The Industrial Property Law Amendment Act of 20 February 2019 came into effect on 16 March 2019. The Amendment Act comes further to the requirement to implement Directive (EU) 2015/2436 dated 16 December 2015 to converge the laws of the member states relating to trademarks.
Key amendments:
Definition of the trademark broadened
The Act removes the requirement for graphic representations of trademarks. It will be possible to register any mark which can be presented in the trademark register in a manner allowing for the unequivocal and accurate determination of the object of the protection granted.
The legal doors for registration of these marks is now slightly ajar. However, the Polish Patent Office, in similar fashion to the EU Intellectual Property Office (EUIPO), will not give protection to such trademarks as yet. In justification, the authorities speak of the requirement for a representation of the mark in a clear, precise, independent, easily accessible, comprehensible manner which, as the authorities stress, is not permitted by the current technology.
Increase of rights held by licensees with respect to protection of the breached right
In accordance with the amendment, with the proviso that no agreement provides otherwise, the (exclusive and non-exclusive) licensees will be able to bring actions for a breach of trademark protection rights. It is sufficient that the rights holders granted their consent. The exclusive licensee may file claims – even without consent – if he/she previously demanded that the rights holder brings action for a breach of the trademark protection rights and that person fails to do so within a particular time limit. Contrary to the previous regulations, the license does not have to be registered in the Patent Office in order for the licensee to bring action.
Additional claims of the holder of a trademark protection right
If there is a risk that e.g. packaging, labels, tags etc. have counterfeit trademarks, the protection rights holders or persons authorized by the Act will have two additional rights. First, they will be able to demand that any further use of signs identical or similar to the trademark on the packaging or the tags, be discontinued. Second, they will be able to demand that offering, marketing, importing, exporting, storing for the purpose of offering or marketing such packaging, labels, tags, etc., be discontinued.
Liability of an intermediate
The amendment expressly provides that the rights holder will be able to file claims against a person whose services were used during the breach (potentially subcontractors, carriers, warehousemen, owners of exhibition halls, marketing agencies).
Facilitation of renewal of trademark protection rights
Following the amendment, the renewal of a right will simply require a fee payment. Consequently, the legislator stepped back from the formalized procedure in extending the trademark protection right that required filing a motion.
Informing about the approaching deadline for the payment of a fee for the subsequent protection period
The Polish Patent Office shall inform the trademark protection right holder about the approaching fee payment deadline for the subsequent protection period not later than six months before the date on which the previous protection period expires. However, if the information from the Office does not reach the holder, it shall not ameliorate the negative consequences of not meeting the deadline.
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