Poland (PL)
Apr 25, 2019 (Newsletter Issue 6/19)Amendments to Trademark Law in ForceOn March 16, 2019, the amendments to the Polish Industrial Property Law came into force adapting Directive 2015/2436, harmonizing the laws of the EU Member States regarding trademarks.
Some of the most important changes are the following:
- No graphical representation required
- Collective trademarks introduced
- Trademarks renewal procedure changed: It is enough to pay the fee for the next period of protection to renew the trademark.
- Licensee rights strengthened: Licensees can file a claim for trademark infringement with the proprietor’s consent, while the exclusive licensee will be entitled to bring an action if the trademark proprietor has failed to do so after having been asked by the licensee. Also, the licensee may intervene in proceedings initiated by the trademark proprietor to obtain compensation from the infringer.
- Evidence of genuine use of the trademark in court proceedings obligated
- Protection against preparatory actions introduced which relates to the use of packages or other things that contain a trademark, e.g. packaging, labels, tags, security or authenticity features or devices, or any other things to which a trademark is affixed.
- Liability of intermediaries for infringing trademark protection rights strengthened
- Protection of trademark during the transit of goods
For more information, please click hereSource: www.dlapiper.com; www.aippi.org Apr 04, 2019IP Office Will Not Accept Merger Request of Intl. RegistrationPoland has notified WIPO in accordance with new Rule 27ter(2)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (the Common Regulations), which entered into force on February 1, 2019.
In the said notification, the IP Office has declared that its law does not provide for the merger of registrations of a mark and that, as a result, its Office will not present to the International Bureau of WIPO requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please click hereSource: www.wipo.int Okt 26, 2016 (Newsletter Issue 19/16)Official Fees for Trademark Prosecution ChangedOn October 14, 2016, new official fees for trademark prosecution in Poland entered into force.
Relevant changes are:
- Payment for trademark filing is now calculated separately for each class of protection (previously it was calculated for three first classes).
- Each class costs the same, regardless of the number of classes to be filed.
- A new fee for opposition is introduced.
The new official fee for a paper trademark application is now PLN 450, for an electronic trademark application is now PLN 400 for one class and PLN 120 for each additional class in both aforementioned forms.
For more information, please see the article of our Country Index partner here
Source: Kulikowska & Kulikowski, Poland
Apr 20, 2016 (Newsletter Issue 7/16)Opposition Period and Examination AmendedThe opposition period and official examination have been changed as of April 15, 2016.
The opposition period is now 3 months from the application date. Before, it was 6 months from the publication of registration.
Further, the Polish Patent Office examines trademark applications only on formal and absolute grounds. The examination on relative grounds was abolished.
Source: Kulikowska & Kulikowski, Poland Mrz 16, 2016 (Newsletter Issue 5/16)
E-Services Soon Available
On February 24, 2016, the Patent Office of the Republic of Poland announced the implementation of the e-Services project, part of the Software Package developed by the Cooperation Fund.
The e-Services project aims to develop a set of web-based tools for national and regional EU IP Offices to facilitate the electronic filing of trade mark oppositions, trade mark and design registrations and renewals, trade mark cancellations and design invalidities.
Source: www.tmdn.org
Nov 25, 2015 (Newsletter Issue 18/15)Amendments to Industrial Property Law On July 24, 2015, the Polish Parliament adopted an act amending the Polish Act on Industrial Property Law dated June 30, 2000. The amendments include changes in regulations concerning trademarks, industrial designs and patents.
Key changes in trademark law are for example that the changes extend the possibility of obtaining a joint right of protection for a trademark by introducing the possibility to grant in the name of each entity.
Another significant change is introducing the institution of “letters of consent”. Once it is in force, the Patent Office will be able to apply a legislative provision in a statutory manner and accept letters of consent in all the cases involving collision of a trademark with prior rights held by third parties.
