Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation governing trademarks in Poland is the Act of 30 June 2000 (Journal of Law 2017, Item 776, as amended) (the Industrial Property Law).

International law

Which international trademark agreements has your jurisdiction signed?

Poland has signed the following international trademark agreements:

  • the Madrid Agreement Concerning the International Registration of Marks;
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
  • the Trademark Law Treaty;
  • the Paris Convention for the Protection of Industrial Property; and
  • the Singapore Treaty on the Law of Trademarks.
Regulators

Which government bodies regulate trademark law?

The Patent Office is a central government agency responsible for industrial property matters. It is subordinated to the Council of Ministers, and the minister of economy supervises its activities.

The Patent Office’s responsibilities include receiving and examining trademark applications, granting or refusing trademarks and adjudicating trademark cases.

Registration and use

Ownership of marks

Who may apply for registration?

Any natural or legal person may apply to register a trademark. In some cases, the right of registration is reserved for certain entities, such as organisations set up to represent the interests of entrepreneurs (in relation to collective trademarks).

Scope of trademark

What may and may not be protected and registered as a trademark?

A trademark can be any sign which distinguishes the goods or services of one undertaking from those of another and can be included in the register in a manner which clearly and precisely conveys the subject matter of the protection afforded. In particular, words (including personal names), designs, letters, numbers, colours, the shape of goods (including the shape of packaging) and sounds can be registered as trademarks.

The scope of signs which can be registered as trademarks is relatively wide. Although smells and tastes are not excluded from registration, practical difficulties arise with regard to including such signs in the register in a manner which clearly and precisely conveys the subject matter of the protection afforded.

Unregistered trademarks

Can trademark rights be established without registration?

As a rule, a trademark must be registered in order to bestow on the owner an exclusive right thereto. The Act of 30 June 2000 (Journal of Law 2017, Item 776, as amended) (the Industrial Property Law) confers no protection on unregistered trademarks, with one exception as regards trademarks which are well known in Poland. Even so, unregistered trademarks which are well known in Poland are protected only with regard to the risk of confusion.

Owners of unregistered trademarks usually seek protection under the Act of 16 April 1993 on Combating Unfair Competition. Accordingly, acts of unfair competition include the use of a confusingly similar sign during the course of trade which results in a likelihood of confusion. The protection conferred by this legal act is not the same as that provided for by the Industrial Property Law. The Industrial Property Law creates a monopoly for the trademark owner (ie, an exclusive right), while the Act on Combating Unfair Competition gives the owner of an unregistered trademark the option to act against the infringer only in specific cases (as determined by the law).

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

If a famous foreign trademark is not registered in Poland (as a national trademark, an EU trademark or an international trademark protected in Poland), no protection is afforded, especially if the mark is not used domestically. If the famous trademark is used in Poland, the protection provided for by the Act on Combating Unfair Competition may apply.

The benefits of registration

What are the benefits of registration?

There as several benefits of registration, including:

  • legal presumption;
  • the exclusive right to use the mark in Poland against any party, enabling trademark owners to take action against infringers by way of various procedures (ie, civil, criminal and custom);
  • legal security and increased value for the owner;
  • increased remedies for infringement; and
  • distinctiveness from competitors.
Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

In order to file a trademark application, the applicant must submit:

  • an application form;
  • a power of attorney (POA), if applicable, along with proof of payment of the POA fee;
  • evidence that the person who signed the POA was authorised to do so (ie, an excerpt from the respective commercial register); and
  • the application fee.

All documents must be filed in Polish or translated into Polish by a sworn translator.

Application fees may be paid electronically, but a special account must be established.

The representation of a mark in an application varies depending on the type of mark. In general, marks should be presented as a photo or print, which should be between 8cm by 8cm and 10cm by 10cm in size. The photo or print can be in any format, provided that it can be reproduced.

Trademark searches are not mandatory. However, they are advisable as they allow applicants to determine any risks resulting from prior applications or third-party registrations.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

Registration takes approximately nine to 12 months. It will take longer if the Patent Office has concerns regarding absolute grounds of refusal or a third-party opposition is filed.

The total cost of filing an average mark in a single class is Zl450 (approximately €100). If the Patent Office grants protection, the applicant must pay an additional Zl400 for 10 years of protection and Zl90 to publish the registration and obtain a registration certificate.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The Nice Classification of Goods and Services applies in Poland. Multi-class applications are available, but there are no cost savings. A one-class application costs Zl450 and there is a Zl120 fee for every additional class. 

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

In 2016 an opposition procedure was introduced into Polish law. Therefore, the Patent Office examines only absolute grounds of refusal (eg, distinctive character) and does not check potential conflicts with other trademarks (this could be the subject of an opposition).

