Overview of Poland Trademark Registration Service

Background

Poland is an ancient nation that was conceived near the middle of the 10th century. Its golden age occurred in the 16th century. During the following century, the strengthening of the gentry and internal disorders weakened the nation. In a series of agreements between 1772 and 1795, Russia, Prussia, and Austria partitioned Poland amongst themselves. Poland regained its independence in 1918 only to be overrun by Germany and the Soviet Union in World War 11. It became a Soviet satellite state following the war, but its government was comparatively tolerant and progressive. Labor turmoil in 1980 led to the formation of the independent trade union "Solidarity" that over time became a political force and by 1990 had swept parliamentary elections and the presidency. Poland joined NATO in 1999 and the European Union in 2004. With its transformation to a democratic, market-oriented country largely completed, Poland is an increasingly active member of Euro-Atlantic organizations.

Who May Apply?

Any natural or legal person can file an application for registration. Several applicants may apply for and obtain the registration of a mark together, provided that certain conditions are met. Such applications result in "jointly owned marks." Applications for registration of a collective mark may be filed by any organization being a legal entity founded to represent the interests of enterprise. Applications for registration of a certification mark ("collective guarantee mark") may be filed by any organization that is a legal entity which does not itself use the mark. Foreign nationals and legal entities will have the same rights as nationals of Poland on the basis of international agreements to which Poland is a party or on the basis of reciprocity. Poland is a member of the Paris Convention for the Protection of Industrial Property, Stockholm text, and of the World Trade Organization (WTO). Applicants residing abroad must be represented by an admitted patent attorney permanently residing in Poland.

What Can Be Registered?

The law provides that any sign capable of being represented graphically may be considered a trademark, provided that it is capable of distinguishing goods or services of one enterprise from those of other enterprises. The three-dimensional marks (in particular, the shape of goods or their packaging) may also be registered. However, signs constituting the form or another feature of the goods or their packaging which is dictated solely by their nature, or which is required to obtain a technical result, or which gives substantial value to the goods, cannot be registered as a mark. As follows from the above, sound marks may be registered. Service marks may be registered. Jointly owned marks, collective marks and certification marks (collective guarantee marks) may also be registered. Trademarks must be sufficiently distinctive in usual commerce conditions.

What Cannot Be Registered?

Not registrable on absolute grounds:' Rights of protection cannot be granted for the following: 1. Signs which cannot constitute a mark; 2. signs which are devoid of sufficient distinctive character (a sign as mentioned under 2 above may be granted protection if, prior to the date of filing, the application for its registration as a mark with the Patent Office, has obtained a distinctive character in the course of use in regular trade ("secondary meaning")); 3. Signs which are not capable of distinguishing in trade the goods or services concerned; 4. Signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, mode of manufacture, composition, function or usefulness of the goods; 5. Signs which have become customary in the current language and are used in fair and established business practices; Rights also may not be granted for: 6. Signs the use of which infringes third parties' personal or economic rights (such as a copyright or a design right); 7. Signs being contrary to law, public order or morality; 8. Signs which may mislead the public, in particular with regard to the nature, characteristics and geographical origin of the goods; 9. Signs whose registration has been applied for with the Patent Office in bad faith; 10. Signs incorporating the name or the abbreviated name of the Republic of Poland, or the emblem, national colors or national anthem, or the names or armorial bearings of voivodships, towns or communities of Poland, or the insignia of the armed forces, paramilitary organizations or police forces, or reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of the government administration, local self-administration or social organizations performing activities in vital public interests where the activities of these organizations extend to the entire territory of the State or a substantial part of that territory (However, if the applicant for registration can furnish evidence of his right to use the sign in the course of trade, in particular in the form of an authorization issued by the competent State agency or a permission given by the organization concerned, an exception will exist.); 11. Signs incorporating the abbreviated names, armorial bearings, flags or emblems of other countries or international organizations, and official signs or hallmarks indicating control and warranty adopted in other countries, if the prohibition of registration of these follows froni international agreements, except if the applicant can furnish an authorization issued by the competent authority and allowing him to use the sign concerned in the course of trade; 12. Signs incorporating officially recognized signs accepted for use in trade, in particular such as safety marks, quality marks, hallmarks of legalization, in so far as this could mislead the public with regard to the nature of such signs, except if applicant can prove his right to use the sign; 13. Signs incorporating elements, such as symbols of a religious, patriotic or cultural nature, in so far as these could hurt religious feelings, sense of patriotism or national tradition; 14. Signs constituting the form or another feature of the goods or their packaging which is dictated exclusively by their nature or which is required to obtain a technical result or which gives substantial value to the goods; 15. Signs intended for wine or spirits containing a geographical indication, where the wine or spirit does not originate in the place indicated by that indication; 16. Marks containing geographical elements which, although being literally true as to the territory, region or locality in which the goods originate, are of such a nature as to mislead the public because they falsely represent that the goods originate in another territory famous of certain goods (However, in the case of homonymous geographical indications for wines and beers, protection may be accorded provided that the subsequent applicant who has later filed his application modifies his mark at the Patent Office's invitation so as to make it distinguishable from the mark earlier registered or applied for.); 17. Signs consisting of or containing the Olympic symbol, unless with due authorization. Protection of a mark which contains signs which relate to the origin of the goods or services or which contains a sign or signs as mentioned above under 10, 11, 12 and 13 are not a bar to the registration of a mark containing the same elements for the same kind of goods in the name of another enterprise, provided that both marks remain readily distinguishable in the course of trade. Furthermore, protection of a mark as a press-title which contains words or combinations of words customarily used in the press-market, does not bar the registration of another press-title as a mark containing the same elements, provided that both marks remain readily distinguishable in the course of trade. Not registrable on relative ground^:^ Rights of protection cannot be granted for the following in view of the existence of rights of third parties: 18. Marks being identical with a mark already registered or whose registration has been applied for (subject to its being registered) in or with effect for Poland for identical goods or services; 19. Marks being identical with or similar to a mark already registered or whose registration has been applied for (subject to its being registered) in or with effect for Poland covering identical or similar goods or services, if the use of that mark is likely to mislead the public or a part thereof, in particular by evoking association between the marks concerned; 20. Marks which are identical with or similar to an earlier mark.

