Disadvantages of existing system
New regulation
Comment



Amendments to the Industrial Property Law that came into force on December 1 2015 mean even more significant changes to the Polish trademark system. As of April 15 2016 the Patent Office will change how it examines trademark applications by replacing the existing relative examination system with an absolute examination system. This update examines the reasons behind the change as well as its potential practical consequences.

Disadvantages of existing system

Since its foundation in 1918, the Patent Office has used the relative grounds examination system for trademark applications to avoid conflict between trademarks. The admissibility of each trademark application is assessed from the perspective of absolute grounds of refusal and through a prior trademark search. If identical or confusingly similar trademarks registered for identical or similar products and services are discovered, the Patent Office informs the applicant in a preliminary refusal of protection. The applicant can then submit its observations, which the Patent Office takes into account before delivering its final decision.

After Poland joined the European Union and became a party to the Madrid Protocol, the number of prior trademarks that Patent Office examiners needed to consider drastically increased. Further, the Polish economy's steady growth resulted in an increase in trademark applications. As a result, the Patent Office's efficiency has steadily diminished. The examination of a trademark application can take one to two years, or even longer in complicated cases. Further, receiving national has protection often proved more difficult than registering a Community trademark, due to the large number of apparently similar prior trademarks.

Consequently, the Polish trademark system became less appealing for applicants than the Community trademark system. Although the registration fee in Poland is much lower, the Office for Harmonisation in the Internal Market's (OHIM) faster registration process for Community trademarks has resulted in the Polish trademark system being viewed as second choice.

New regulation

In order to counteract these problems and harmonise national rules with EU practice, the legislature decided to switch to an absolute examination system as used in many EU countries and by OHIM. As of April 15 2016 the Patent Office will restrict the examination of trademark applications to formal issues and absolute grounds for refusal only. Potential conflicts with prior trademarks will not be taken into account. However, once the trademark application is published, the rights holder of prior identical or similar trademarks will have the right to file an opposition to the registration. If no opposition is filed, trademark protection will be granted.

The Patent Office will continue to notify the applicant of prior trademarks that may constitute grounds for opposition by a third party. However, prior rights holders will not be notified of similar trademark applications.

It is hoped that switching to an absolute examination system will shorten the trademark registration process significantly: it will now last six months. Another favourable outcome is the fact that unused prior trademarks (ie, unimportant or forgotten by the rights holder) will not constitute an obstacle to registration if rights holders do not file an objection. Harmonising Polish and EU practice may facilitate the registration of trademarks for applicants and result in lower associated costs.

The new system introduces new duties for rights holders, which will no longer be notified of similar trademark applications. Instead, they must monitor national applications more closely. Further, enforcing prior trademark rights and filing oppositions against new applications may incur additional costs for rights holders. This change could affect small business owners in particular.

Comment

The comparison of relative and absolute examination systems has been the subject of intense legal discussion worldwide. The advantages and disadvantages of each system have been broadly discussed by commentators and it is difficult to state that one system is better than the other. However, it is clear that Poland's decision to eliminate relative examination is an example of the ongoing harmonisation of EU trademark practice.

For further information on this topic please contact Szymon Gogulski or Mikolaj Skowronek at Soltysinski Kawecki & Szlezak by email (szymon.gogulski@skslegal.pl or mikolaj.skowronek@skslegal.pl). The Soltysinski Kawecki & Szlezak website can be accessed at www.skslegal.pl.