Apart from the recognition of letters of consent, a major change in trademark law already in force is the possibility of registering a mark containing the name Polska or Poland (or the abbreviations RP or PL), or the name of a Polish locality, without the need to obtain the consent of the relevant authorities.
Businesses often seek protection for trademarks that include the name of the country or other geographical name. Notwithstanding rulings by the courts that the use of the word “Polska” always requires legitimation by the state, enterprises use the word “Polska” merely to indicate the location of their firm or to show some other obvious commercial connection to Poland. In most instances consumers correctly grasp the intended meaning, because they are aware of the realities of commercial life and are accustomed to the extensive presence of the word in the names of enterprises and on goods.
But previously this designation could be registered only in adjective form (e.g. Zielnik Polski, Polskie Przysmaki, Polski Bus), unless the applicant could show authorisation, specifically permission from the relevant authority or consent of an organisation to use the name in commerce. The problem was that in many instances no permission could be obtained from the relevant authority because there were no regulations designating the relevant authority. No state or local authority has been vested with the competence to issue permission to use the name “Polska” in commerce, and the same applies to the names of Warsaw and many other cities, as well as Poland’s national symbols.
Significantly, although not expressly covered by the Industrial Property Law, attempts to register trademarks using foreign-language versions of the country name were also denied. The Patent Office and the administrative courts both recognised that the word “Poland” is commonly used as an official designation of the republic, and even audiences unfamiliar with English associated “Poland” with the name of the country.
A consequence of this was numerous decisions refusing to register trademarks that contained the name of the country or a Polish city. Enterprises still wanting to register such marks applied instead to the EU Intellectual Property Office (EUIPO, formerly OHIM), which registered such marks without requiring proof of any consent.
Therefore, removing the ban on registration of trademarks containing the name or abbreviation of the Republic of Poland or the name of a city or other location in Poland should eliminate this problem and result in a major increase in the number of trademarks registered by the Polish Patent Office.
Unfortunately, the new regulations apply only to filings made on or after 1 December 2015.
Monika Wieczorkowska, Marzena Białasik-Kendzior, Intellectual Property Practice, Wardyński & Partners