1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The main source of trademark rights is the Act on Industrial Property Law of 30 June 2000.
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark rights arise through both use and registration. The trademark owner should register its mark in order to enjoy the strongest protection possible. However, trademarks which are used in the course of trade but are not registered may also be protected - for example, under the Act on Combating Unfair Competition. Also, the Act on Industrial Property Law provides protection for unregistered well-known trademarks.
1.3 What is the statutory or other source of the trademark registration scheme?
The Act on Industrial Property Law of 30 June 2000 and the Regulations of the Prime Minister on the Filing and Processing of Trademark Applications of 8 December 2016.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
A trademark may consist of any sign which is capable of distinguishing the goods of one undertaking from those of others and which can be represented on the Trademark Register in a form which enables the protected subject matter to be clearly and precisely determined.
In particular, a trademark may be comprised of words - including a personal name - designs, letters, numerals, colours, sounds and three-dimensional shapes, including the shape of goods or their packaging.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
In order to function as a trademark, any designation or other identifier must be capable of distinguishing the goods of one undertaking from those of others.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
Designations or other identifiers that are not capable of distinguishing the goods of one undertaking from those of others cannot function as trademarks.
In particular, the following are ineligible to function as trademarks:
- designations that consist exclusively of elements that may serve in trade to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods;
- designations that consist exclusively of elements that have become customary in the current language and are used in fair and established business practices; and
- designations that consist of the form or other property of the goods, that result exclusively from the character of the goods, that are necessary in order to achieve a technical result or that significantly increase the value of the goods.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The registration process is governed by the Polish Patent Office (PPO) (www.uprp.pl).
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
The official fees are as follows:
- On filing:
- First class: PLN 450.
- Each additional class: PLN 120.
- On registration:
- Publication fee: PLN 90
- Registration fee for each class: PLN 400
3.3 Does the trademark office use the Nice Classification scheme?
Yes, Poland is a party to the Nice Agreement and the Nice Classification is applied in connection with the registration of trademarks in Poland.
3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
The PPO does not allow ‘class-wide' applications. The applicant must identify the specific goods or services for which the mark will be used. If the class headings are used, they are interpreted literally.
Furthermore, certain terms are considered vague and are not accepted without further clarification to specify the scope of protection. These are set out below:
- Class 6 – Goods of common metal not included in other classes;
- Class 7 – Machines;
- Class 14 – Goods of precious metals or coated therewith;
- Class 16 – Goods made from paper and cardboard;
- Class 17 – Goods made from rubber, gutta-percha, gum, asbestos and mica;
- Class 18 – Goods made of leather and imitations of leather;
- Class 20 – Goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics;
- Class 37 – Repair services;
- Class 37 – Installation services;
- Class 40 – Treatment of materials; and
- Class 45 – Personal and social services rendered by others to meet the needs of individuals.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
No, a bona fide intention to use the trademark for the goods or services identified in the application is not required in order to apply for registration.
The trademark should be put to genuine use for the goods or services covered by the registration for a period of five successive years once the decision to register has been issued, unless serious reasons for non-use exist. A trademark that is not put to genuine use for a five-year period may be vulnerable to cancellation due to non-use.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
No relative examination of trademark applications is conducted. An opposition system applies to the registration of trademarks in Poland.
