Amendments to the Polish Industrial Property Law on trademarks

by Klaudia Blach-Morysinska and Maciej Bugalski from ZM Legal (Zaborski, Morysinski Law Office – Poland)

On March 16, 2019, the amendment to the Polish Industrial Property Law came into force adapting Directive 2015/2436, harmonizing the laws of the Member States regarding trademarks.

The most important change is the abolition of the requirement of graphical representation of the trademark submitted for registration. Under the new provisions, a trademark may be any indication, if it is possible to present it in a register in a manner allowing the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. This opens up an easier way to register many unconventional characters such as holographic trademarks, sound trademarks and multimedia trademarks.

The amendment also introduced new regulations regarding collective trademarks and guarantee trademarks, further specifying the method of obtaining protection for such trademarks, their cancellation and the manner of their use.

Another important change concerns the trademarks renewal procedure. From now on, it is enough to pay the fee for the next period of protection to renew the trademark. The Patent Office of the Republic of Poland will inform the trademark owners about the forthcoming date of payment of the fee for the next protection period.

The amendment also introduces changes to the provisions regarding international trademarks, which are consistent with the provisions of the Madrid Protocol and Agreement, and at the same time will enable faster and simplified processing of applications for international trademarks.

The amendment gives the possibility of pursuing claims for infringement of trademark rights not only to its owners, but also, to a greater extent than before, to licensees.

The amended bill expanded the protection of trademarks to include, inter alia:

1) the right to prohibit preparatory activities related to the use of packaging or other means;

2) prohibition of reproduction of registered trademarks in dictionaries, encyclopedias or other similar information collections;

3) the seizure of counterfeit goods in transit; and

4) the protection of the rights of the owner of a later registered trademark as a defense in infringement proceedings.

The rights of the trademark owners are also extended, as the group of entities that will be responsible for the trademark infringement has grown. In addition to the producer and distributor of goods, liability may also be applied to entities whose services were used in the infringement of the trademark.

In conclusion, it shall be noticed that Polish Industrial Law was consistent and coherent with the main provisions of the Directive. The amendment fully harmonized it with the Directive. The regulations aiming to speed up the procedure, simplify the renewals or strengthen the protection shall make the registration and protection more efficient.

The Polish Group of AIPPI took an active part in working on the Act amending Polish Industrial Law. At the preliminary stage we prepared and presented broad comments and opinion regarding the proposed amendments. Our voice was present during the public consultation. Polish AIPPI Group representatives attended numerous meetings in the Parliament and took active part in the discussion. The Polish Group of AIPPI filed its comments and amendment propositions to the wording of the regulation, which were accepted by the legislator and introduced into the wording of the new Act.