With a slight lag of two months, on 11 March, the Polish President signed the bill amending Intellectual Property Law ("IP Law") which is scheduled to enter into force one day following its publication. The broad changes were brought about by the implementation of the EU Trademark Directive 2015/2436 ((EU) Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of Member States regarding trademarks) (the "Directive").
The wide-ranging EU provisions, aimed at updating, developing, centralising and further harmonising the existing regulations, tackled the most intricate issues underlying trademark law, i.e. among others, trademark definition, filings and renewals, absolute and relative grounds for refusal, guarantee and collective marks, licensee rights, trademark infringement, trademark use (and non-use as a defence in invalidation proceedings) and some procedural aspects.
This article outlines the key reforms adapted by Polish legislators based on the mandatory provisions of the Directive, with a special emphasis on certain benefits of the new regulation for entrepreneurs and companies interested both in registration of marks and protection of their existing trademarks.
The end of the graphic representation requirement
First and foremost, the new IP Law provides that a sign no longer has to be represented graphically to be considered a trademark for the sake of its registration.
Therefore, it will now be possible to register a colour or shape (the issue of registering a sign comprising a smell was recently subject to a negative consideration of the EU Court of Justice) as well as a multimedia sign (e.g. sound) without the need to depict it as a visible 2D image.
Instead, the new law stipulates that the sign must be described in a sufficiently clear and precise way.
The provisions in force enumerate an exemplary list of signs that can be registered as a trademark, adding new examples such as digits, letters and colours.
Absolute and relative grounds for refusal
Since most of the provisions for refusal of protection rights for trademarks (registration of trademark) cover and reflect the regulations provided for in the Directive, there was only a need for a slight amendment which authorises a person exercising rights from designation of origin or geographical indication to prohibit the use of a later trademark.
Redefinition of collective and guarantee trademarks
On the other hand, a broad regulation on collective trademarks (attributable to any organisation being a legal person established to protect the interests of entrepreneurs) and guarantees (intended to distinguish the trademark owner's certified goods from its non-certified goods) significantly amends the previous provisions comprising three articles in principle referring to other trademark provisions.
From a business perspective, the new regulation on guarantee trademark is interesting, especially as it allows a registration right to be granted for signs or indications which may serve to designate the geographical origin of the goods or services (which, as a rule, constitutes an absolute ground for refusal of "regular trademarks").
The application of a guarantee trademark must be supplemented by regulations governing its use, which are further examined by the Polish Intellectual Property Office subject to its compliance with public policy or to accepted principles of morality. Apart from this obligation and other absolute and relative grounds for refusal applicable to trademarks, the registration right is refused if there is a risk of trademark users being misled, in particular if it is likely to be understood as something other than a guarantee mark (accordingly, new grounds for trademark revocation result from the illegal use of the collective trademark, including an unlawful change of the regulations governing its use).
Bringing international standards to international trademarks
The existing discrepancies in the Polish procedure for recognising international trademarks needed to be quickly adapted to the standards resulting from the Madrid Agreement concerning the International Registration of Marks and the Protocol thereto.
Finally, the new provisions make recognising international trademarks faster and easier. The Polish Intellectual Property Office will now be obliged to announce the designation of Poland in the international registration immediately after receiving such information from the International Bureau.
Consequently, it will now be possible for the Polish Intellectual Property Office to simultaneously send notifications on: the absolute grounds for refusal (examined ex officio) and the notice of opposition (if any), which will significantly accelerate the whole process. The Polish Intellectual Property Office will henceforth serve any of its decisions directly to the trademark owner.
Simplifying the procedure for filing opposition and registration renewal
Two major changes regarding the notice of opposition procedure merit special attention, namely: (i) the entitlement of a person exercising rights from a protected designation of origin or geographical indication to file a notice of opposition, and (ii) the removal of costs between the parties in case the proceedings are discontinued.
Any trademark owner will welcome the introduction of the new registration renewal procedure. Instead of filing a new motion accompanied by a renewal decision of the Intellectual Property Office every 10 years, it will now suffice for the trademark owner to pay the renewal fee. Moreover, the Intellectual Property Office will send a reminder of the forthcoming expiry of the registration.
Using the sign as a company name no longer favoured and new regulation on trademark infringement
The new law puts an end to the firmly established priority right of entrepreneurs to use a sign to designate their business through a trade or company name.
