With a slight lag of two months, on 11 March, the Polish President signed the bill amending Intellectual Property Law ("IP Law") which is scheduled to enter into force one day following its publication. The broad changes were brought about by the implementation of the EU Trademark Directive 2015/2436 ((EU) Directive 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of Member States regarding trademarks) (the "Directive").
The wide-ranging EU provisions, aimed at updating, developing, centralising and further harmonising the existing regulations, tackled the most intricate issues underlying trademark law, i.e. among others, trademark definition, filings and renewals, absolute and relative grounds for refusal, guarantee and collective marks, licensee rights, trademark infringement, trademark use (and non-use as a defence in invalidation proceedings) and some procedural aspects.
This article outlines the key reforms adapted by Polish legislators based on the mandatory provisions of the Directive, with a special emphasis on certain benefits of the new regulation for entrepreneurs and companies interested both in registration of marks and protection of their existing trademarks.
The end of the graphic representation requirement
First and foremost, the new IP Law provides that a sign no longer has to be represented graphically to be considered a trademark for the sake of its registration.
Therefore, it will now be possible to register a colour or shape (the issue of registering a sign comprising a smell was recently subject to a negative consideration of the EU Court of Justice) as well as a multimedia sign (e.g. sound) without the need to depict it as a visible 2D image.
Instead, the new law stipulates that the sign must be described in a sufficiently clear and precise way.
The provisions in force enumerate an exemplary list of signs that can be registered as a trademark, adding new examples such as digits, letters and colours.
Absolute and relative grounds for refusal
Since most of the provisions for refusal of protection rights for trademarks (registration of trademark) cover and reflect the regulations provided for in the Directive, there was only a need for a slight amendment which authorises a person exercising rights from designation of origin or geographical indication to prohibit the use of a later trademark.
Redefinition of collective and guarantee trademarks
On the other hand, a broad regulation on collective trademarks (attributable to any organisation being a legal person established to protect the interests of entrepreneurs) and guarantees (intended to distinguish the trademark owner's certified goods from its non-certified goods) significantly amends the previous provisions comprising three articles in principle referring to other trademark provisions.
From a business perspective, the new regulation on guarantee trademark is interesting, especially as it allows a registration right to be granted for signs or indications which may serve to designate the geographical origin of the goods or services (which, as a rule, constitutes an absolute ground for refusal of "regular trademarks").
The application of a guarantee trademark must be supplemented by regulations governing its use, which are further examined by the Polish Intellectual Property Office subject to its compliance with public policy or to accepted principles of morality. Apart from this obligation and other absolute and relative grounds for refusal applicable to trademarks, the registration right is refused if there is a risk of trademark users being misled, in particular if it is likely to be understood as something other than a guarantee mark (accordingly, new grounds for trademark revocation result from the illegal use of the collective trademark, including an unlawful change of the regulations governing its use).
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.