Poland Introduces Trademark Opposition System

Several important amendments to the Polish Industrial Property Act have recently entered into force.

The amendment that entered into force on April 15, 2016 introduced significant changes to the trademark registration process, namely the Polish Patent Office (PPO) will no longer be conducting the ex officio examination of trademark applications on relative grounds, as the opposition system was introduced.

The PPO will be examining trademark applications only with respect to formal issues and absolute grounds for refusal, and not with respect to potential conflicts with prior trademarks. The PPO will, however conduct searches on relative grounds, i.e. earlier national and international trademarks designating Poland, and issue and send search reports to applicants. However, these reports are intended for informational purposes and are not legally binding.

The PPO will not be sending notifications on new trademark applications to owners of earlier rights; the prior-rights owners will have to monitor trademark applications on their own.

Once a trademark application is published in the PPO Bulletin, the prior-rights owners can file an opposition within three months from the publication date, should they find that the trademark application is identical or similar to their earlier rights. The opposition should be fully substantiated, as no formal opposition notice is available.

Once the opposition is filed, the PPO will inform the parties about the possibility of amicable settlement and set a two-month ‘cooling off’ period that could be, at the joint request of the parties, extended up to six months. If no agreement is reached within this period, the PPO will ask the applicant to defend its application against the opposition. The applicant should then provide all arguments and evidence to dismiss the opposition. Also, at this stage only, the applicant may request that the opponent submits evidence to prove the use of the earlier mark.

When the PPO issues a decision, the parties can file a motion for re-examination within two months, if they are not satisfied with the outcome of the proceeding.

It is expected that these changes will significantly shorten the trademark registration procedure, from approximately 18-24 months to approximately six months. Also, the non-used earlier trademarks will no longer automatically represent obstacles for new registrations, but only if their owners invoke them in opposition proceedings.

Moreover, the amendments introduce a possibility of filing a request to divide a trademark during opposition or invalidation proceedings.

Finally, under the recent amendments, in addition to business entities, natural persons can also jointly own trademarks.

By: Katja Hafner

For more information, please contact Katja Hafner at our Slovenia office.