainty. The main drawback is the long wait for issuance of decisions.
Under the new objection system, the Patent Office will conduct only a formal legal examination and check only the absolute grounds for denial of protection. It will therefore not refuse on its own initiative to grant protective rights to a trademark filing because it conflicts with earlier rights, including rights under trademarks not used in Poland. The problem with the latter is mainly that they block applicants interested in using trademarks from obtaining protection. Under the current system, they have been unable to obtain protection because of a formal conflict, even when in practice there was often no risk of consumer confusion.
The change in the system should make it quicker to obtain protective rights. Within no longer than two months after the application is filed, information about the filing will be disclosed. (Currently the Patent Office is required to make an announcement promptly when three months has passed since the date of the application.)
After information about the trademark filing is disclosed, third parties will be permitted to present comments on the existence of circumstances preventing issuance of protective rights. Currently comments may be submitted based on absolute and relative grounds for refusal. The amended act will permit comments to be filed only based on absolute grounds, while objections can be filed on the basis of relative grounds.
The Patent Office will also send the applicant information about earlier identical or similar marks for the same or similar goods and services. The purpose of this step is to promote legal certainty and communicate to applicants clearly that there are potential barriers to registration in the form of rights of third parties.
Significantly, however, and unlike OHIM, the Patent Office will not send such notices to the owners of earlier rights. This means that they will have to conduct their own monitoring of trademark filings and if necessary submit objections to newly filed conflicting marks. This imposes an additional obligation on holders of earlier rights and requires them to incur costs if they decide to file an objection.
Simplification of decisions
Another major change in trademark procedure consists of eliminating the sanction of dismissing the objection proceeding and issuing a decision setting aside the decision on registration of the mark if the applicant fails to respond to the Patent Office’s notification of an objection. Under the amended rules, the Patent Office, like OHIM, will consider the objection and issue a decisions denying it or upholding it even if the applicant does not present its own position on the objection. It should be pointed out however, that this sanction has not been eliminated in the case of other rights, i.e. industrial designs, utility models and patents.
Limitation on applications to invalidate a trademark
The regulations governing objection proceedings require the filer of an objection to submit evidence by the applicable deadline or be precluded from relying on the evidence. Under the current system, filers of objections have tried to evade this preclusion by commencing another proceeding, to invalidate the trademark, relying on new evidence not presented before. The second amendment will eliminate the possibility of filing an application for invalidation where objection was previously filed on the same legal grounds and the same prior rights and the objection was denied with legal finality. The purpose of this new rule is to equalise the positions of the parties, as a filer whose application to register a trademark is denied does not have another chance to submit evidence or commence another proceeding on the same matter.
Standing
The second amendment also introduces major changes in the rules for standing by eliminating the requirement to prove a “legal interest” when applying for a finding that the protective right to a trademark has lapsed. This has to do with cases where a registered trademark is not actually being used. In such situations, it has often been difficult for the applicant to prove it has a legal interest in striking the existing registration. With such a large number of registered and protected trademarks in Poland and the European Union, some of them are not really used in commerce but conflict with the rights of others. Thus reducing the number of such marks by eliminating those that are not in use is desirable and should not be saddled with difficulties.
The obligation to demonstrate a legal interest will also be eliminated in proceedings to invalidate a trademark based on absolute grounds. A provision has also been introduced under which a trademark can be invalidated on the basis of prior rights only upon application of the proprietor of the prior mark, i.e. in practice the person with a legal interest in invalidating the later mark.
Meanwhile, in order to ensure equal treatment of all applicants in proceedings for invalidation or seeking a finding that the rights to the trademark have lapsed, the interim regulations include the rule that demonstrating a legal interest in such cases is not required regardless of whether the trademark in question was registered under the new regulations or the old regulations.
Summary
All of these changes should improve the functioning of the system for obtaining trademark rights and eliminate situations where formal issues make it difficult or impossible to obtain a ruling on the matter and take priority over substantive issues.
Monika Wieczorkowska, Intellectual Property Practice, Wardyński & Partners