3.7 What types of examinations does the trademark office perform other than relative examination?
Only formal requirements and absolute grounds for refusal are examined ex officio by the PPO.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
A mark is ineligible for registration if:
- the application has been filed in bad faith;
- the mark is contrary to public order or morality;
- the mark incorporates an element of great symbolic value (ie, of a religious, patriotic or cultural nature) whose use would offend religious feelings, sense of patriotism or national tradition;
- the mark incorporates a symbol of the Republic of Poland (emblem, national colours or national anthem); insignia of the armed forces, paramilitary organisations or police forces; a reproduction of Polish decorations, honorary distinctions or medals, military medals or military insignia; or other official or generally used distinctions and medals;
- the mark contains a symbol (armorial bearings, flag or emblem) of another country; the name, abbreviation or symbol (armorial bearings, flag or emblem) of an international organisation; or an official sign or hallmark of control and warranty adopted in another country, where such prohibition follows from international agreements;
- the mark contains an officially recognised sign used in the course of trade – especially a safety sign, quality label or legal hallmark – and may thus mislead the public as to the nature of such sign;
- the mark, by its nature, might mislead the public, in particular as regards the nature, quality or geographical origin of the product;
- the mark constitutes or is similar to the protected name of a plant variety and relates to a plant variety of the same or a related species;
- the mark contains geographical elements which, though literally true as to the territory, region or place of origin of the product, could mislead the public by falsely representing that the product originates in a different region which is famous for that product; or
- the mark is identical or similar to a registered geographical indication, name of origin, traditional name for a wine or geographical indication of a spirit.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
A third party can object to registration of a mark before publication of the application only on the basis of absolute grounds for refusal.
In such case so-called ‘observations' must be filed with the PPO, setting out the arguments concerning the objections raised on absolute grounds.
The party that submits the observations will not become a party to the proceedings and consequently will not be informed of any actions taken by the PPO in relation to the observations. The observations are also not legally binding on the PPO.
Once the PPO has received the observations, they are sent to the applicant, which is given a timeframe in which to submit its response. Upon receipt of this response, the PPO will conduct a further examination of the application.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
No. However, the trademark should be put to genuine use for the goods or services covered by the registration for a period of five successive years once the decision to register has been issued, unless serious reasons for non-use exist. A trademark that is not put to genuine use for a five-year period may be vulnerable to cancellation due to non-use.
3.12 How much time does it typically take from filing an application to the first office action?
It typically takes about two to three months from filing an application to the first office action. The length of this term depends on the backlog at the PPO.
3.13 How much time does it typically take from filing an application to publication?
It typically takes about two to three months from filing an application to publication. Publication may be delayed if the formal requirements have not been fulfilled or if the PPO finds absolute grounds for refusal.
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
If the Polish Patent Office (PPO) refuses to register a trademark, the applicant may file a request for reconsideration of the matter. This is examined by a different examiner at the PPO.
4.2 What is the procedure for appealing a trademark office refusal?
A request for reconsideration of the matter should be filed within two months of receipt of the PPO's decision. It requires justification and is subject to payment of an official fee.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
If, after reconsideration of the matter, the PPO sustains the refusal, the applicant may appeal the decision to the district administrative court within 30 days of receipt of the PPO's decision. Such appeal requires justification and is a subject to payment of a court fee.
5.1 Can a third party oppose a trademark application?
Yes, it is possible to file an opposition against registration of a trademark. The opposition must include the following information, among other things:
- the specification of the parties;
- an indication of the factual and legal basis for the opposition; and
- the reasons and scope of the opposition.
5.2 Who has standing to oppose a trademark application?
The owner of an earlier trademark or of an earlier personal or economic right, as well as anyone entitled to exercise the rights deriving from a protected designation of origin or a protected geographical indication.
5.3 What is the timeframe for opposing a trademark application?
The timeframe for opposition is three months from the date of publication of the application in the Official Bulletin. This deadline is non-extendable.
5.4 Which body hears oppositions?
Opposition proceedings are handled by the Polish Patent Office (PPO) examiners.
5.5 What is the process by which an opposition proceeds?
Upon receipt of an opposition, the PPO shall check it for formalities, notify the applicant and inform both parties of the possibility to settle the matter amicably. This cooling-off period lasts for two months and may be extended by up to six months on the joint request of both parties. Upon expiry of the cooling-off period, the PPO shall summon the applicant to submit its response to the opposition. In responding to the opposition, the applicant may request proof of use of the earlier mark on which the opposition is based. The PPO will then send the opponent the response to the opposition and request it to present its position within a specified timeframe. The applicant has the right to submit another pleading in response.
Any arguments and evidence not filed within the prescribed timeframe will not be considered by the PPO.
