Brand monitoring, a new obligation for entrepreneurs (?)

On Friday (April 15th this year) revolutionary changes in the regulations on the registration of trade marks in the Polish Patent Office came into force. Since then, the registration of a mark in Poland will be based on virtually the same terms as the registration of European trade marks in the European Union Intellectual Property Office (EUPIO). The Polish Office will not actually verify if earlier trademarks constitute an obstacle to the registration of new marks submitted by entrepreneurs. This means that those entities who already have protection rights for trademarks registered in the Patent Office must vigilantly keep track of whether any competitors trademarks have been registered with the Office’s databases, which may violate their rights – in order to be able to file sustainable opposition.

Only 3 months for lodging opposition

The opposition proceedings (as opposed to the hitherto applicable research procedure) must be initiated by the owner of the earlier trademark. The entrepreneur who owns the rights to a trademark already registered may lodge an opposition within 3 months from the date of publication of a conflicting trademark in the Bulletin of the Patent Office (BUP).

The 3-month term for lodging the opposition is non-recoverable. For the “latecomers” the possibility of cancelling a competitor’s trademark remain, but only after its registration. In practice, the proceedings for the invalidity may be more difficult and more time-consuming than opposition proceedings. Therefore unfair actions of competitors leading to impersonate registered brand “nipped in the bud” by lodging an effective opposition to the Patent Office.

The lodging entity should, among others, point out the trademark against which the opposition has been lodged, as well as the factual and legal basis, as well as appropriate justification.  After lodging the opposition the parties have a 2-month deadline for reaching a settlement (the deadline may be extended to 6 months). The conclusion of such a settlement may involve, for example, the granting of an appropriate license for the trademark use while, at the same time, giving consent to the registration of the trademark submitted by the competitor afterwards.

Entrust your trademark monitoring to a professional… or monitor it yourself

The practical consequence of the introduction of the described changes is primarily the need to constantly monitor the market and carry out at least monthly monitoring of new trademarks submitted to the Patent Office of the Republic of Poland. In the absence of verification of trademarks submitted, the Patent Office may register a trademark confusingly similar to a trademark already subject to prior protection. This can lead to confusion for consumers as to the origin of the goods or weaken the reputation of the trademark.

Due to the large number of applications (which is constantly growing) it can be safely said that a good way to verify the competitors’ trademark applications is entrusting these tasks to a law or patent firm, which not only has the knowledge and experience in the field of legal protection of the brand, but also uses commercial trademarks databases. This way, the entrepreneur will be able to react to unfair actions of competitors, while maintaining the 3–month period for filing an opposition.