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Radical changes in trademark law

The fairly long waiting time for registration of trademarks at the Polish Patent Office often means that instead of seeking protection in Poland, businesses decide to register with the European Union Intellectual Property Office (EUIPO, formerly OHIM). Although much more expensive, proceedings there are generally fast and simple. Major changes have now been made to Poland’s Industrial Property Law with the aim of making the Polish Patent Office more competitive with EUIPO.

The Industrial Property Law of 30 June 2000 was recently amended by two separate acts: the first one dated 24 July 2015, which entered into force on 1 December 2015, and the second dated 15 September 2015, entering into force on 15 April 2016.

One of the key changes in trademark law made by the first amending act, already in force, is the introduction of letters of consent, i.e. a declaration which can be used to gain registration of a trademark similar to an earlier mark if the holder of the earlier mark consents. Previously, apart from a conflict with a mark that had already expired, there was no legal basis governing the issue of submission of letters of consent in proceedings before the Patent Office.

The basic function of a trademark is to distinguish the goods of one enterprise from the goods of other enterprises. Thus the Patent Office refused to register a later mark if it found that it was identical or similar to an earlier mark for the same or similar goods. Rulings by the administrative courts confirmed this restrictive approach.

Although this practice was sanctioned by the regulations, it did not reflect commercial reality. Enterprises operating within a single capital and organisational group, but as separate entities with different names, had particular problems. These enterprises could not register similar trademarks even if the similarity involved a designation used by entities from the same group and a relevant statement was submitted (e.g. a letter of consent or a coexistence agreement). In situations of this type, the Patent Office did not recognise agreements between the enterprises.

Under the new regulations, the Patent Office will register a trademark if the applicant submits the relevant consent of the proprietor of the earlier trademark. Thus the Parliament adapted the trademark law to meet the expectations of the market, making life easier for many enterprises. Recognition of letters of consent will translate into a greater number of positive decisions on trademark registration.

These provisions will have the most relevance in trademark cases filed between 1 December 2015 and 15 April 2016, when the second amendment introduces a new system for registration of trademarks.

Monika Wieczorkowska, Marzena Białasik-Kendzior, Intellectual Property Practice, Wardyński & Partners