Once the parties have presented their positions, the examiner will decide on the merits and issue a decision either rejecting the opposition or declaring it to be justified in whole or in part. The losing party may be obliged by the PPO to pay the costs of the winning party.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
A decision issued in opposition proceedings may be appealed by filing a request for reconsideration of the matter, which is also examined by the PPO. The second decision issued by the PPO may be subject to judicial review by the administrative courts.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
Generally, unregistered trademarks enjoy protection under the Act on Industrial Property Law and the Act on Combating Unfair Competition. However, protection under the former act is granted only to well-known marks.
6.2 What legal rights are conferred by a trademark registration?
Trademark registration confers the exclusive right to use the trademark for profit or for professional purposes throughout the territory of Poland.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
There is no separate register for descriptive marks in Poland.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
According to the Industrial Property Law, anyone whose trademark is infringed may demand that the infringer cease the infringement and hand over any benefits unlawfully obtained, irrespective of fault. In the event of culpable infringement, the trademark owner may also redress any damage caused:
- in compliance with general civil law principles amounting to general losses and lost profits; or
- by paying a sum of money corresponding to the licence fee or other relevant remuneration that would have been due and payable to the trademark owner for use of the trademark.
In addition, in infringement proceedings the trademark owner may demand that:
- part or all of the judgment or information on the infringement be communicated to the public in the manner and scope specified by the court; and
- the court adjudicate on products owned by the infringer which have been unlawfully produced or marked, and on the means and materials used to produce or mark them - in particular, that it order their withdrawal from the market or destruction, or that the holder be awarded on account a sum of money in relation thereto.
7.2 What remedies are available against trademark dilution?
In the Polish legal system, there are no regulations that relate directly to remedies for trademark dilution. However, according to this doctrine, ‘dilution' of a trademark is understood as the conscious approximation of one's own trademark with a famous trademark, with the aim of exploiting or weakening the reputation of that trademark, regardless of the type of goods to which it relates. In light of the rules of social coexistence, a trademark application aimed at the dilution of the reputation of a third party's mark will be refused registration.
Moreover, the use of a designation that is identical or similar to a reputable trademark in the course of trade may be treated as trademark infringement and in some cases also as an act of unfair competition, consisting of the parasitic use of the reputation of a third party's trademark.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
7.4 What is the procedure for pursuing claims for trademark infringement?
The procedure begins with the filing of a statement of claim. Once the statement of claim is served on the defendant, the case becomes pending. The proceedings are conducted with the participation of the parties. The defendant may file a statement of defence prior to the first hearing. According to the adversarial rule, in general the parties are responsible for the submission of evidence. The parties should submit all assertions and evidence necessary to resolve the case at the first hearing, according to the principle of concentration of evidence. In civil proceedings, the principle of oral and written proceedings applies, which means that some procedural activities take place in oral form (eg, the hearing is conducted orally) and some in written form (eg, any appeal). The case is closed once evidence has been taken and the parties have been allowed to make their final speeches. Having closed the case, the court shall render a judgment based on the status quo at the time the case is closed.
Before filing a statement of claim, it is possible to file a motion for an interim injunction in order to secure the applicant's claims for the period of the main proceedings (eg, demanding the seizure of infringing goods). The court will decide whether to issue a preliminary injunction without hearing the parties.
7.5 What typical defences are available to a defendant in trademark litigation?
The typical defences are as follows:
- lack of similarity between the parties' marks;
- lack of similarity between the parties' goods and services; and
- lack of risk of confusion among consumers.
In the case of alleged infringement of an EU trademark, the defendant may also file:
- a counterclaim seeking invalidation or revocation of the EU trademark with the Polish court; or
- an application for invalidation or revocation of the EU trademark with the EU IP Office, followed by a motion for the suspension of proceedings before the Polish court.
In case of a national trademark infringement claim, an application for invalidation or revocation of the trademark may be submitted to the Polish Patent Office (PPO) only. This type of application is heard by the PPO through adjudication proceedings. Unlike registration proceedings, adjudication proceedings are adversarial in nature.
7.6 What is the procedure for appealing a decision in trademark litigation?
All judgments of the court of first instance may be appealed within two weeks of receipt, accompanied by a statement of reasons for the appeal. The counterparty must file its response to the statement of reasons within two weeks of being served with the appeal. The court of second instance will issue its judgment after a hearing.
