Cheaper trademark and industrial design protection in Poland

Changes have been introduced in the system of fees for the submission and protection of trademarks and industrial designs with the Polish Patent Office (“PPO”). An amendment of the Regulation of the Council of Ministers on fees relating to the protection of inventions, utility designs, industrial designs, trademarks, geographic designations and topographies of integrated circuits was published and entered into force at the end of 2016.

Charge for each class

A rule has been introduced making it possible for a fee to be paid only for a single class of goods or services for which a trademark is submitted. Previously, the basic fee for submitting a trademark to the PPO immediately covered three classes of goods or services from the Nice Classification, even if the applicant was only interested in protecting goods or services from just one class. A new table of fees introduces this long-awaited change by having different fees for those entities seeking trademark protection for a single class of goods in the Nice Classification and those seeking protection for a larger number of classes.

Lower official fees

The existing basic fee for submitting a domestic trademark for goods or services from three classes of the Nice Classification used to be 550 zlotys (130 euro). This has been amended such that the basic fee for a single class is now 450 zlotys (105 euro), plus, where broader protection is sought, 120 zlotys (28 euro) for each additional class. This means that the fee for submitting a mark for goods or services belonging to only one class is now lower, but the fee for a submission concerning a larger number of classes is now higher. When making a submission for protection in three Nice Classification classes, the official fee is 690 zlotys (162 euro). Where the result of the PPO’s assessment of a trademark submission is favorable, the applicant will be called on to pay the fee for the first 10-year period of protection, in the amount of 400 zlotys (94 euro) for each class of goods or services. The new table of fees (unlike the previous table) does not provide for an increased rate for protection covering more than three classes of the Nice Classification.

Concerning industrial designs, the submission fees have been maintained at the current level, but the fees for protection have been reduced. The fee for the first five-year period of protection of a design is now 150 zlotys (35 euro), for the second period 250 zlotys (58 euro), for the third 500 zlotys (116 euro), for the fourth 1,000 zlotys (234 euro), and for the fifth 2,000 zlotys (468 euro). Industrial designs are protected for up to 25 years following the date of submission, with protection divided into five-year periods.

Transitional provisions

The transitional provisions of the Regulation require some attention. In accordance with Article 2 paragraph 1 of the Regulation, the existing regulations continue to apply to one-time fees collected for submissions, applications, and other actions taken before the Regulation entered into force. In accordance with Article 2 paragraph 2, however, the provisions of the Regulation do not apply to periodic fees whose payment due date fell before the Regulation’s entry into force, or to periodic fees paid earlier on the basis of the old provisions. Moreover, the provisions of the Regulation do not apply to periodic fees whose amount was defined in a summons or decision on granting an exclusive right issued before the new Regulation entered into force.

Summary

The proposed changes in the amounts of official fees for submitting trademarks may lead to an increase in the popularity of registrations with the PPO, though the changes will be most significant only for entities beginning their economic activity that do not yet offer a wide range of goods or services. The change in fees will really only be important for entities seeking protection for goods or services in a single class of the Nice Classification. The submission of a mark for a larger number of classes will in fact be somewhat more expensive than it has been. At the same time, the fees will be cheaper for 10-year protection periods for trademarks and five-year protection periods for industrial designs.