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.

Law stated date

Correct on

Give the date on which the information above is accurate.

24 November 2019.