An interim injunction ordered by the court of first instance may also be appealed. A complaint may be filed within one week of the relevant decision being served.
A final and non-revisable judgment rendered by the court of second instance may be appealed to the Supreme Court, as an exceptional remedy, within two months of receipt of the decision, accompanied by the statement of reasons for the appeal. In cases involving property rights, an appeal is admissible only where the amount on appeal is more than PLN 50,000. The Supreme Court shall allow an appeal if:
- a material legal question is involved;
- there is a need to interpret legal provisions which cause serious doubt or discrepancies in case law;
- the proceedings were invalid; or
- the appeal is clearly justified.
The Supreme Court shall hear appeals in camera, unless a material legal question is involved and the appellant moves for the appeal to be examined at a hearing. If an appeal is upheld, the Supreme Court in general shall set aside the decision and remand the case to the court which issued it or to another court of equal level.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The initial term of registration is 10 years from the filing date. The trademark may be renewed indefinitely thereafter for further 10-year periods from the last day of the previous protection period.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
Payment of the renewal fee is sufficient to renew a registration. No additional documents are required.
8.3 What are the grounds for cancelling a trademark registration?
A trademark registration can be cancelled on the request of a third party if the conditions required for registration were not satisfied (absolute grounds) or based on the existence of earlier rights.
Alternatively, a trademark registration can be cancelled if it has not been put to genuine use for the goods or services covered by the registration for a period of five successive years after the decision to register has been issued.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
There are no circumstances in which the Polish Patent Office (PPO) can cancel a registration on its own initiative.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
A third party may seek cancellation of a trademark registration by filing a request for invalidation or cancellation due to non-use.
Both of these requests should be filed with the PPO and are examined by the Adjudicative Board of the PPO.
Upon receipt of the request for invalidation or cancellation, the PPO shall check it for formalities and then send it to the trademark owner, which must respond accordingly and file evidence of use within a specified timeframe. The PPO will then set a date for a hearing, at which the parties can additionally exchange arguments. Depending on the case, there may be more than one hearing.
Once the parties have presented all arguments and evidence, the case is closed and a decision is announced either during the final hearing or, in complicated cases, within a few weeks thereafter. A written decision with a full justification is issued after the hearing. Within 30 days of receipt of the decision, the parties have a right to appeal it before the district administrative court.
8.6 What is the procedure for appealing a decision cancelling a registration?
A decision to cancel a trademark registration may be appealed before the district administrative court within 30 days of receipt. Such appeal requires a justification and is subject to payment of a court fee.
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
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.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
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.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
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.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
A foreign trademark which is not registered in Poland can be enforced under the Act on Combating Unfair Competition.
Under Polish law, a designation of goods or services - or absence thereof - which might mislead customers, in particular as to their origin, or which conceals risks connected with their use constitutes an act of unfair competition. Additionally, the introduction of goods into trade in packaging which might result in the above effects shall also be considered an act of unfair competition, unless the use of such packaging is justified for technical reasons.
With regard to the above, in order to enforce foreign trademarks that are not registered in Poland, the owner of the foreign trademark must prove that it was using its trademark for business activities in Poland before the infringer began using it, and that there is a risk that such use will mislead potential customers.
If the above-mentioned conditions are met, the owner of the foreign trademark may demand:
- cessation of the impermissible acts;
- reversal of the effects of the impermissible acts;
- publication of a single statement or series of statements with appropriate content and in the proper form;
- repair of the damage inflicted, according to general principles;
- surrender of unjust benefits, according to general principles; and
- payment of an adequate amount of money for a specific public purpose connected with supporting Polish culture or protecting national heritage, if the act of unfair competition was culpable.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
A mark may be registered based on a foreign or international registration only by claiming convention priority within six months of the filing date of the foreign or international registration.
In order to successfully claim priority, a certified copy of the prior application must be presented. If this document is issued in a language other than Polish, English, German, French or Russian, it must be translated into Polish. Furthermore, this document should be submitted within three months of the filing date of the application for registration in Poland.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.