Implementation of the Directive will take place in Poland through an amendment to the Industrial Property Law. The new Act has been drafted and is currently being reviewed by a Parliamentary committee. It is not yet certain when the implementation will come into effect.
The amendment removes the requirement for the graphical representation of a trade mark. It introduces a new definition of a trade mark which provides that a trade mark may consist of any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings and which can be presented in the register of trade marks (kept by the Polish Patent Office "PPO") in a manner that enables third parties to determine the clear and precise subject matter of the protection. As a result, a trade mark could be a word mark, figurative mark, a colour, a form of goods or their packaging, as well as melodies or other sounds.
The amendment touches the absolute grounds of refusal by adding that signs consisting not only of the shape (as currently), but also of another characteristic, which (i) results from the nature of the goods, (ii) is necessary for obtaining technical result, or (iii) gives substantial value to the goods, cannot be registered.
The upcoming amendment will rephrase the definition of a collective mark in Poland. The legislators decided also to repeal the institution of collective guarantee marks from the Polish system and replace them by newly added guarantee marks as regulated in the Directive.
Collective guarantee marks can be converted into guarantee marks within six months from the entry into force of the amendment.
The renewal procedure will be simplified. There will no longer be a requirement to submit a request for renewal to the PPO. The PPO will renew the registration of the trade mark provided that the proprietor of the trade mark pays the renewal fee (without the necessity of filing a separate written request). The PPO will also send notifications reminding trade mark holders of the expiry date at least six months before.
The upcoming amendment will bring substantial changes in the regulation of trade mark licensing. The licensee will be able to bring proceedings for infringement of a trade mark unless the licensing contract stipulates otherwise (currently – only possible if the licence is exclusive and registered). The holder of an exclusive licence may always bring such proceeding if the proprietor of the trade mark, after a formal notice, does not himself bring infringement proceedings within an appropriate period.
A licensee will also be entitled to join infringement proceedings on the side of the claimant – the trade mark holder – to claim damages from the infringer.
The amended provisions implement a new claim to prohibit preparatory acts in relation to the use of packaging or other means as well as restrictions on the reproduction of trade marks in a dictionary, encyclopaedia or similar reference work.
The non-use defence is already present in Polish law, but the provisions were imprecise. In particular, there was no clear regulation on the calculation of the five-year period for which the trade mark holder must present evidence of genuine use. The upcoming amendment will introduce a clear regulation as to the five year non-use period aligned with the Directive, i.e. the trade mark holder will be required to furnish evidence of use for the period of five years preceding the date of filing the statement of claim. The clarifications concerning evidence of genuine use have also been added to the invalidation proceedings.
Written by Marta Koremba, Katarzyna Bieliszczuk, Ewa Kindel-Kaluzna