Intellectual propertyi Brand search
A brand search allows assessment of the availability of a mark in the light of earlier registrations and applications. When conducted prior to filing, a brand search avoids the undesired costs of potential infringement proceedings or the unexpected necessity of changing the brand because of earlier registration of an identical or similar trademark.
The Polish Patent Office (PPO) provides online access to all published trademark applications and registrations, and can thus be used as a database for brand searches. Adequate appreciation of the potential risk of confusion with earlier trademarks usually requires some level of proficiency. The assistance, therefore, of trademark or patent attorneys is strongly recommended when analysing search results.
As of 15 April 2016, the PPO examines absolute refusal grounds only. Conflicts with earlier trademarks are not examined ex officio. The holders of earlier trademarks may oppose conflicting applications before their registration. This requires ongoing scrutiny and monitoring of new trademark applications in relevant classes.
Brand searches are usually limited to earlier trademark applications and registrations; however, to identify all potential risks connected with the launch of a new brand, it is also worthwhile conducting a 'freedom to operate' search. This search concerns non-trademark prior rights, such as company names, trade names, unregistered trademarks and all other designations used on the relevant market. The simplest way to conduct it is by using an internet search engine.ii Brand protection
In Poland, a trademark application can be filed either in paper or electronic form. The scope of protection is determined by the list of goods and services attached to the application, classified in accordance with the Nice Classification. Application proceedings can take as long as between 10 and 12 months, provided the application is not opposed.
Individuals and entities that have a domicile or a business seat in Poland, or on EEA territory, do not have to be represented in trademark registration proceedings by a professional representative. Individuals or entities from outside the EEA must be represented in trademark registration proceedings by a Polish-qualified professional (i.e., trademark attorney or attorney-at-law).
Information on trademark applications is published within two months of filing. If there are no absolute refusal grounds, the application is published in the official bulletin, and from this time any third parties may file their observations regarding absolute refusal grounds, regardless of the PPO's primary positive assessment. On the basis of these submissions, the PPO might change its view and dismiss the trademark application.
For published trademark applications, the PPO automatically runs an informative search of earlier identical or similar trademarks registered for identical or similar goods, for the purpose of registration.
Within three months of publication of the application, the holders of earlier trademarks, as well as the holders of earlier personal and economic rights, may oppose the trademark application. The opposition deadline is not extendable. The parties have two months (extendable to six months) to settle the case (cooling-off period). Following this, the PPO will proceed with the opposition. The likelihood of confusion is determined in cases of identical or similar registered trademarks applied in relation to identical or similar goods or services. The trademark applicant may raise a non-use claim against the earlier registration. The PPO is bound by the grounds of the opposition indicated by the opponent. Letters of consent are acceptable.
If no opposition is filed, the PPO issues a decision on trademark registration. Otherwise, the PPO also grants registration to the extent an opposition was dismissed by a final, non-appealable decision. Registration is conditional upon payment of the relevant registration and publication fees.
Trademark protection initially lasts for 10 years, with the possibility of unlimited extensions for subsequent 10-year periods.
A motion for invalidation of a trademark may be filed at any time after the registration based on absolute and relative refusal grounds. However, relative refusal grounds may only be raised by the holders of earlier trademarks, or earlier personal or economic right holders. Non-use cancellation is acceptable after five years of non-use, as long as there are no reasonable grounds for non-use. A non-use cancellation request may be filed by any person.
Brand protection is complementary to other intellectual property (IP) rights. A figurative or 3D mark can also be protected by copyright law or as an industrial design.
Implementation of Directive 2015/2436 will take place in Poland through an amendment to the Industrial Property Law (IPL). The deadline for transposition is 14 January 2019; however, it is not yet certain when the implementation will come into effect.
Transposition of the Directive has entailed changing the definition of a trademark, as the graphical representation requirement has been removed. The new definition that has been introduced provides that a trademark may consist of any sign that is capable of distinguishing the goods or services of one undertaking from those of other undertakings, and that can be presented in the register in a manner that enables third parties to determine the clear and precise subject matter of the protection.
Polish law recognises collective trademarks and collective guarantee trademarks. The upcoming amendment will rephrase the definition of a collective mark. The legislators also decided to repeal the institution of collective guarantee marks from the Polish system, and replace them with newly added guarantee marks as stipulated in the Directive. Collective guarantee marks can be converted into guarantee marks within six months of the entry into force of the amendment.iii Enforcement
Poland has a bifurcated system, in which trademarks can be invalidated only in proceedings before the PPO, while infringement cases are decided by the courts. Accordingly, invalidity arguments may not be raised as a counterclaim defence in court proceedings (except in EU trademark infringement proceedings). There are no specialist IP courts in Poland, apart from the court dealing with EU trademarks and Community designs.
In the case of a pending infringement case a court would usually stay the proceedings if a request for invalidation were filed before the PPO; however, as there is no legal provision addressing this particular issue, it is not obligatory, and in principle the decision to stay the infringement proceedings is left to the court's discretion.
In Poland, preliminary injunction (PI) requests are decided in ex parte proceedings (i.e., defendants are not informed about the PI request and generally have no opportunity to defend their rights until the decision on the grant of the PI is issued and served upon them, unless a court schedules a hearing to consider the PI request). There is also no formal way of submitting 'protective letters' (common in Germany), as they are generally not legally recognised in Poland. To obtain an injunction, the trademark holder has to prove that infringement is probable and that the trademark holder has a legitimate interest in the injunction (e.g., the lack of an injunction may cause the trademark holder irreparable damage). In the event that a PI is granted, a claim should generally be filed within 14 days of receipt of the PI decision.
