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Changes in industrial property law and new rights of trademark owners

On March 11th, 2019, the President of the Republic of Poland signed the amendment to the Industrial Property Law, which introduces significant changes in the area of ​​trademarks. The aim of the introduced changes is to adapt Polish provisions to the EU Directive 2015/2436. So what is changing for trademark owners?

Graphic display
The most important element of the reform is the change of the requirements for the graphic display of the trademark under the registration procedure. Non-standard trademarks were introduced into the European legal system in October 2017, but their registration in Poland has been problematic so far. Existing regulations required that the applicant should attach a graphic representation (display) of the trademark. At the verbal sign, it was a literal entry, with the graphic and verbal – graphic signs it was the image (logo), and in the case of spatial signs, the 3D visualization of the product (packaging). Nowadays, any sign may be registered as a trademark if it is possible to present it in a register in a manner allowing the relevant authorities and recipients to establish an unambiguous and precise protection subject to the owner of the mark. Described amendment will allow for the legal protection of trademarks such as multimedia signs or holograms. However, since fragrance cannot be disclosed (displayed) in the register, in such a way as to enable the subject of the protection to be unambiguously and accurately stated, the smell will still remain without the legal protection of the trademark.

Facilitation of protection extension
The procedure for extending trademark rights will be changed, which will be covered by a smaller formalism. In the event that the protection deadline for the trademark expires, there will no longer be a need to submit an application for extension to the Patent Office of the Republic of Poland. After the amendment, it is enough to pay the fee for the next protection period by an authorized representative or proxy. In addition, the Patent Office was required to provide information about the impending payment deadline, six months before the expiry of the 10-year deadline.

Wider rights from the trademark
Trademark owners will enjoy broader legal protection. The scope of entities that may be liable for infringement of the trademark right is increased – the entities whose services were used in the trademark violation will also be liable. Responsibility, therefore, will be borne by, for example, tenants of market halls that sub-lease trading positions where they sell counterfeit products. This change opens up a new field of activity for the owners of characters and thus a new form of pressure on dishonest sellers. Legal protection will also be increased in the case of transport of counterfeit goods containing trademarks across the territory of the Republic of Poland via transit. Interestingly, the proprietor may also demand that the publishers of dictionaries and encyclopedias mean that a certain word is protected by a trademark in order to prevent its degradation, by recognizing that it is a generic name.

The last significant change is the tightening of the requirements for the use of the trademark. If the proprietor of an earlier right tolerates the use of another sign that is similar or identical to his trademark, he will lose the opportunity to raise objections and revoke the registration for a period of 5 years. Owners of trademarks should therefore pay more attention to the market and not wait with the reaction to the observed activities of the competition in this respect. On the other hand, this regulation has an impact on the certainty of the use of trademarks by entrepreneurs.

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