Rights

A person that, when carrying out a business activity locally and to a modest extent, has in good faith used a mark that is subsequently registered in the name of another party, may continue to use that mark free of charge within the same limits as it has previously used it.' This prior user's right may be recorded in the Trademark Register at the request of an interested party.

Filing Requirements

On filing an application for the registration of a certification mark a certified copy of the regulations governing the use of the mark must be filed. The regulations must define the manner of use of the mark, the common characteristics of the goods for which the mark is to be used, the manner of controlling these characteristics, and the sanctions for violation of the regulations. Furthermore, the regulations must define the detailed conditions for and procedure of admission by the organization owning the mark of other enterprises to the use of the mark.

Evaluation & Review

Applications for trademark registration are published in the biweekly Patent Office Bulletin, usually after three months from the date of filing. Within six months of the date of publication, interested third parties may file observations as to why the mark should not be protected. A person filing such an objection does not become a party to any later proceedings. The Patent Office examines applications as to form and registrability, and to see whether they conflict with the rights of third parties; (i.e., rights registered or applied for by another party in Poland relating to the same or similar goods or services). If obstacles to registration are found, the Patent Office will order the applicant to remedy any deficiencies within a fixed period. This period may be extended only once by two months by written request before the end of the fixed period. If the mark is found to be unregistrable, (whether or not as a consequence of third-party observations), the applicant will be informed and ordered to give its opinion within a fixed period, which may be extended only once by two months by written request before the end of the fixed period. If the applicant fails to meet the requirements for registration for only some of the goods or services for which protection is sought, and the applicant has not limited the list of goods or services, the Patent Office may grant the registration in part, covering only those goods or services that comply with the requirements. If the application meets all the statutory requirements, the Patent Office will grant registration and invite the applicant to pay within three months the protection fee for the first 10-year period. If the fee is not timely paid, the Patent Office will declare the grant of registration lapsed. If the fee is paid in time, the mark will be entered in the Trademark Register and a certificate of protection will be issued. The decision to grant protection will be published in the (monthly) Patent Office Journal.

Duration

The protection of a registered trademark begins on the date on which the application is filed and applies for 10 years from the date of application. The registration may be renewed for 10-year periods.' Applications for renewal must be accompanied by payment of the official fee and must occur no earlier than twelve months before, and no later than six months after, the expiration of the registration period. It is necessary to pay an additional fee for late renewal during the six months after the expiration of the renewal period. If the application is satisfactory, the renewal is entered in the Trademark Register.

