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.