There are plenty of recent amendments to the Polish Industrial Property Law (IPL), however, one is of the great importance. As of 15 April 2016, the system of opposition proceedings before the Polish Patent Office (PPO) will come into force.
The current procedure requires the PPO to perform a full examination (ex officio) of the applied mark for absolute and relative grounds of refusal. Accordingly, the PPO has to examine collisions between the mark applied for and the earlier marks, which in consequence protracts the procedure. For a long time the system was widely criticized as ineffective comparing to the CTM one.
The new regulations allow the holder of the earlier trade mark or the holder of an earlier personal right (interest) or property right to oppose a trade mark application within 3 months from the date the notice of application of the questioned sign was published, on the following grounds:
- the use of the applied trade mark infringes personal or property rights of third parties;
- the applied trade mark is identical to an earlier trade mark that was registered for identical goods and/or services;
- the applied trade mark is identical or similar to an earlier trade mark that was registered for identical or similar goods and/or services, if there is a risk of misleading the public, which includes in particular the risk of associating the applied sign for with the earlier trade mark;
- the applied trade mark identical or similar to an earlier renowned (reputed) trade mark that was registered for any goods or services, if the use of the applied trade mark would bring the applicant without due cause unfair advantage or be detrimental to the distinctive character or the repute of the earlier trade mark;
- the applied trade mark is identical or similar to a trade mark, which before to a priority date, was widely known and used in Poland as a trade mark intended to designate identical or similar goods and/or services coming from another person, if there is a risk of misleading the public, which includes, in particular the risk of associating the applied trade mark with the well-known mark (Article 1321 ss. 1-4 of the IPL).
The opposition may also be based on a trade marks application with earlier priority, if the right of protection is granted. Until the earlier proceedings become final, the opposition proceedings are adjourned.
For applied trade marks that are subject to the notice of application which is published in the Official Bulletin of the Polish Patent Office, the PPO prepares a notice of the existence of identical or similar signs with earlier priority that were applied for the same or similar goods or services, and communicates it to the applicant. This notification serves only for informational purposes and is not binding (Article 1461 of the IPL).
The regulation on observations as to the existence of grounds that may cause a right of protection to be denied, has been removed from the IPL (former Article 143 of the IPL), however, third parties may submit their comments as to the existence of circumstances related to the absolute grounds of refusal (Article 1461 of the IPL).
Letter of consent
The amendments also introduced the long-awaited institution of letter of consent. If the holder of the earlier trade mark or the holder of an earlier personal or property right express written consent to the grant of the right of protection for the later signs, the opposition must be dismissed (Article 133 of the IPL).
See also "Poland: a letter of consent is not enough says the Court".
The PPO should promptly notify the applicant that the opposition was filed, and informs the parties about the possibility of amicable settlement within two months from the date of notification. The deadline may be extended to 6 months at the joint request of the parties.
The opposition and other writings have to be filed along with their copies, for the other party. Materials and documents in a foreign language have to be submitted together with their translations into Polish. The PPO, by order, leaves unexamined opposition that:
- was submitted after the deadline or
- does not indicate the trade mark application against which is entered or
- does not indicate the earlier right (Article 15217 of the IPL).
The opposition deadline cannot be restored. The applicant and the opponent are the only parties of the opposition proceedings. The President of the Patent Office appoints an expert for the examination of the opposition (Article 15218 of the IPL).
After the deadline, the PPO requests the applicant to respond to the opposition within the prescribed period. In response to the opposition, the applicant files statements, allegations and cites all the facts and evidence in support. The applicant may inter alia raise the argument that the earlier trade mark was not genuinely used. If this allegation is upheld, the PPO rejects the opposition. The PPO will skip any statements and evidence that have not been filed within the prescribed period, unless the party can demonstrate that it was not possible or that the necessity to provide such arguments or evidence arose later (Article 15219 of the IPL). The PPO examines the opposition within its scope and is bound to the legal basis indicated by the opponent (Article 15220 of the IPL).
The request for rehearing
The decision issued in the opposition proceedings are subject to a rehearing. Such case is to be decided by Adjudicative Board of the Polish Patent Office. New facts and evidence can be brought only if their filing was not possible before or the necessity to provide such arguments or evidence arose later. The PPO carries out hearings on its own motion or at the request of a party, if it deems it to be justified (Article 15222 of the IPL).
Recent changes in invalidation proceedings
The requirement of legal interest (locus standi) in bringing the invalidation proceedings was removed from the IPL. Existing case law indicated that there were great difficulties of interpretation with regard to this condition.
See also "Poland: standing in trade mark proceedings".