Use

Abandonment: The rights conferred by registration protection will lapse if the mark has not been genuinely used for a period of five consecutive years and there are no serious reasons for the nonuse. If the mark has not been genuinely used for certain goods or services only, the rights lapse in respect of those goods or services only. Any person having a legitimate interest in the registration may request the Patent Office for a declaration that the right of protection has lapsed. A request for cancellation based on a lapse of the protection right due to nonuse will be refused if genuine use in Poland of the mark was commenced or resumed before the request was filed, provided that where the late use was commenced or resumed only within three months preceding the request it will not be taken into consideration if such use took place only after the owner of the mark became aware that a request for a declaration of lapse may be anticipated. Third-party use: Use of a registered mark by another person with the consent of the owner will accrue to the owner. Use by a registered licensee is acceptable. For a collective mark or a certification mark ("collective guarantee mark"), use by at least one party entitled to use the mark is relevant use. Altered use: Use of a mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was granted protection is also considered relevant use. Export use: Affixing in Poland a mark on goods destined solely for export out of Poland or on the get-up or packaging of such goods is relevant use. Advertising alone is not use: Use of a mark for advertising a product which is not available on the market and is not manufactured in Poland for export purposes is not deemed to constitute genuine use of the mark. Burden ofproofi In proceedings for a declaration that the right of protection to a mark has lapsed on account of nonuse, the burden of proof that the mark has been used or that serious reasons for nonuse exist is on the owner of the right of protection.

Domain Names

Registrar: There are no provisions concerning domain names under the Law on Industrial Property. Domain name registration in Poland may be obtained by any person. The authority which holds the register for the top level domain.pl is: Research and Academic Computer Network (Naukowa i Akademicka Siec Komputerowa-NASK).' Domain Registration process is supported by an increasing number of the independent registration entities that provide registration services to the customer market (examples of such entities are htt~://www.home. d, http://www.nazwa.pl and many others). Registration of domain names: Foreign individuals and legal entities may apply for registration of domain names. Registration should normally be applied for online through the Internet. A domain name is registered when a correctly filled in application for that name is sent through the NASK Web site. A hard copy of the application must be delivered or faxed to NASK within seven days of sending the online application through the NASK Web site. The application must be signed by a person authorized to make declarations on behalf of the applicant and the company seal must be affixed to it. No seal is required in the case of applications filed by a natural person. Failure to deliver the application in writing within the said term is ground for refusal of the registration, and the electronic version of the application is automatically removed from among pending applications. No hard copy of the application form will be valid unless it bears the application identification number assigned automatically by the NASK registration system upon receipt of the online application. Safe receipt of the electronic application form by NASK opens the domain name registration procedure, and from that point onwards the subject name is no longer available for registration by other applicants. NASK registers a domain name within five working days of receiving the application in writing. Registration is valid for a period of one year upon payment of the registration fee. Registration is renewable for another one-year protection periods on payment of the required fee each time the renewal is made. Trademark registration of domain names and infringement: Domain names may also be registered as a trademark. However, the domain name registration process does not involve an examination step that might identify conflicts with other domain names. According to the Law on Industrial Property, it will be regarded as trademark infringement if a sign incorporated into a domain name is similar or identical with an earlier registered trademark, and that sign is used as a trademark, namely it is used to distinguish the origin of goods or services of one undertaking from those of other undertakings. Trademark infringement takes place if: 1) The goods or services, which are offered on a Web site in association with a given domain name, are identical with or similar to the goods or services covered by the earlier registered trademark; (trademark infringement within its scope of specialization); or 2) The goods or services offered on a Web site under the domain name are different from those covered by the earlier registration, but the earlier trademark is renown, (trademark infringement outside its scope of specialization). Relief available: As a consequence of a decision of the Arbitration Court, Internet Provide may terminate the agreement with the owner of the domain name (the infringer). Termination of the agreement will result in cancellation of the domain name. However, the proceedings before the Arbitration Court do not provide for the assignment of the domain name to the owner of the earlier trademark. In other words, the owner of earlier trademark rights does not enjoy the right to claim the change of ownership of that domain name to his own name. The owner of an earlier trademark may enforce his claims in the arbitration proceedings before the Arbitration Court at the Polish Chamber of Information Technology and Telecommunications, or in the court proceedings before a common court. In both types of proceedings it is necessary to provide evidence of one's earlier rights, that is, it is necessary to prove the ownership of an earlier right of protection to a trademark, or to prove action in bad faith of the owner of the questioned domain name. In both the arbitration proceedings and the proceedings before a common court, the burden of proof that infringement of trademark rights has taken place rests with the owner of those rights, which is consistent with a general rule of the civil law that the burden of proving facts rests with the party who proceeds with legal action basing on those facts. In the proceedings before a common court, the owner of earlier rights may request the cessation of infringement and redress of its consequences, as well as the surrender of unlawfully obtained profits and the repair of damages sustained by the rights holder. In addition, the infringer is under an obligation to make the relevant statement in the press. In the arbitration proceedings, the owner of trademark rights may request cancellation of a domain name, (as a result of termination of the agreement between Internet Provider and the infringer). Domain name rights versus subsequent trademark registration: An earlier domain name cannot be used as a basis for cancellation of a later trademark, unless the mark was filed in bad faith.

