On 15th April 2016 a significant amendment to the Polish Industrial Property Law with regards to the system of opposition against trade marks came into force. Prior to the change the Polish Patent Office assessed a trade mark application, not only with regards to absolute grounds, (e.g. whether the trade mark is descriptive or is misleading) but also with regards to the relative grounds of refusal (e.g. similarity to earlier trade marks), which was one of the main reasons for the frustratingly long registration proceedings period. Under the previous system, opposition was only available following the registration of a trade mark and it could be filed within 6 months subsequent to the information on the decision granting the trade mark right.
As of 15th April 2016, the Polish law makers elected to introduce a pre-grant opposition system and thus clearly opted for the approach taken in many other EU countries, where the Trade Mark Office only analyses the absolute grounds for refusal, whereas the relative grounds are taken into consideration only upon the filing of a potential opposition. Currently the opposition may be filed within 3 months from the trade mark application being published.
As is very often the case, with such significant amendments, the transitional provisions are of great importance. However it transpires that as regards this amendment they have not been drafted sufficiently carefully. Pursuant to Article 2 subsection 1 of the Amendment Act the previous provisions are applied to the proceedings regarding registration of the trade mark right, as well as to the proceedings regarding an opposition against decisions granting the trade mark right, which have been initiated but not resolved before the Act came into force.
What is the issue?
Usually the registration proceedings conclude with a decision as to granting or rejecting the application. Opposition starts separate proceedings which are carried out in accordance with different principles. Based on the verbatim interpretation of the transitional provisions, one may conclude that the previous provisions will not apply to those trade marks which were filed but were not opposed prior to the law amendment coming into force. This would however result in a situation in which holders of older rights which conflict with this group of trade marks will be deprived of their right to file opposition. The PTO thus denies the right to opposition with regards to trade mark filings made prior to 15th April 2016.
However, the point is that this outcome is almost certainly not the intention of the law-makers but is rather the product of an error made at the legislative process stage. Otherwise, considering the consequences of the interpretation represented by the PTO, the law-makers would definitely express this in a more transparent and comprehensive manner. It is a pity that the PTO failed to take a more reasonable approach by focussing more on the desired purpose and intention of the said regulation instead of sticking to the wording of the transitional provisions. Of course, the stance taken by the PTO will be verified by the administrative courts. Yet this will take at least a couple of years, whereas the issue is definitely more acute for the right holders, even though they can fortunately still consider an invalidation action instead (but this legal remedy does not provide the same level of legal security as does the regular opposition).