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Trademark/Service Mark Protection

Under the Polish 2000 Industrial Property Law, every marking that can be presented in a graphical manner may constitute a trademark, provided that the goods of an enterprise bearing such marking may be distinguished from those of another. More specifically, a word, drawing, ornament, color scheme, spatial form, including the form of a good or packaging, as well as a tune or other sound signal, may constitute a trademark. Polish law does not make a distinction between trademarks and service marks. These terms are synonymous. The Industrial Property Law expressly indicates that whenever it refers to trademarks, it means service marks as well. With respect to trademarks, under the very definition of a product, the latter is synonymous to a service.
In Poland, trademarks are registered with the Patent Office of the Republic of Poland. In order to register a given trademark, an entity or person does not need to be using it at the time of filing an application for registration. However, in order to ensure that the protective right to a trademark does not expire, the applicant should, within 5 years from the issuance of a decision on granting a protective right to a trademark, begin to actually use the trademark in business dealings marking with it the goods and services covered by the registration.

As soon as Poland joined the European Union, Community Trademarks (CTM) became subject to protection in Poland. Trademarks submitted for registration in the countries belonging to the Madrid Agreement and/or the Protocol to the Madrid Agreement may also obtain protection in Poland. The owners of the above-mentioned trademarks are entitled to the same protection in Poland the same way as the owners of domestic trademarks. If the use of a foreign trademark in Poland runs contrary to the public order or morality, it may be banned. However, the registration itself may not be challenged. Similarly, the owners of Polish trademarks may apply for international registration and in the entire EU.

In Polish law, a distinction is drawn between commonly known and renowned trademarks. A trademark is deemed commonly known upon joint satisfaction of the following conditions: (1) it must be known in most of Poland; (2) it must be commonly known to more than 50% of prospective domestic buyers. It may be very difficult to prove that a given brand is commonly known, especially due to insufficient legal regulations and conflicting jurisprudential views in this regard. Renowned trademarks form a distinct category. Renowned trademarks include, for example, Coca-Cola and McDonald’s. A renowned trademark is construed to mean a type of trademark which guarantees the high quality of a product and, therefore, “attracts customers by itself”, as it were. Such a trademark may promote any goods or services other than those for which it was originally used. Renowned trademarks enjoy special protection, whose scope exceeds the confines of specialization. This means that a ban on using a renowned trademark may be issued also with respect to goods of a different type, which are not competitive vis-a-vis those for which a given trademark was registered with the Patent Office of the Republic of Poland.

Provisions of law envisage only two situations in which non-registered trademarks are granted specific rights. In the first, the right of gratuitous use to a marking, which was subsequently registered as a trademark by another entity, is granted to a person who, while conducting small-size business activities, used it prior to registration in good faith. Following registration of that trademark in favor of someone else, the person involved may continue to use the marking, provided that s/he does not exceed the scope of use. However, it does not amount to a protective right for the exclusive use of a marking for specified goods or services.

The other situation applies to a commonly known trademark. Even if a trademark is not registered, the person entitled to it may demand cessation of use of an identical or similar mark with respect to identical or similar goods, where such use may mislead recipients as to the origin of the goods.

There is no requirement to translate foreign names into Polish and one does not need to use a foreign mark translated into Polish. A problem may arise in a situation where someone would want to register a word trademark denoting the type of a product in the Polish language. The Polish word “sok” [Eng. “juice], which does not denote a beverage in any foreign language, but which may be the name of a given firm’s product, may serve as an example. Such a trademark will not be registered in Poland. The same is true of marks containing derogatory subject matter in Polish or misleading recipients as to the geographic origin (e.g., by referring to the name of a locality in Poland).