The trademark owner will now have the right to prohibit the use of an identical sign as a trade or company name.
Therefore, as a further consequence, the new law adds new examples of acts constituting an infringement, namely using a sign as a trade or company name or using a sign in illegal comparative advertising.
The new law addresses the protection of trademarks issues in greater detail by extending the list of infringement acts to, among others, (i) preparatory acts in relation to the use of packaging or other means, (ii) reproduction of trademarks in dictionaries, (iii) trading by any third parties of goods from third countries and bearing (without authorisation) an identical trademark.
A significant change not derived from the Directive but directly inspired by the judgment of the EU Court of Justice in case C-494/15, grants the right to also bring claims against any person who provided services used in the infringement of a trademark (unless the person is not liable under the relevant provision of the Law on Electronic Services). It is worth noting that the amendment was in particular intended to affect, e.g. the owners of trade fair halls where counterfeit goods are sold.
In addition, the amended law explicitly provides for the liability of intermediaries for trademark infringements and clarifies that the existing criminal regulations and measures should also be applied against counterfeiters of EU trademarks (an issue which has so far raised many doubts).
Finally, there are new provisions protecting the rights of the owner of a later trademark, i.e. an exclusion of the right to prohibit the use of the later trademark (in infringement proceedings) where that later trademark would not be declared invalid, and a corresponding lack of such a right on the part of the owner of a later trademark.
New procedural licensee rights
The rights conferred to trademark licensees have been significantly expanded. Thus, according to the new provisions, a licensee is authorised to bring a case against the trademark infringement upon the trademark owner's consent (unless the licence agreement provides otherwise).
However, an exclusive licence-holder has the right to bring proceedings for infringement without prior consent if the owner fails to bring infringement proceedings himself in due time.
Non-use as a defence in invalidation proceedings
A hitherto missing prerequisite precluding the invalidation of a registered trademark now requires that a lack of distinctive character or of reputation of an earlier trademark on the date of application for a registration of a later trademark prevents the owner of the earlier trademark from seeking invalidation.
The current requirement that a claim of non-use may only be raised during invalidation proceedings together with an application for revocation has been replaced with the requirement that the owner of the earlier trademark must furnish proof of use during the five-year period (preceding the date of the application for a declaration of invalidity) upon the plea raised by the owner of a later trademark. Moreover, the proof of use must relate to the goods and services to the extent they are cited as justification for the invalidation application.
On the contrary, a trademark could not be invalidated if prior to filing an application, a similar or identical earlier trademark was itself subject to invalidation proceedings.
All these provisions will apply to EU trademarks.
The provision regarding the date of revocation has also been altered. Up until now, trademark protection was revoked on the day when an event leading by force of law to revocation occurred. According to the amended bill, as a rule, revocation is declared according to the date of submission of the application for revocation. However, upon a party's request, the Patent Office may set an earlier revocation date, i.e. a day on which one of the grounds for revocation occurred.
Finally, the new law provides for the establishment of a posteriori invalidity or revocation of a trademark for which EU trademark seniority is claimed, provided that the trademark has been surrendered or allowed to lapse and that invalidity or revocation could also have been declared at that time.
Overall, the specific objectives of the amendment bill were to render the Polish regulation complete and fully harmonised with the Directive. It should be noted that the existing Polish intellectual property law has so far been fairly consistent and coherent with the main provisions of the Directive.
Therefore, the above-described changes have further refined the current law, rendering it in line with the EU objectives, comprising in particular: simplification of the extension procedure and granting additional rights for trademark owners (new non-use defences); abandonment of the graphical representation requirement; redefinition of guarantee and collective marks; extended licensee rights; and extension of acts of infringements (with additional protection against counterfeits).
Thus, the transposition of the Directive by the adopted bill should generally be welcomed by both Polish entrepreneurs (trademark owners) and legal practitioners, especially in light of the broad and thorough consultation process that the legislator undertook among the interested groups of stakeholders.
In the end, the new provisions will as usual require a vast number of legal professionals on whose competence and expertise entrepreneurs will rely to familiarise themselves with the new regulations and avoid the possible ambiguities and pitfalls which may arise in practice.
By Natalia Tokarz, Associate Schoenherr