Following a number of significant changes in 2016 to Polish Industrial Property Law which in particular included the transition to a pre-grant opposition system and which were highlighted in earlier editions of Brands Update in May and September 2016 three regulations (ordinances) were issued by the Polish government and came into force in 2016 and 2017:
- the regulation of 8 September 2016 which amends the fees related to the protection of industrial property rights, which came into force on 14th October 2016;
- the regulation of 8 December 2016 on the trade mark filings, which came into force on 24 December 2016; and
- the regulation of 12 January 2017 on the registers maintained by the President of the Polish Patent Office, which came into force on 19 January 2017.
All the three regulations, although being of a rather technical character, have a practical impact for trade mark owners.
The trade mark fees
It goes without saying that fees paid in relation to trade mark protection are of great importance and this factor is even more crucial, the greater is the relevant trade mark portfolio.
The table below illustrates the main changes with regards to the official fees paid on the most popular steps.
|Action||Official fees € ||The change €|
|Filing (standard application)
||approx.105 (PLN 450) approx. 30 (PLN 120)||The relevant fees were increased
||approx. 20 (PLN 90)||No change|
|Renewal fees||approx. 90 (PLN 400) for each class||Previous fees:
|In the case of a renewal in the grace period the fee is additionally increased by 30 %|
|Application fees for renewal
||approx. 50 (PLN 200)approx. 70 (PLN 300)||No change|
|Opposition fee||approx. 140 (PLN 600)||The fee was decreased from approx. 230 (PLN 1,000)|
By virtue of the amendment to Industrial Property Law, Poland joined the majority of EU countries and switched to a pre-grant opposition system. Consequently as of 15 April 2016 an opposition may be lodged prior to the decision on the registration of a given trade mark, i.e. within 3 months following publication of the trade mark application (and not within 6 months after registration of the trade mark as used to be the case prior to the amendment to the law). Therefore learning sufficiently early that a trade mark has been filed now becomes even more crucial.
The information on the filing is disclosed prior to the official publication (which triggers the deadline for opposition). The regulation of 8 December 2016 on trade mark filings explains the technical issues of such disclosure – the relevant information is available within a database, which is accessible via the Polish Patent Office’s internet webpage. This is quite a relevant change as the Patent Office’s electronic database , although being one of the main sources of information on industrial property rights registered in Poland, has not had a sufficient explicit legal protection before.
Furthermore the regulation provides for more specific rules as to the depiction of the trade mark in the application, the language of the filing, documents to be attached and formulating the list of goods. As regards this latter issue Article 8 subsec. 1 of the new regulation provides for the possibility to use general indications of the class headings of the Nice Classification or other general terms, provided however that they are sufficiently clear and precise. In such a case it is deemed that the list of goods includes all goods expressly covered by the literal meaning of the given indication or term.
The trade mark register
One of the main changes of the regulation of 12 January 2017 on the registers maintained by the President of the Polish Patent Office is the possibility to run all the relevant registers, including a trade mark register, in electronic from, which marks a significant shift from paper to electronic documentation.
In addition the new law provides for a transition mechanism – Pursuant to Section 4 subsection. 2 of the regulation it is possible formally to close the traditional paper register book once all entries are digitalised.
This also impacts on the method in which the register data is accessed by the public – if the trade mark register is kept in an electronic form, the relevant data is made available by means of computer systems. As regards digitalised register books, which used to be kept in paper form, the Polish Patent Office may issue an excerpt from the trade mark register in the form of a scanned copy.