already in force

Changes to trademark law from 16 March 2019

An amendment to the Industrial Property Law took effect on 16 March 2019, transposing into Polish law the Trademark Directive (2015/2436). The amendment is not revolutionary but will certainly have huge practical implications.

Abolition of the graphical presentation requirement for national trademarks

One of the changes in the amendment of the Industrial Property Law is that there will no longer be a graphical presentation requirement for trademarks. From 16 March 2019, it is possible for trademarks to be presented in any form using generally available technology, provided that they are presented in a clear, precise, independent, understandable, durable, objective, and easily accessible manner.

Collective mark and guarantee mark

An amendment to the Industrial Property Law has led to changes regarding particular types of trademarks such as collective marks and guarantee marks. Collective marks were included in the previous version of the act, but the guarantee mark is something new, replacing the collective guarantee mark. This will have certain implications for businesses.

Licensee as claimant: A significant new entitlement

A licensee’s right to bring a legal action in proceedings for infringement of a trademark was introduced by the amendment to the Industrial Property Law. So far, in the case of national trademarks, only an exclusive licensee entered in the register could pursue claims for trademark infringement on an equal footing with the proprietor. This has changed from 16 March 2019.

Trademarks in dictionaries and encyclopaedias

Can a trademark owner require the publisher of a dictionary to indicate alongside the colloquial definition of a word that the word is a registered trademark?

Liability of intermediaries for trademark infringement

The amendment to the Industrial Property Law in force since 16 March 2019 provides that a person whose services were used in an infringement is also liable for infringement of the protected right to a trademark. A trademark owner may demand that such a person refrain from infringing the trademark, turn over unjustly obtained benefits and repair the damage (where the infringement is culpable). Thus the new regulations introduce the intermediary’s own liability for trademark infringement.