New Polish regulation supports the trademark owners in execution of their rights

The recent amendment of the Polish Industrial Property Law, which has now entered into force, introduces significant changes to trademark regulations. In some areas it improves, strengthens and expands protection and in others it offers some surprising solutions, particularly in the context of existing practice. The amendment implements Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015, which is aimed at harmonizing the laws of EU Member States relating to trademarks (Official Journal of the European Union L 336 of 23.12.2015, p. 1).

1. New forms of trademarks

Under the new regulations, graphical representation is no longer a requirement. Now, any sign may be a trademark if it is capable of distinguishing the goods or services of one undertaking from those of other undertakings and if it can be represented in the Polish Patent Office (PPO) register in a manner which makes it clear what is the subject of the protection granted to its owner. A trademark may be composed of particular words, including personal names, or designs, letters, numerals, colors, the shape of goods or of the packaging of goods, or sounds. To this list we may add other hitherto unknown types of signs such as motion marks and many others, which will probably be invented in response to market needs.

An issue of some concern is the technical capability of the Polish Patent Office (PPO) registers, which are kept in the form of books and records in electronic databases. The PPO’s servers are not perceived as giving 100% certainty as to the permanence of records (as they are given to various types of failures), which means that if a trademark can only be expressed in an electronic form there is a risk that the record may become damaged while the potentially endless period of protection of the mark.

2. Obligation to evidence genuine use of the trademark in court proceedings

The amendment sanctions the existing practice of requiring a right holder to demonstrate the actual use of a trademark in court proceedings. Until now, this had applied only to proceedings before the PPO.

A trademark owner cannot prohibit the use of the trademark or a similar sign by a third party if it has not been genuinely used during the previous five years. Upon the request of the defendant the trademark owner must provide evidence that the trademark had been genuinely used during the five years before the third party filed the lawsuit..

3. Broader rights for licensees

Under the new regulations, unless the licence agreement stipulates otherwise, licensees are now able to file a claim for trademark infringement – with the consent of the trademark owner. In the case of an exclusive licence, the licensee may file a claim for trademark infringement even if the trademark owner does not give its consent within a reasonable period of time.

Furthermore, in order to pursue compensation for any damage incurred, the licensee may join a trademark infringement case initiated by the trademark owner.

4. Protection against preparatory actions

The amendment also introduces protection against preparatory actions related to the use of packages or other things that contain a trademark, e.g. packaging, labels, tags, security or authenticity features or devices, or any other things to which a trademark is affixed. If such articles could be used in relation to goods and that use would constitute an infringement of the trademark owners’ rights, the trademark owner will have the right to prohibit the following acts if they are carried out in the course of trade:

(a) affixing a sign identical or similar to the trademark on packaging, labels, tags, security or authenticity features or devices, or any other things to which the trademark may be affixed;
(b) offering or placing on the market, or stocking for those purposes, or importing or exporting, packaging, labels, tags, security or authenticity features or devices, or any other things to which the trademark is affixed.

This part of the amendment will undoubtedly facilitate the fight against counterfeits, which are often imported into Poland in parts.

5. Liability of intermediaries

Another change that strengthens trademark protection is the regulation concerning the liability of intermediaries for infringing trademark protection rights. This regulation results, among other things, from the judgment of the European Court of Justice of 7 July 2016, C-494/15, in which the scope of the notion of an intermediary whose services are used by a third party to infringe an intellectual property right includes tenants of marketplaces who sublet sales points in those marketplaces to individual traders, some of whom use their sales points to sell counterfeits.

As a consequence, under the new amendment, claims can be filed against an entity whose services are used by a third party to infringe an intellectual property right. However, this regulation does not concern the providers of electronically supplied services, as their liability is governed by separate provisions. This will undoubtedly boost trademark protection, as entities responsible for infringements have been protecting themselves by using intermediaries, who – until now – could not be held liable (and therefore were not interested in cooperating with trademark owners).

6. Protection of a trademark during the transit of goods through the territory of Poland

Another beneficial amendment for trademark owners is the extension of trademark protection to goods in transit. The right to prohibit third parties from importing into Poland may now be exercised even if the goods are not released for general circulation, in the case in which the goods or their packaging come from third countries and bear a trademark (without the owner’s consent) which is identical to the trademark registered in respect of those goods or which cannot be distinguished as to its essential characteristics from that trademark.

This right expires if proceedings aimed at establishing whether the right to a registered trademark has been infringed (instituted in accordance with notifying regulation) or the owner of the goods proves that the trademark owner has no right to prohibit the introduction of the goods in the country of final destination. Clearly, the question of whether one trademark can be distinguished from others in terms of its essential characteristics will require the development of case law.

In addition to the significant changes to the Polish Industrial Property Law described above, it should also be noted that another key amendment is currently being processed by the Polish parliament. Among other things, it concerns the claim for providing the information which have been ruled partly unconstitutional by the Constitutional Tribunal. Therefore, more news can be expected soon from Poland