Trade mark after the amendment of the Industrial Property Law

On 20 February 2019, the Polish Sejm, adopted the Act amending the Industrial Property Law in order to implement the Directive of the European Parliament of the Council (EU) 2015/2436 of 16 December 2015 aimed at approximating the laws of the Member States relating to trademarks.

Trademark definition

The definition of trademark will be changed. Until now, only designation that could be presented in graphic form was considered to be a trademark. This requirement was abandoned in the new definition and it was accepted any designation allowing to distinguish goods from one company from goods of another company and which can be presented in the register of trademarks in a manner that allows determining unambiguous and accurate subject of protection can be considered to be a trademark.

Among the possible types of trademarks, the Act lists in particular the word, including the name, drawing, letter, number, colour, spatial form including the shape of a good or packaging as well as the sound.

It was stated, as a justification for the introduced changes, inter alia, that in the current conditions of the economy and technological progress, the requirement for graphic representation of the mark, taking into account non-traditional trademarks such as sounds, is obsolete.

Extending protection

The procedure for extending the period of trademark protection will be simplified. The payment of the fee for a further period of protection by the right holder will be sufficient for the extension.

Until now, it was necessary to submit an application to prolong the protection period by further 10 years what took place after a decision was issued by the Patent Office of the Republic of Poland.

Trademark claims

Amendment to art. 296 of the Industrial Property Law grants more options in the scope of pursuing claims for infringement of trademark.

The trademark owners will be able to request, for example, cessation of affixing the mark identical or similar to the trademark on packaging, labels, tags, protections as well as of offering or placing on the market, importing or exporting or storing for that purpose, if there is a risk that they may be used in relation to the goods in a manner infringing the trademark right.

Above all, the right holder will be able to pursue claims also against persons who only place goods on the market with a mark affixed to them if they do not come from the right holder or against persons who had permission to use the mark. This is an element that strengthens the protection against “counterfeits” of goods, for which not only the infringer will be liable but also those directly involved in the infringement.

The Act comes into force on the day following its announcement.