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United we stand… On the amendment to Industrial Property Law

On 31 August a new law was published in the Journal of Laws amending the provisions of the Industrial Property Law. The amendment comes into force on 1 December 2015. Though it is primarily technical in nature, it entails some crucial changes set out below.

United we stand…

One of the most important changes regarding Polish trademark law is the introduction of so called “letters of consent,” which allow for the registration of certain subsequent trademarks but which may be potentially misleading with regard to the origin of goods and services that were protected under an earlier trademark. The amendment allows the registration of a trademark which is similar to the one previously registered or for the registration of which an application has been filed, provided the owner of an earlier trademark consents in writing to the registration of the later trademark.

The above should please entrepreneurs acting within capital groups. The changes in law involve the possibility for subsidiaries to acquire protection rights with respect to a trademark despite its similarity to the trademark of the parent company, which was registered earlier. So far the Patent Office has never allowed this to happen, despite the fact the subsidiary had a relevant permit to register such a trademark.

The justification of the draft law indicated that the introduction of letters of consent would enable the issuance of approximately 1000 more positive decisions with respect to the registration of trademarks which could not have been registered so far.

Industrial design still protected as a work…

It is worth noting Art. 116 of the Industrial Property Law has been repealed. The Article stipulated: “Products manufactured by means of an industrial design and put on the market after the lapse of the right in registration granted for such a design shall not benefit from the protection of author’s economic rights in a work under the provisions of the copyright law.” When the amendment to Industrial Property Law enters into force — and the above mentioned provision ceases to have effect — industrial designs will still be protected as works on the basis of the Copyright Law. So far, upon expiration of the right in registration that lasted longer than 25 years, the design stops being protected by copyright. The amended provisions protect designs to which the registration has expired. It should be noted copyright protection lasts up to 70 years after the author’s death, i.e. much longer than the possible protection resulting from the provisions of the Industrial Property Law. Notwithstanding the above, the designs may be protected under the Act on Combating Unfair Competition.

The above solution seems to have been inspired by the ruling of the Court of Justice of the European Union of 27 January 2011 in the case Flos SpA vs Semeraro Casa e Familia SpA (C-168/09), in which the Court of Justice stated that the regulations of EU directive 2006/116/EU on the term of protection of copyright and certain related rights preclude the regulations of a member state that exclude the designs which have already been registered from being protected under the Copyright Law.

When a disloyal employee discloses the substance of an invention…

A crucial change in patent law is the introduction of so called “novelty relief.” It is well established patents are given for inventions that are new, which means inventions that have been previously disclosed are excluded from patent protection.

Introduction of the above mentioned relief means the possibility to receive a patent for an invention or protection for a utility model (so called minor invention) despite it having been disclosed publicly by third parties, i.e. despite it being no longer new under the legal definition. However, the disclosure has to result from an obvious abuse towards the submitting party or its legal predecessor. Further, an application for such invention must be submitted no later than 6 months from its disclosure.

The changes entering into force on 1 December should be regarded as positive. Apart from them, the 3rd deregulatory law is now undergoing its own legislative path. It also provides for amendments to the Industrial Property Law. One of the most important changes is authorising advocates and legal advisors (on equal footing with patent attorneys) to appear in the Patent Office of the Republic of Poland within the scope of filing and considering applications and maintaining protection of trademarks.

##letter of consent #amendment #copyright #industrial designs #industrial propert law #inventions #ipl #patents #trademarks

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