One of the areas that has changed owing to the latest amendment to the Polish Industrial Property Law (in force from 16th March 2019) is the position of the licensee in the proceedings for infringement of the trade mark rights.
The basic and significant change is the possibility for the licensee of suing, with the rightsholder’s authorization, for infringement. Therefore, what is crucial, the law does not differentiate the categories of licensees (exclusive or non-exclusive) anymore. Thereby, the circle of parties entitled to bring the proceedings concerning the infringement of the trade mark rights has extended.
2. At the moment proceedings may be brought not only by a registered exclusive licensee (as it was before the bill’s amendment) but also by a non-exclusive licensee and an unregistered exclusive licensee. Previously the latter two licensees may have only tried to insist on taking the relevant actions against the infringer by a licensor (if he/she was the trademark rightsholder). The only possible way in which the action might have been taken by the licensee was gaining the appropriate document appointing a representative ad litem from the licensor. It meant that in such case the licensee acted on behalf of the licensor, not his/her own, and the potential costs of compensation or restitution of unfairly obtained advantages were awarded to the licensor.
3. According to the new wording of article 163 item 11 of the Polish Industrial Property Law, unless the licensing agreement provides otherwise, the licensee may bring proceedings concerning the infringement of the trade mark rights only with the rightsholder’s authorization.
The law does not define the deadline for the authorization, nor its form. Thereby parties may abolish or reserve rights of the licensee in the agreement or any other statement later on. Nevertheless, due to the fact that the licensing agreement shall be made in writing on pain of invalidity, this rule shall also refer to the rightsholder’s authorisation.
4. The new regulation gives an exclusive licensee right to bring legal proceedings against trademark infringement in case the trade mark rightsholder does not take action concerning the infringement of the trade mark rights within the appropriate deadline despite being noticed. The article does not explain the term of an 'appropriate deadline'. It shall be assumed that it should be a reasonable deadline within which a decision of preparing the claim may be expected. In some circumstances the infringement requires an immediate reaction and bringing the claim may be preceded by the application for securing the claim. Consequently the appropriate deadline in some cases may be only a few days in other cases a week or two.
5. Conferring by law, regardless the content of the licensing agreement, the licensee may join in the ongoing proceedings concerning the infringement of the trade mark rights initiated by the trade mark owner and insist on compensation for himself/herself. Unfortunately the amended law does not define the mode of joining in the ongoing proceedings initiated by the trade mark owner against the infringer. In this part and many others as well the industrial property law does not take into consideration the specificity of the procedural law.
6. Implementation of the provisions of the Directive of the European Parliament and the Council from 16th December 2015 into Polish legislation was aimed to approximate the laws of the Member States related to the trade mark rights. It may be expected that the approximation of the laws in this regard will have a positive impact on unification of jurisprudence and practice of authorities in the EU.