In Poland, procedures related to granting protection to
international trade mark are regulated by The Industrial Property
Law of 30 June 2000 ("IPL").
According to current regulations (ie as of 08 December 2015), such
protection may not be granted in situations where a trade mark is
similar or identical to a trade mark already registered in the
Republic of Poland. This is also the case if the period between the
date when the protection of the earlier trade mark ended and the
date on which an application for a similar mark was made is less
than two years.
There is a possibility that this two-year waiting period can be
excluded. This occurs when the protection of a trade mark has
lapsed due to its non-use or when the holder under an earlier right
consents to protection being granted for an identical or similar
mark.
On 11 September 2015, the Polish Parliament revised the provisions
of the IPL, with the amendment set to enter into force on 15 April
2016. The long-awaited change brought about by this amendment makes
it possible to register a trade mark that is identical or similar
to a trade mark that is already registered upon the written consent
(a letter of consent) of the latter's holder. Such consent will
result in the dismissal of any potential opposition to a decision
granting protection to the latter trade mark.
The current lack of such normative regulation has raised serious
practical problems. For example, an entrepreneur who is part of a
capital group currently does not have the possibility of obtaining
registration of trade mark in the Republic of Poland through a
subsidiary if, inter alia, the parent company has already locally
registered an identical or similar mark as a trade mark. The
changes introduced by the amendment will allow the entrepreneur to
register an identical or similar mark upon prior consent.
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.