Trade marks play a vital role in distinguishing goods or services of businesses. They may exist as non-registered intellectual property but they can also serve as registered one. The registration of a trade mark gives the authorized person or company the exclusive right to use the trade mark in a commercial or professional manner in a specific territory.
One of the stages of the trade mark registration procedure, both in Poland and the European Union, is the possibility of filing an objection to the trade mark application. If examination of such opposition reveals that the trade mark may not be registered in respect of some or all of the goods or services for which the trade mark application has been made, the application shall be refused in respect of those goods or services. The opposition procedure should enable trade mark offices to refuse the registration of trade marks that collide with earlier trademarks or other rights of third parties.
In Poland, the opposition procedure for the registration of trade marks with the Polish patent Office is about to change. A draft of a new Industrial Property Law appeared in the Polish government, which changes important aspects of the procedure of objection to the trade mark applications.
The proposed regulations introduce a new name, replacing the former "objection" with the term "opposition". The aim of this solution is to differentiate this institution, which refers only to trademarks and takes place before the exclusive right is granted, from an opposition to other types of industrial property, which can take place only after their registration. The previous solution consisting in the application of an identical name to these different procedures was confusing in practice.
The most important change to the procedure is the reduction of the time to file an opposition to 2 months from the date of publication of information about the trade mark application, instead of previous 3 months-period. Reducing this period is thought to speed up the time of granting protection rights, however, it is criticized for limiting the possibilities for trade mark owners to learn about new applications and file oppositions on time. After shortening this period companies will need to monitor new applications more often and will have less time to react. The shortening of the time for filing the opposition period will be connected also to the moment from which if will be calculated. Instead of the moment of publishing the application in the "Patent Office Bulletin", the time for filing the opposition will be calculated from the moment of making the application public by the Patent Office in its databases. Moreover, in the current legal status, for the calculation of the time for filing the opposition, the date of sending the opposition is decisive. After the change, the date of receiving the opposition by the Polish Patent Office, will be decisive. Taking into account potential delays in delivering an opposition by traditional post, the proposed new law will either increase the number of oppositions filed online or limit even more the time for companies to prepare and send the opposition in traditional way (in paper).
The proposed provisions refine the scope of those entitled to file an opposition. Currently, the authorized individuals entitled to file an opposition are the holder of an earlier trademark, the holder of an earlier personal or property right, as well as the person entitled to exercise the rights arising from an earlier application for a geographical indications or designation of origin, provided that these indications are registered. This list will be supplemented in the new law by licensees authorized by holders of earlier trade mark.
The minimum prerequisites for lodging an opposition, on the other hand, are the indication of the sign against which the opposition is lodged and the grounds and facts, which cannot be supplemented after the expiry of the time limit for lodging the opposition. The obligation to present a translation of all documents filed in a foreign language into Polish has also been retained, although the mandatory form of such a translation has not been specified. If a translation of the filed documents is not provided, the Patent Office will call for the missing document to be supplemented under pain of disregarding such documents. As one of the conditions in opposition cases filed against international trade marks, the necessity to indicate the goods against which the opposition is filed in the language proper to the international trade mark together with its translation into Polish has been imposed.
The draft new law abandon the previous mandatory 2-month amicable settlement period for the parties during the opposition proceedings. The introduction of the possibility, rather than an obligation, to set a time limit for the amicable settlement of the dispute follows from the provisions of Directive 2015/2436 (Art.43(3)), which provides only that the parties should be given the opportunity to settle amicably, rather than the obligatory setting of such a time limit.
It is also worth pointing out the draft new law introduces changes to payment obligation of trade mark applicants. So far, a trade mark applicant had to make a payment for filing a trade mark application and then, after being granted an exclusive right, another payment for the first 10-year period of trade mark registration. The new law provides for one-time period which will most probably limit the number of cases where trademarks registrations were annulled due to a lack of payment of the second fee. The exact date for the adoption of the new industrial property law in unknown but the we may expect it to happen in 2023.
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