Letters of consent have been accepted since 2016.

Once the Patent Office determines that a trademark cannot be registered because of absolute grounds of refusal, the appropriate notification is sent to the applicant. Before the final decision is taken, the applicant can submit additional arguments or evidence to support its application within the given deadline.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

The use of a trademark or service mark need not be claimed before registration is granted or issued. However, marks must be used within five years of registration or risk revocation. Under Polish law, if a registered trademark has not been genuinely used for protected goods for an uninterrupted term of five years from registration, it could be revoked. Any third party can demand revocation. Under this procedure, a trademark owner must prove that it has been using the mark in the course of trade for all goods or services covered by the registration.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

There is only one symbol determined by law (®). There is no obligation to use this mark; the law permits its use to inform the public about the registration. Use of this mark without a valid trademark registration is prohibited.

Appealing a denied application

Is there an appeal process if the application is denied?

Yes – there is an appeal process if an application is denied. The first step is to file a motion for reconsideration, which should be done within two months of the application being denied. Such motions will be handled by a different expert from the Patent Office. If the motion for reconsideration is unsuccessful, the applicant may file an appeal with the administrative court and subsequently the Supreme Administrative Court. The administrative courts examine whether the Patent Office has made a procedural or substantial error.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Once a trademark application has been published, third parties may file an opposition based on prior rights within three months. If the opposition meets the formal requirements, the Patent Office will allow two months for the amicable settlement of the dispute, which can be extended to six months if both parties agree. In this time, parties can seek an amicable solution and often do in practice. If not, the adversarial stage will begin, which ends only with the exchange of the parties’ arguments and the court writs (a hearing is not obligatory). A Patent Office expert will decide whether to refuse a trademark application or an opposition.

Once a trademark has been registered, third parties can file for cancellation based on prior rights or absolute grounds of refusal (eg, lack of distinctive character). If such cancellation is based on prior rights, only the rights holder can file for cancellation. Such cases go straight to the adversarial stage and are handled by three experts, who will schedule one or more hearings. Proceedings take approximately one to two years and the associated costs vary depending on the complexity of the case and the number of documents exchanged by the parties.

The Industrial Property Law enables parties to file for cancellation based on a trademark owner’s bad faith. The burden of proof in such cases is on the party that claims bad faith. Appropriate evidence is required.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration remains in effect for 10 years from the date of filing the application. In order to maintain a registration, the appropriate fee must be paid to the Patent Office within the deadline. The fee can be paid within one year before the deadline or six months after the deadline (with an additional late fee).

The Patent Office does not require proof of use in order to extend the 10-year registration period.

Surrender

What is the procedure for surrendering a trademark registration?

Trademark registrations can be surrendered easily; it is sufficient for the registrant to make a declaration of surrender before the Patent Office with the consent of the person in whom the right is vested. A registration may also be surrendered for some of the goods for which protection was granted. In such cases, the Patent Office will issue a decision revoking the trademark protection.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Trademarks can be protected under other IP rights (mostly copyright or designs). In order to benefit from such additional protection, a trademark must fulfil the requirements of each IP right. A trademark could constitute a work of art and thus be protected by copyright law if it is a manifestation of creative activity of an individual nature (which is a definition of the work of art). The same goes for designs – a trademark must be new and have individual character to enable the design’s protection to be conferred. Choosing the correct IP right for each sign or product is a key IP strategy issue.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

No special regime governs the protection of trademarks online. The provisions regarding trademark infringement also apply in this instance.

However, a special regime exists in case of domain names. As a domain name is not an IP right but results from an agreement signed by the owner and the appropriate registrar, any party can register any domain name – the rule is first come, first served. If a domain name registration could constitute third-party trademark infringement, the Industrial Property Law and the Act on Combating Unfair Competition apply. Trademark owners can file a lawsuit before the Arbitration Court for Domain Names, a specialised court which handles only domain name cases. If a trademark owner succeeds before the court, the domain name will be assigned thereto. Proceedings before this court are relatively fast and are therefore often chosen by trademark owners over trials before the common courts.

Licensing and assignment

Licences

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

Yes – each type of licence (eg, exclusive and non-exclusive) can be recorded with the Patent Office on demand. The Patent Office requires the licence agreement in order to record it. This used to have benefits for exclusive licensees (ie, they could bring claims against an infringer only if the licence was recorded). However, this rule has changed and licences are now recorded purely for informative purposes.

Parties are free to include in a licence agreement additional clauses regarding trademark use (eg, quality control clauses, marketing control clauses and certain publicity or marketing restrictions).

Assignment

What can be assigned?

A trademark can be assigned for all or some of the goods or services – this is up to the parties to decide. The goodwill or reputation associated with a trademark can also be assigned.