Please see the article of Ms Monika Witkowska of the law firm Kulikowska & Kulikowski for further information here
The full text of the amended act can be seen in the original language here
Source: Kulikowska & Kulikowski, Poland
Sep 29, 2015 (Newsletter Issue 15/15)New Interactive Forms for Trademark/Industrial Design ApplicationsThe Polish Patent Office provides two new interactive forms to facilitate the generation of applications for registration of trademarks and industrial designs. These services are available on the website of the Polish Patent Office as well as in the Online Service Portal. However, the new interactive forms are not active yet.
Interactive forms have a range of functional features enabling a smooth and orderly completion of applications for registration, including inter alia transparent breakdown into kinds of marks, hints to draft the list of goods or facilitated enclosure and visualization of graphics in a PDF file.
After completing the form, it is possible to generate a file with a summary of the application and/or to save this data on a local disk for later use (e.g. to complete the application or facilitate completion of further applications at a later date).
Source: Kulikowska & Kulikowski, Poland
Legal basis is the Industrial Property Act, in force since August 22, 2001, with amendments in force since March 16, 2019.
Poland is a member of the Madrid Agreement and the Madrid Protocol.
Since May 1st, 2004, Poland has been a member of the European Union.
Trademark protection is obtained by registration. It can also be acquired by sufficient public recognition.
Nice classification, 11th edition
Registrable as a trademark are all signs which are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the trademarks registers, in a manner which enables to determine the clear and precise subject matter of the afforded protection. It could be in particular words, including name, drawing, letter, digit, colour, three dimensional forms, including shape of product or packaging and sound.
Protectable non-traditional trademarks: 3-D, colours, sounds, pattern, postion, animation marks, holograms, multimedia. The list may not be exhaustive.
The following trademark types are registrable: trademarks, service marks, collective marks, certification marks and trade names.
The application is filed at the Patent Office.
Multiple-class applications are possible.
Foreign applicants if not from EU need a local agent.
A non-legalised power of attorney is sufficient.
It is necessary to file a document evidencing the capacity of the PoA signatory(s) to represent the applicant, e.g. an excerpt from the relevant Register of Companies, together with its Polish translation (simple translation, not certified).
Foreign applicants do not need a domestic trademark registration.
The application process includes a formal examination and an examination of absolute registration presumptions. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired by use.
The Patent Office publishes the information on the trademark application in the bi-weekly Patent Office Bulletin (Biuletyn Urzedu Patentowego) without delay, after having established that the statutory requirements for the grant of a right of protection for a trademark have been satisfied.
The Patent Office discloses the particulars of the trademark application before publishing the information on the trademark application, not later than in two month term from the date of application. At this point, third parties have three months tocan file the opposition to the Patent Office with reasons against the registration of the trademark. At the same time, during the proceedings parties could submit comments about existence of absolute registration presumptions.
The processing time from first filing to registration is approx. 6-18 months.
After registration, the trademark is published in the monthly Official Gazette (Wiadomosci Urzedu Patentowego).
National:An opposition may be filed only after publishing the information on the trademark application. The opposition period is 3 months from the publication date of the information on the trademark application in the bi-weekly “Biuletyn Urzedu Patentowego”.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
Protection begins with the date of application. A trademark registration is valid for 10 years from date of application. The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for a papertrade mark application is PLN 450, for an electronic trademark application is PLN 400 for one class and PLN 120 for each additional class in both aforementioned forms. The registration fee is PLN 400 for each class and a further PLN 90 as publication fee.
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Practical details on trademark licensing are available in our publication
here
Mai 13, 2019
Kulikowska & Kulikowski, Warsaw, Poland
Jun 19, 2018
JWP Patent and Trademark Attorneys, Warsaw, Poland
Apr 15, 2016
JWP Patent and Trademark Attorneys, Warsaw, Poland
Okt 06, 2015
Kulikowska & Kulikowski, Warsaw, Poland
Jul 04, 2013
Kulikowska & Kulikowski, Warsaw, Poland
Jun 27, 2013
JWP Patent and Trademark Attorneys, Warsaw, Poland
Feb 07, 2011
JWP Patent and Trademark Attorneys, Warsaw, Poland
Feb 03, 2011
Kulikowska & Kulikowski, Warsaw, Poland