We would like to draw attention to the upcoming amendment to the Industrial Property Law concerning changes in the procedure for obtaining protection rights to a trademark.
Key amendments to the Industrial Property Law include:
- an “opposition system” replaces the “testing system”. After April 15th, 2016 the Polish Patent Office when examining a trademark protection application will conduct only a formal legal survey, verifying the existence of the absolute conditions for granting protection (conditions primarily determining the possible eligibility for designation as a trademark);
- a clear separation of (i) reservations to the existence of circumstances preventing the granting of the protection right, which might be submitted only on the basis of absolute conditions, and (ii) opposition, submitted only on the basis of relative conditions (conditions determining the possibility of the designation conflicting with other registered or applied trademarks);
- elimination of the possibility to file an application for invalidation of the trademark, when an opposition based on the same legal conditions had already been submitted, and it was dismissed (finally and legally binding);
- the Polish Patent Office shall not send notifications of new trademark application to owners of earlier rights, which forces them to run their own monitoring of trademark applications and, if necessary, to submit oppositions to the registration of a new trademark causing conflict-of-laws;
- the amendment abolishes the obligation to prove a legal interest in the case of submitting an application for the invalidation of a trademark (when the trademark is not actually used), as well as in invalidity proceedings based on absolute conditions.
These changes will take effect on April 15th, 2016.