The aim of an assignment agreement is to assign a trademark and all or some of the associated goods or services. The rest is left to the parties to the agreement to decide as general contractual freedom applies.

Assignment documentation

What documents are required for assignment and what form must they take? What procedures apply?

Trademarks must be assigned via a written transfer agreement; otherwise, the assignment will be null and void. Any special form (eg, notarisation) is not required. 

Validity of assignment

Must the assignment be recorded for purposes of its validity?

According to the Act of 30 June 2000 (Journal of Law 2017, Item 776, as amended) (the Industrial Property Law), assignment and licence agreements must be concluded in writing; otherwise, they will be null and void.

Security interests

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Security interests are recognised in Poland and used mostly in loan matters. In order to secure a loan, banks establish the security interests relating to the trademark. A written agreement is necessary.

Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Civil and criminal proceedings are available to enforce trademark rights against alleged infringers.

Civil proceedings are set out in the Act of 30 June 2000 (Journal of Law 2017, Item 776, as amended) (the Industrial Property Law) and the Act of 16 April 1993 on Combating Unfair Competition. The Industrial Property Law sets out cases of trademark infringement and possible claims resulting therefrom. The Act on Combating Unfair Competition defines acts of unfair competition, which include trademark infringement and the dilutive use of a mark. This act also provides possible claims.

It is possible to cumulate claims under both laws in one set of proceedings. Trademark infringement often also constitutes an act of unfair competition.

The Industrial Property Law also includes criminal provisions (involving the police, the prosecutor and the criminal courts).

Poland has no specialist courts (except for the EU trademarks and designs court in Warsaw). However, a significant legal amendment which proposes to introduce specialised IP courts in Poland has been processed by Parliament and is expected to come into force in 2020.

Procedural format and timing

What is the format of the infringement proceeding?

In civil cases, the plaintiff initiates infringement proceedings by filing a lawsuit or motion for injunction (a temporary judgment which applies until the court issues its decision). The plaintiff and the defendant can submit various types of evidence to the court. The most important type of evidence is documents, but witnesses can also be called (except in commercial cases, where witness testimonies are limited). Parties can also request for expert opinions to be admitted as evidence.

The role of experts in trademark infringement proceedings is provided for in the Civil Procedure Code. Accordingly, where special information is required, the court may, having considered the motions of the parties as to the number and selection of expert witnesses, summon one or more expert witnesses to testify.

Civil proceedings last up to two years in first instance. Thus, businesses often seek out-of-court methods of dispute resolution (eg, inter partes negotiations).

In case of infringement, IP cases are handled by one judge with a legal background.

In criminal cases, the length of proceedings depends on the actions of the police and the prosecutor, who handle a case once a motion for prosecution has been filed. Cases are often settled before going to court (eg, the rights holder and infringer reach an amicable settlement or the infringer agrees to a voluntarily penalty).

Burden of proof

What is the burden of proof to establish infringement or dilution?

As a general rule, the burden of proof rests on the party which benefits from the legal effect. It is up to plaintiffs to prove that the conditions of trademark infringement or dilution have been met.

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

As a general rule, trademark owners may seek a remedy for an alleged violation. The same goes for criminal complaints.

According to the Industrial Property Law, a licensee can bring claims on its own if the licence agreement authorises it to do so. Exclusive licensees may bring claims on their own if the trademark owner is not interested in pursuing an infringement case.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

As regards border enforcement, the available measures are described in the EU Customs Enforcement of IP Rights Regulation (608/2013). Accordingly, if there is a probability that imported goods infringe a trademark registered or valid in Poland, Customs will hold the goods for a limited time and inform the owner. This gives the owner and the infringer the chance to settle the case amicably by destroying the counterfeit products. If the infringer refuses to destroy the products, the owner can initiate civil or criminal proceedings.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

The Civil Procedure Code and the Industrial Property Law give trademark owners certain discovery, disclosure and preservation devices.

According to the Civil Procedure Code, evidence may be preserved on a motion before proceedings are commenced or ex officio in the course of proceedings where there are reasonable grounds to believe that the taking of such evidence will be prevented or significantly obstructed or where it is otherwise necessary to determine the current status quo.

The Industrial Property Law enables the courts to secure evidence (on a motion) in trademark infringement cases or secure claims by disclosing certain information about the infringement (eg, the amount of infringed goods introduced into the market and the distribution network).

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

On average, it takes between two and six weeks to obtain a temporary injunction, depending on the court (eg, it may take longer in Warsaw).    

First-instance proceedings take approximately two years or longer (especially if there are multiple claims or written opinions of expert witnesses). Appeals also take approximately two years (most of this time is spent waiting for the appeal hearing to be scheduled).

