On 16 March 2019, the amendment to the Polish Industrial Property Law came into force. The amendments to the Act are to adapt Polish provisions to the provisions of Directive 2015/2436, harmonizing the laws of the Member States regarding trademarks.
The amendment introduces a number of changes regarding inter alia: the definition of a trademark, the procedure for renewing trademarks, common trademarks and warranty marks, the rights of licensees, the extension of rights for trademark owners in the fight against counterfeiting and changes in proceedings concerning international trademarks.
The new definition of the trademark
The most important change is the abolition of the requirement of graphical representation of the trademark submitted for registration. Under the new provisions, a trademark may be any indication, if it is possible to present it in a register in a manner allowing the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. This opens up an easier way to register many unconventional characters such as holographic trademarks, sound trademarks and multimedia trademarks.
Redefinition of collective trademarks and guarantee trademarks
The amendment also introduced new regulations regarding collective trademarks and guarantee trademarks, further specifying the method of obtaining protection for such trademarks, their cancellation and the manner of their use. It shall be noticed that in Poland the rules of use of the trademark must be filed together with collective trademarks and guarantee trademark application.
Easier trademark renewals
Another important change concerns the trademarks renewal procedure. Until now, it was necessary to submit a written request and pay a fee. From now on, no motion is needed and it is enough to pay the fee for the next period of protection. This change will therefore speed up the process of renewing the protection of trademarks.
The Patent Office of the Republic of Poland will also inform the trademark owners about the forthcoming date of payment of the fee for the next protection period. In the case of trademarks, the Office will send such a reminder 6 months ahead of schedule. In the case of other rights, such a reminder will be sent a month before the deadline, however, provided that the appropriate request to receive such reminders has been submitted in advance.
Proceedings in international trademark matters
The amendment also introduces changes to the provisions on dealing with international trademarks, which are consistent with the provisions of the Madrid Protocol and Agreement, and at the same time will enable faster and simplified processing of applications for international trademarks.
New entitlements for licensees
The amendment gives the possibility of pursuing claims for infringements of trademark rights not only to its owners, but also, to a greater extent than before, to licensees. Under the new provision, the licensee, unless the license agreement provides otherwise, will be able, with the consent of the rightsholder, to bring an action for infringement of the trademark.
In turn, the exclusive licensee will be able to bring an action also if the person entitled under the protection right, despite the summons, does not bring an action in due time.
The licensee, in order to obtain compensation for the damage suffered, will also be able to join the proceedings for infringement of the trademark.
Expanding the protection of trademarks
Amended provisions of art. 296 of the Polish Industrial Property Law implement, among others, the following:
1) the right to prohibit preparatory activities related to the use of packaging or other means;
2) prohibition of reproduction of registered trademarks in dictionaries, encyclopedias or other similar information collections;
3) the seizure of counterfeit goods in transit;
4) the protection of the rights of the owner of a later registered trademark as defense in infringement proceedings.
The rights of the trademark owners are also extended, as the group of entities that will be responsible for the trademark infringement has grown. In addition to the producer and distributor of goods, liability may also be applied to entities whose services were used in the infringement of the trademark.
Concluding, it shall be noticed that Polish Industrial Law was consistent and coherent with the main provisions of the Directive. The amendment fully harmonized it with the Directive. The regulations aiming to speed up the procedure, simplify of the renewals or strengthen of the protection shall make the registration and protection more sufficient.