E-News No.45

E-News No.45

Important changes to Trademark Examination and Opposition system in Poland by Sławomir Mazur (POLSERVICE Patent and Trademark Attorneys Office- Poland)

Recent changes in Polish IP law regarded mostly patent and design field. However, they opened way for changes also in trademark field. The trademark regulations have been significantly modified and a completely new examination and opposition procedure enters into force on April 15, 2016.

Poland has remained one of few countries in which the Patent Office examines on both absolute and relative grounds for refusal for each trademark application. The result is that the examination by the Office is time-consuming and, in most of the cases, at least one year passes between a trademark filing and the registration decision. Additionally, quite often the Patent Office cites earlier rights even if there is no real conflict between the companies. Finally, in Poland we currently have a post-registration opposition system, which means that an opposition may only be filed after the full examination and registration of a trademark. If the opposition is successful, the trademark registration is invalidated.

The new changes in trademark regulations totally redesign the trademark examination procedure which is changed from the aforesaid full examination system to the opposition system. Briefly the basic rules of the new system are as follows:

  • Within two (2) months after receiving a new trademark application, the Patent Office makes it available in an on-line database. This disclosure is not deemed as the official publication.
  • After the disclosure, anyone can file so called third-party observations, where the letter of observations may be based only upon absolute grounds for refusal, including bad faith.
  • The letter of observations does not start any proceeding and is not binding on the Office. It is for informative purposes only while it may have an influence on the final decision.
  • A trademark application is officially published in the Patent Office’s Bulletin only if no absolute grounds for refusal are found. If the Office finds absolute grounds, it notifies the applicant who may respond the examiner’s objections.
  • An opposition may be filed within three (3) months of the official publication in the Bulletin.
  • The opposition may be based only on relative grounds for refusal; the opponent may evoke only its own earlier rights. The opposition must include a statement of grounds.
  • Once the applicant receives the opposition from the Office, a two (2) month cooling-off period starts, which may be extended only once for four (4) additional months. If within this period the parties do not reach an agreement, the opposition (inter partes) phase starts.
  • All arguments and evidence must be provided by the parties within the deadlines appointed by the Office, otherwise they will be disregarded. In defense to the opposition, the applicant may bring up a claim of non-use of the trademarks on which the opposition is based.
  • The general rule is that the opposition procedure is only in writing, however, at second instance a hearing may be ordered under certain circumstances. At first instance one expert ponders the opposition, while at second instance it is a panel of three experts.

These new rules will apply only to trademarks filed for registration starting from April 15, 2016, while trademarks filed prior to this date, will be subject to current regulations.

There are also other important changes to trademark related inter partes proceedings:

  • It is no longer necessary to prove so called legitimate interest to start trademark invalidation or trademark non-use cancellation proceedings.
  • If an opposition action is finally dismissed, the opponent cannot start a trademark invalidation action based on the same grounds as the opposition.