Criminal proceedings take approximately one year from filing the motion for prosecution to receiving the court’s decision.

Limitation period

What is the limitation period for filing an infringement action?

According to the Industrial Property Law, the limitation period for trademark infringement claims is three years. The period concerned runs, separately in respect of each individual infringement, from the date on which the rights holder learned of the infringement and the infringing person. However, in any case, claims will become barred by prescription five years from the date on which the infringement occurred.

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Depending on the case, trial preparation may be costly, especially if a consumer survey is involved. Such evidence helps to prove association between trademarks among consumers or risk of confusion. Although such evidence will be viewed as part of the plaintiff’s arguments, it can be helpful.

It is difficult to give a cost estimation for first-instance trials, as it will depend on the complexity of the case, the activity of the defender, the number of hearings and the evidence to be submitted. On average, first-instance proceedings cost approximately Zl100,000 (€25,000), without official fees.

Appeals are cheaper because preparation and attendance are usually combined into one hearing. Depending on the complexity of the case, the costs to be envisaged are approximately Zl10,000 to Zl15,000.

Appeals

What avenues of appeal are available?

A losing party can appeal within two weeks of receiving a decision and the justification. Appeals are submitted to the court which issued the decision being challenged.

The appeals court will examine whether the first-instance court made any procedural or substantial errors. Depending on the situation, the appeals court can return the case to the first-instance court for reconsideration or issue a reformative decision.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

The law provides for various types of defence, such as prior use rights, the exhaustion of trademark rights or the use of a trademark only for information purposes. These are classic examples of limitations of exclusive trademark rights.

Polish law expressly states that a plaintiff must use its trademark in the course of trade in order to prohibit others from using it. Further, the defendant can demand that the plaintiff submit evidence that it has been genuinely using the trademark in the five years preceding the lawsuit.

Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The remedies available to trademark owners in case of infringement are listed in the Industrial Property Law. They can be divided into financial and non-financial remedies (but are undoubtedly pecuniary).

As regards non-financial remedies, rights holders often demand that an infringer cease the infringement or surrender any unlawfully obtained benefits. If the infringement is culpable, the rights holder may also demand that the damages be remedied:   

in accordance with the general principles of the Civil Code, according to which the plaintiff should prove the infringement, the actual damage caused and the link between the infringer’s actions and the damage; orby paying a sum corresponding to the licence fee or other relevant remuneration that, when claimed, would have been due and payable to the rights holder for consenting to the mark being used (a form of lump-sum damage). Rights holders tend to prefer this option as they need not provide any proof as in the above case. A court-appointed expert is usually engaged to determine the sum of such damage.

As regards financial damages, judges have some discretion under the general rules of the Civil Procedure Code, especially if a trademark owner opts for the first option above. Accordingly, if the court in a redress action decides that it is impossible or extremely difficult to prove the amount claimed, it may award an amount calculated in view of the facts of the case.

The courts can also adjudicate, on a rights holder's request, that all or part of a judgment or information on an infringement be communicated to the public in the manner and scope specified by the court.

Trademark owners can demand reimbursement of legal costs, along with attorney’s fees. In practice, the sum awarded by the court is rarely as high as the actual costs borne by the winning party.  

ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Out-of-court negotiations are possible at every stage of court proceedings. Changes introduced to the Civil Procedure Code in 2016 show that mediation has become increasingly important.

First, when bringing a lawsuit, the claimant must advise whether the parties have attempted mediation or used other ADR methods or, if no such attempt has been made, the reasons for failing to do so. Once the lawsuit is brought before the court, the defendant will have formal opportunities to request mediation (eg, in response to the lawsuit). However, claimants can refuse such a request.

According to the Civil Procedure Code, the courts may refer parties to mediation at any stage of proceedings. A mediation referral order may be issued during an ‘in camera’ hearing. Mediation cannot be conducted if the party does not consent thereto within one week of the mediation referral order being announced or served.

In practice, the courts often issue a referral order after a lawsuit is brought but before the first hearing. To this end, the judge may summon the parties to attend an in camera hearing in person if it is necessary to hear them. Each party has a right to refuse mediation. Further, the judge may invite the parties to attend an information meeting about ADR methods – in particular, mediation.

In addition, during the hearing the court must inform the parties of their option to amicably resolve a dispute, particularly through mediation.

Update and trends

Key developments of the past year

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

The biggest change faced by Polish trademark law is the introduction of specialised IP courts. Although this change has been on the cards for some time, it only now seems like a real possibility. The relevant act has been advanced by Parliament and the new courts may be created in 2020.

Law stated date

Correct on

Give the date on which the information above is accurate.

24 November 2019.