If a foreign business entity is interested in protecting a trademark in Poland, it must apply for registration of the mark in its own name. The Polish branch of the foreign business will not obtain registration of the mark.
The database of trademarks at the Polish Patent Office includes numerous trademarks registered or filed directly by foreign businesses, but there are also a large number of trademarks filed on their behalf by their Polish branches.
A foreign entity may do business in Poland indirectly, by establishing a new entity in which it holds capital, or directly, pursuant to Art. 85 of the Business Freedom Act, by opening a branch in Poland. Under Art. 5 of the same act, a branch is defined as “a distinct and organisationally independent part of the economic activity conducted by a business entity away from its registered office or principal place of business.” According to the case law and the legal literature, notwithstanding the distinctness of a branch and a degree of independence, a branch does not constitute a separate, autonomous legal entity. As the Supreme Court of Poland held in its order of 9 May 2007 (Case No. II CSK 25/07), “Although it is a geographically and organisationally distinct unit, generally furnished with assets and with its own management, a branch may conduct only activities that lie within the subject of activity of the parental unit. A branch is under the superior direction of the main unit, and, first and foremost, under the civil law it does not have a legal existence separate from the business entity.” The Supreme Administrative Court similarly held in its judgment of 18 March 2011 (Case No. II FSK 1773/09), “A branch may not be found to be legally distinct from the company. Its separateness from the company consists only in the functional and geographical division of an organisational and commercial portion of the company.”
It is clear that acquisition of protective rights to a trademark requires legal capacity, i.e. the capacity to be an entity vested with rights and obligations. Because no provision of law vests a branch of a foreign business entity with legal capacity, this means that the branch may not assume any rights or obligations under the civil law for itself. Consequently, the Patent Office will refuse to grant protective rights to a trademark which was defectively filed for the Polish branch of a foreign business entity.
It is important to be aware that in proceedings before the Polish Patent Office in matters connected with filing or maintenance of trademarks, foreign entities may act only through a patent attorney. The same does not apply to domestic entities. Perhaps the reason some foreign businesses have their Polish branch file trademark applications, which on the surface appears simpler, is to avoid using an intermediary before the Patent Office.
Under the current procedure, the Applications Department of the Patent Office will accept an application filed by a branch, but the office itself will not consider the application for a period of months or even a year or more. Then it will find that the application is defective. In the meantime, the branch may be operating for many months under the false belief that it has filed an effective trademark application.
In such a case, the legal act cannot be validated retroactively. Any assignment of rights to the filing of the trademark will also be invalid. Nor is it possible to rely on a claim that the branch was acting as the agent of the foreign entity, because of the requirement for the foreign entity to act through a patent attorney.
Due to the defective filing, instead of obtaining the anticipated trademark protection, the foreign entity may lose its filing priority with respect to the mark to another entity which has properly filed for the mark in the interim.
Marzena Białasik-Kendzior, Intellectual Property Practice, Wardyński & Partners