In general, an action should be brought before the district court of the defendant's seat. However, if the infringing product is available throughout the whole territory of Poland (e.g., through an online shop), a PI request or the claim itself may be filed with any of the 45 district courts in Poland. This is because the jurisdiction ratione loci can be determined by the place of an alleged infringement.
In an infringement action the claimant may claim cessation of infringement, return of unlawfully obtained profits, publication of the final judgment (or information about it) and – in cases where the infringement is culpable – compensation for damage. Moreover, the court may also decide on the destruction, withdrawal from the market or transfer of ownership of the infringing goods.
In practice, seeking damages in trademark cases may be quite difficult from an evidential perspective. It is for the claimant to prove the actual damage it suffered and the adequate causal relation between the infringement and the damage. Damages can also be calculated based on the criterion of 'reasonable royalty', but this is very seldom used as there are serious doubts regarding its interpretation. Obviously, the most credible point of reference for a reasonable royalty would be the licence fee charged by the claimant in a similar case based on an existing licence agreement. This is, however, very rarely the case. Most typically, the rights holder rather claims the handing over of profits unlawfully obtained by the defendant, meaning revenues gained from sales of infringing products, as it is much easier to calculate this figure, and obtain reliable data on sales volumes and prices.
As a result of incorrect implementation of the Enforcement Directive into Polish law, requests for disclosure of information can be made only for the purpose of securing a particular claim (e.g., cessation claim, damages or return of unlawfully obtained profits). These are proceedings similar to a PI action. In the request for disclosure of information, the claimant has to indicate the claims that would be 'secured' by the request. In other words, it would have to be shown that the requested information was necessary to establish the scope of the claims (e.g., the amount of damage or amount of unlawfully obtained profits).
The period of limitation for all claims is three years, counted separately for each infringement from the time the right holder became aware of the infringement and the infringer; not later, however, than five years from when the infringement took place.
On 6 December 2018, the Polish Constitutional Tribunal declared Article 286(1.iii)of the IPL to be unconstitutional. According to the Tribunal, this provision infringes the principles of freedom to conduct business and proportionality referred to in Article 31(3) of the Constitution of the Republic of Poland. Pursuant to Article 286(1.iii) of the IPL, those affected by the violation of their industrial property rights are also entitled to apply to secure their claims by obliging a person other than the infringer to provide information on the origin and distribution networks of the infringing goods or services. The unconstitutional provision will lose its binding force following publication of the Tribunal's judgement in the Journal of Laws.iv Data protection and e-commerceData protection
The EU General Data Protection Regulation has been fully implemented in Poland.
In the context of franchising relationships, the franchisor or franchisee can be considered a data controller (data owner) or data processor (entity acting on behalf of a controller), or both. If the franchisor as data controller outsources processing to a franchisee (or vice versa), both parties must conclude a data-processing agreement indicating at least the scope, purpose and duration of processing, the type of personal data and categories of data subjects, as well as the obligations and rights of the controller.
The franchisee or franchisor (as controller) must have a legal basis for processing. In the context of its activity several legal bases for processing are possible, in particular, consent, legitimate interest of the data controller or data recipient, and performance of the contract with the data subjects (the latter would only be reserved to franchisees as a party to the agreement). For marketing purposes, the franchisee or franchisor can rely on legitimate interest to promote its own products or services (except for e-communication and telemarketing, where separate opt-ins are required). If, however, the franchisor would like to use the franchisee's clients' data for marketing purposes, it must first obtain an appropriate consent.
If the franchisee or franchisor, acting as a data controller, wants to transfer data to third countries that do not provide adequate levels of personal data protection, an additional legal basis is required. In practice, the most reliable legal basis would be entering into standard contractual clauses between the Polish franchisor or franchisee and the data importer from the third country. Standard contractual clauses have been issued by the European Commission as data transfer contract models. Following the decision in Schrems (C-362/14) invalidating EC decision 2000/520/WE on the Safe Harbor Framework, it is no longer possible to rely on Safe Harbor as a legal basis for data transfer to the United States. Its successor, the Privacy Shield Framework, entered into force in 2016; however, its validity is already being challenged.
Although the Data Protection Authority is now authorised to impose fines of up to €20 million, or up to 4 per cent of the offender's total global turnover from the preceding financial year, as of November 2018 no fine has yet been imposed.E-commerce
Mandatory provisions of Polish law protect consumers in business-to-consumer (B2C) relations. The protection exists regardless of whether the business is located in Poland. For example, if the business is located in Germany, it is obliged to follow Polish mandatory provisions protecting consumers if these are more restrictive than German law.
As an EU Member State, Poland has implemented the New Consumer Directive, which provides consumers with, inter alia, the right to withdraw from distance sales agreements within 14 days of signing and imposes obligations on e-businesses to appropriately inform consumers of relevant information.
B2C companies have to be mindful of 'abusive clauses', which cannot be included in standard agreements with consumers. Abusive clauses concern, for instance, limitation of liability of the service provider or seller towards consumers, and exclusive jurisdiction of the court applicable to B2C e-business. Clauses that the courts have held to be abusive (in cases initiated before April 2016) are contained in a register of abusive clauses, which currently contains more than 7,300 clauses. In April 2016, a legislative amendment came into effect whereby the Office of Competition and Consumer Protection Authority, rather than the civil courts, is competent to decide whether specific clauses are abusive (all decisions are available on the Office of Competition and Consumer Protection Authority website). The rationale behind the amendment is, inter alia, to curb the practice of suing entities as a form of business model. The regulator also has the authority to impose fines amounting to up to 10 per cent of the business's turnover as a maximum penalty.