Our clients frequently ask the question when exactly the obligation to start to use a trade mark arises, or in other words, from when the absence of genuine use may render the mark vulnerable to declaring lapse due to non-use. The continuous period, after which the holder of registration is at the latest obliged to put his mark to genuine use, in order to avoid negative consequences for its exclusive right, lasts 5 years.
5 years, but counted from when?
In order to answer this question precisely, it is necessary to determine the initial date from which the 5-year period of non-use of the mark without any consequences starts to run.
The beginning of this period is different for different types of trade marks (national trade marks, EU trade marks, or international registrations designating Poland and/or European Union), which are protected on the territory of Poland. In addition, in accordance with the new Trademark Directive no. 2015/2436, the implementation of which into the Polish legal system is still pending, the beginning of the subject period depends on the course of proceedings for accepting the international registration designating Poland. Consequently, giving a precise response to this fairly essential question is frequently difficult even for specialists in intellectual property law.
National trade marks
For Polish national trade marks, the initial date, from which the period of 5 years is counted, is the day following the date of issuing the decision on granting the right of protection. For example, if the decision on granting the right of protection for a trade mark was issued on 2nd December 2010, the first 5-year period of non-use of the mark which would be free from negative consequences, ends on 3rd December 2015.
European Union trade marks
As regards a EU trade mark, the 5-year period, after which it becomes vulnerable to revocation due to lack of genuine use in the European Union starts from the registration date.
International registrations designating EU
In that case, the period lasts also 5 years, but the initial date as from which the mark which is the subject of an international registration designating the European Union shall be put to genuine use in the Union is established differently. Instead of the date of registration, essential is the date of publication in the Bulleting of the European Union Intellectual Property Office.
This means that if a publication of the grant of international registration designating the European Union was made in the Bulletin on 16th November 2009, it was 16th November 2014 at the latest when the obligation to put the mark to genuine use had arisen.
International registrations designating Poland
The issue of determining the beginning of this 5-year period in respect of international registrations designating Poland required, de lege lata, undertaking a number of investigatory actions. According to the regulations binding so far, the 5-year period to put the mark to genuine use, in respect of international registrations designating Poland, starts from the date of publication of information about granting protection in Poland for the mark in the Journal of the Polish Patent Office (the original title is Wiadomości Urzędu Patentowego, shortly – WUP) .
However, the problem is that it is not mentioned in any publicly available database when the grant of protection for an international mark in Poland was published in the Journal of the Polish Patent Office. Consequently, determining the issue number of the Journal of the Polish Patent Office and potentially the date of its issuance, is possible either upon phone inquiry in the Polish Patent Office, or by searching all issues of the Journal after the date of designating Poland. After determining the issue number of the Journal under the tag "Bulletin and Journal of the Polish Patent Office" at the patent Office's website, one can find a digital version of the relevant issue and check its publication date, which as a rule falls on the last day of the month.
In the light of the regulations of the Directive No. 2015/2436, the beginning of running the 5-year period, when an international mark, in spite of not being used, is not vulnerable to declaring lapse, will be different depending on how the process of granting the national protection for a given registration has been going.
For example, it may be the date when the term for refusal of the mark or for filing an opposition thereto has passed. If the opposition is filed, or a claim is raised on the basis of absolute or relative grounds for refusal of protection, the period starts to be counted from the date when a decision ending the proceedings in the case comes into effect, or the date on which a decision concerning absolute or relative grounds for refusal comes into effect, or – the date of withdrawal of the opposition.
The works over the implementation of these regulations into the Polish legal order are still pending, although they should have been implemented till 14th January 2019. According to draft amendments to the Law on Industrial Property, the legislator will treat us with the lack of vacation legis, in order to make up for the lost time.
What is more, as regards international trademarks, the directive does not impose upon member states an obligation of announcing in the register these initial dates of starting the 5-year period of trademark non-use without any consequences – such obligation exists only in respect of the national marks.
Therefore, one may expect that in the nearest future solving a puzzle as from when an international registration designating Poland becomes vulnerable to declaring lapse in Poland, will be even more time-consuming and difficult than it used to be so far.
In order to find out from when one should start counting the 5-year period, it will be necessary to check the whole process of granting protection for a given international registration in Poland. At the same time, the relevant dates (such as for example the date of coming into effect of a decision ending the proceedings in the matter) are not currently revealed in a publicly available database of the Patent Office, nor are they announced in official publications. If this is not improved, determining the date, as from which an international trademark extended to Poland becomes vulnerable to declaring lapse due to non-use, may cease to be possible.
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.