Answer ... Under Polish law, in order to be valid, a licence agreement must be concluded in writing.
No further legal requirements apply regarding the subject of a licence agreement, including in relation to the quality control of trademarked goods; therefore, such terms should be specified in the provisions of the licence agreement.
Moreover, under the Polish Industrial Property Law, an obligation of quality control applies only with regard to the licensee, which can be sued by the licensor in case of non-compliance with any provisions of the licence agreement in relation to such obligation. The law does not recognise any obligations of the licensor in relation to quality control. The licensor may also pursue claims against a licensee that fails to comply with other provisions of the licence agreement, such as those concerning:
- the duration of and territory covered by the licence agreement;
- the form of the licensed trademark; and
- the types of goods that may be labelled with the mark.
By contrast, there are no provisions on claims which may be brought against a licensor for breach of the licence agreement; therefore, in such cases the general rules of the Polish Civil Code will apply. A licensor that breaches any quality control obligations under the licence agreement, or that does not comply with other provisions of the licence agreement, shall be obliged to redress the damage arising from such non-compliance.
As such, the consequences of breach of a licence agreement, including any quality control obligation, are determined by the rights of the injured party to pursue relevant claims. There is no general rule that breach of particular requirements will result in invalidation of the licence. Nevertheless, under the principle of freedom of contract, the parties can decide that breach of particular requirements shall result in invalidation of the licence.
Answer ... There is no obligation for a trademark licence to be recorded with the Polish Patent Office (PPO).
However, it is advisable to record an exclusive licence, as the licensee may then enforce claims in the event of infringement to the same extent as the trademark owner, unless the licence stipulates otherwise.
In order to record a licence, a request must be filed with the PPO alongside the licence agreement.
Answer ... Under Polish law, a licensor cannot lose its rights in a trademark by failing to comply with its obligations under the licence. Non-compliance with its obligations will trigger an obligation on the part of the licensor to redress any damage caused as a result.