As of 15 April 2016, Polish examination system for granting trademark protection rights was changed into the opposition system. The full examination system was changed into the opposition system with no ex officio examination of the relative grounds for refusal.
The new registration procedure may be divided into the following steps: The first step is the formal examination. Once filed, the PPO will examine the trademark application only in terms of formal issues. At the same time the application will be published in the PPO official database. Third parties may file remarks based on the absolute ground of refusal from the publication date up to the registration date. After that the essential examination takes part. PPO will examine the absolute grounds for refusal, without checking potential collisions with prior trademarks. If the PPO decides, for example, that the applied sign may not be a trademark, is devoid of a sufficiently distinctive nature or was applied in bad faith, it will dismiss the application. If no absolute ground of refusal is found, the trademark application will be published in the Polish Patent Office Bulletin (approx. 2 months from the filing of the application). If no opposition is filed or the opposition was dismissed, the decision on granting the protection should be issued.
Third parties may file an opposition within 3 months of the Polish Patent Office Bulletin’s publication. The opposition procedure is separate from the main application proceeding and requires a separate decision. The main rules of the new opposition system may be described as follows:
- The opposition motion should indicate the application against which the opposition is entered and the earlier trademarks, which are the bases of the opposition;
- The opposition fee in the amount of PLN 600 (approx. EUR 150) should be paid;
- The opposition may be based just on the relative grounds of refusal;
- The PPO will notify the applicant about the filing of an opposition without delay;
- The PPO will set a 2 month cooling off period which may be extended to 6 months, which will precede the actual inter partes phase and will be a chance for the amicable resolution of the dispute;
- If no agreement is concluded within the cooling off period, the written phase starts and the case will be decided upon by the PPO. The PPO will instruct the applicant to respond to the opposition within the prescribed period, addressing charges, facts, and evidence;
- The applicant has the right (no obligation) to file a defence, where a non-use charge against the earlier trademark on which the opposition was based may be raised. If the non-use complaint is justified, the PPO will dismiss the opposition.
- The defence is forwarded to the opponent, who has the right to file a reply to the applicant’s defence and present new evidence within the prescribed period;
- The applicant has the right to respond to the opponent’s writ within the period prescribed by the PPO;
- During the written phase, all evidence must be presented with the first writ so as not to be dismissed;
- After the opposition examination, the PPO will issue a decision dismissing the opposition or recognising it in whole or in part. If the PPO accepts the opposition as justified, the trademark application will be dismissed.
- The party that does not accept the PPO’s decision, may file a motion for the re-examination of the case. The new facts or evidence may be presented only if the party proves that it was not possible to present the evidence earlier or there was no need to present it earlier. The board of appeal will examine the decision; the outcome may be appealed to the administrative court.
The opposition which: (i) is not filed on time; or (ii) does not name the trade mark application being opposed; or (iii) does not mention the earlier right; should be left non-examined by the PPO. If the opposition does not meet the formal requirements, the PPO will set a time limit in which the opposing party is obliged to address the deficiencies, on penalty of the procedure’s discontinuation.
In Poland there is no formula to file the notice of opposition. The opposition is a regular writ starting the procedure where all the facts, statements and evidence should be included. As the PPO is bound by the legal and factual basis of the opposition, it is very important to provide the Office with relevant argumentation and evidence.
The opposing party should provide the PPO with arguments and evidence in the opposition motion. This means that the opponent should gather all evidence at the beginning of the case. Bearing in mind that all the documents must be translated into Polish, this may be very costly, especially with renown trademarks. It should also be noticed that in the situation in which there is no agreement during the cooling-off period and applicant will file no defence, the opposition motion may be the only writ in the written phase of the opposition proceedings. The new regulation does not ensure the opponent the possibility to file an additional writ to complete its statement. The PPO may, but is not obliged to, ask the opponent for any additional writ or evidence. Therefore, if (i) the opposition does not include full argumentation and evidence, (ii) there is no agreement and (iii) the applicant does not file any written defence; there is a risk that the PPO will make a decision based on the incomplete opposition motion. To avoid such situations, in most cases the PPO has a practice that in the situation in which an applicant files no defence, the PPO will call the opponent to complete the argumentation and evidence of the opposition motion. As there is no statutory obligation, it seems to be safer to file an opposition motion with full argumentation and evidence.