The Polish President has just signed important amendments to the Act on Industrial Property Law (“IPL”). Many adjustments result from the implementation of EU Trademark Directive 2015/2436, which aims to approximate the laws of the European Union regarding trademarks. The amendments entered into force on 12 March, namely the day after their publication. IPL introduces, inter alia, the abandonment of the graphical representation requirement, introduction of a new mechanism for trademark protection renewals, extended licensee’s rights, as well as remedies against counterfeit goods in transit and against infringing preparatory acts. Below, we briefly present the most significant changes.
Wider definition of trademark under Polish IPL
Following the amendment, the IPL indicates that a trademark may consist of any sign enabling to distinguish goods of one business from those of others, provided that such sign is capable of being presented in the register of trademarks in a manner allowing to establish an unambiguous and accurate subject of a granted protection. In practice, this means that the amendment has abolished the existing requirement of a graphical representation of a trademark. The new provisions also specify that a trademark may in particular be a colour, the shape of the good or packaging, or a sound. Such a “liberalisation” of the definition of a trademark should encourage businesses to register various signs that they use. It also intends to increase the number of unconventional trademark applications.
It has to be noted, however, that in order to be registered as a trademark, a sign still has to be sufficiently distinctive and capable of being presented in the register of trademarks. This means that the presented representation criterions have in fact not been abolished, but clarified – in particular by getting rid of the requirement of so-called graphical representation and by providing a boarder range of examples of signs that can be registered as trademarks.
Easier extension procedure for trademark protection rights
Introducing the discussed changes concerns also a de-formalization and simplification of the procedure for extending trademark protection rights. Previously, a right holder had to apply for the prolongation of protection rights and wait until the Polish Patent Office issued a decision in this regard. The amendments make this procedure significantly shorter and simpler. The entitled party no longer has to file an application for prolongation. Instead, in order to extent the protection, it is sufficient to pay the fee due for another period of protection. Moreover, the Polish Patent Office is obliged to inform a right holder in advance of an upcoming deadline for paying the relevant fee. Such a solution should not only speed up the whole process, but also reduce costs of the extension.
New rights of licensees and trademark holders
Finally, the introduced changes are also aimed at improving the enforcement of trademark protection rights. As a result of the amendment, a licensee, with the consent of the right holder, is entitled to bring an action for the infringement of a trademark protection right. Licence agreements can also provide that a licensee may bring an action against an infringer without first having to obtain the consent of the right holder.
It is also worth mentioning that in case of an exclusive licence, the licensee is entitled to bring an action without the right holder’s consent and without a relevant contract provision, if the right holder, after being called, fails to act in a reasonable time with an action against the infringer.
What is more, the discussed amendments broaden the catalogue of entities against which a right holder may act. In particular, a right holder is entitled to assert his claims not only directly against the infringer, but also against the intermediary whose services were used in the infringement.
In conclusion, the discussed changes provide new tools to fight more effectively against infringements of trademark protection rights and therefore are warmly welcome by Polish practitioners.