Enforcement

Civil actions: The Law on Industrial Property provides that a trademark owner's rights will be deemed to have been infringed where there has been unlawful use of the mark in the course of trade. The remedies available to the trademark owner are as follows: - cessation of the infringement and suitable redress; - surrender of any unlawfully obtained profits; and - compensatory damages in accordance with the relevant principles of the Civil Code. In this case, the trademark owner is obliged to prove that an intentional infringement of its rights has taken place; and if it does so, the publication by the infringer of a statement regarding the infringement is required. Jurisdiction and appeal: Civil trademark cases, irrespective of the value of the subject of the dispute, are examined by higher district courts. The decisions of higher district courts may be appealed to the Court of Appeal. A cassation complaint against the decision of the Appeal Court may be filed with the Supreme Court. In civil proceedings, the owner of the infringed trademark right may obtain a preliminary injunction. Injunctive reliefi A request for such an injunction requires evidence of a legal interest requiring an injunction. This is deemed to exist where there is an indication that a failure to impose an injunction will seriously impede the enforcement of the court's decision; confirmation of ownership of the infringed right; and that the infringement has been committed with respect to the goods or services covered by the right. The request for a preliminary injunction may be brought before filing the statement of claim, and also during the course of the proceedings. If the request for a preliminary injunction is filed before the start of proceedings, the court, upon issuing a decision to grant the preliminary injunction, will designate a deadline for the filing of the statement of claim. If the plaintiff misses the deadline, which cannot exceed two weeks, the entire claim is subject to cancellation. Criminal actions: The Law on Industrial Property defines a "counterfeit trademarkn as any trademark identical with, or indistinguishable in the course of trade from, a registered trademark and unlawfully used in respect of the goods covered by the trademark right. A party either affixing a counterfeit trademark to goods with the intention of introducing them onto the market or physically introducing such goods onto the market may be subject to a fine, a restriction of movement order or a term of imprisonment of up to two years. A criminal action requires evidence that the acts were committed with intent. It is for the party aggrieved by the infringement to commence a criminal action. Only after the filing of the motion can the proceedings be started and continued ex officio. The sole exception is when a person committing the crime in respect of a registered trademark obtains permanent profits from its criminal activity, or introduces onto the market significant amounts of counterfeit goods bearing the trademark. In such a case, the infringer is subject to more serious criminal penalties and proceedings will be started ex officio. The range of protection of trademarks against potential infringement under the criminal law is limited compared with protection offered by the civil law. Criminal regulations of the Law on Industrial Property do not apply in situations where the infringement has taken place in respect of an unregistered trademark, including unregistered famous and commonly known trademarks. Customs actions: The measures to protect trademarks in customs proceedings in Poland are provided in the EU Council Regulation 138312003, which came into effect in the territory of the European Union (including Poland) on July 1, 2004. This regulation determines the actions and measures to be taken by customs authorities against goods deemed to infringe IP rights. In addition, the territory of Poland as a member state of the European Union is subject to an additional regulation, namely Council Regulation 189112004, which came into effect with retroactive effect as of July 1, 2004. The trademark right owner may file an application (request for granting customs protection) to the Main Customs Chamber in Warsaw to prohibit import into or export out of Poland of any infringing goods. The regulations also cover, among other things, infringements of registered and unregistered designs. The actions before the customs authorities can be split into two types: national and Community actions. Community actions must be made by way of a special form specified by Council Regulation 189112004. Customs protection is granted for a period of one year, with the availability of renewal.