The recently published draft of the Act amending the Industrial Property Law (14 November 2017) introduces fundamental changes in the provisions on trademark protection. Currently, the bill is being agreed upon in the Council of Ministers. The new regulations primarily result from the need to implement Directive of the European Parliament and of the Council (EU) 2015/2436 of 16 December 2015 aimed at approximating the laws of the Member States relating to trademarks, and taking into account the judgment of the Court of Justice of the European Union in Case C-494/15.

One key amendment relates to the definition of a trademark. The draft removes the requirement for a graphic representation of the mark, replacing it with a new criterion; according to which the mark should be presented in the trademark register in such a way that the subject of the protection can be clearly and accurately determined. Therefore, entrepreneurs will be able to register so-called non-conventional marks which include, among other things, fragrances or tactile markings.

The bill also introduces other developments. A trademark owner will no longer be obliged to file a request for an extension for the protection of their trademark (renewal). It will be sufficient for entitled parties to pay the appropriate fee for the next protection period. Moreover, the Patent Office will notify the entitled of any impending payment deadline.

The bill also makes it possible to transfer trademark rights to only some of the goods or services which are covered by the trademark, while the trademark rights covering the remaining goods or services remain with the original owner. Currently, this right can only be applied to goods or services for which a mark was registered which are not of the same type.

Another important change stipulates the right to enforce trademark rights by the licensee in the case of an infringement of the right to a trademark. The licensee will be able to bring about an action on their own accord after having obtained consent for this action from the right holder, unless the license agreement states otherwise. On the basis of the current provisions, this possibility is only given for the exclusive licensee disclosed in the register.

We expect that, the bill will be passed before the end of 2018 but will report on further developments here.