On August 22 2001 a new law regarding industrial property protection came into effect in Poland. The main legal act regulating the protection of inventions, utility models, industrial designs, trade marks, geographical indications and topography of integrated circuits is the Law on Industrial Property of June 30 2000 (Law Gazette of 2001 No 49, Item 508). The law introduces a number of important changes in the trade mark registration procedure.
The registration procedure starts with the filing of a proper trade mark application. One can apply for registration of both individual trade marks and collective trade marks. A separate category is guarantee trade marks. Pursuant to the law a trade mark can be any sign capable of being represented graphically provided that such a sign is capable in the course of trade of distinguishing the goods of one undertaking from the same kind of goods of other undertakings.
The Polish Patent Office conducts a complete examination of a trade mark's registrability. This means that the office checks not only whether there are absolute objections against registration of a mark but also whether the mark infringes third parties' rights. With a trade mark registration the applicant obtains protection rights to the mark.
The new element of the trade mark registration procedure is publication about the trade mark application. The Polish Patent Office is obliged to publish such information six months after a trade mark application date. Only at that moment can a third party obtain data about a trade mark application. Also after the publication date the third party can file observations concerning a trade mark registration. Such observations can be filed with the Polish Patent Office within six months from the publication about a trade mark application. The Office is obliged to take these observations into consideration during the examination of a trade mark application. The Office, however, does not have to accept the observations and third party cannot make the Office accept them. It should be stressed that these formal observations can be filed with the Polish Patent Office with no limitations by any interested party.
Apart from the possibility of filing observations, the Polish law does not provide for any other ways in which third parties can participate in the application procedure. The party to the proceedings is always the applicant only. Also when a third party files the subject observations the party to the proceedings is exclusively the applicant.
However, after a trade mark is registered a third party can question the decision about registration. It can be done by filing with the Office an opposition against a trade mark registration or a request for cancellation of the right deriving from registration of the trade mark. One can file the opposition within six months from the date of publishing information about the trade mark registration. The request for cancellation can be filed any time after the trade mark registration. However, when the request is filed after five years from the registration date the right deriving from a trade mark registration can be cancelled only in specific circumstances, unless the right to the trade mark was obtained by the owner in bad faith.
Both an opposition and a request for cancellation can be based on the same grounds. Nevertheless, parties allowed to file the documents are different. Any interested party can file an opposition but only a party having a legal interest in cancellation can file the request. This individual interest must be presented in the request for a trade mark cancellation. The examination procedures of oppositions and requests are similar; a conflict between two parties with different, conflicting interests is being examined by an independent body. There are, however, differences between the two procedures.
There are many new regulations regarding trade mark protection rights. Many changes concern appeals from the Polish Patent Office's decisions and the legality of the decisions as examined by the Supreme Administrative Court. We will expand on those changes in next month's article.
