Easier to revoke or invalidate a trademark
The amendment of the Industrial Property Law entering into force on 15 April 2016 also introduces major changes in regulations governing the loss of the protective rights to trademarks.
First and foremost, the amendment eliminates the requirement to demonstrate a legal interest in seeking revocation or invalidation of trademark rights. However, the grounds for revocation or invalidation have not changed.
One of the main grounds for revocation of a trademark is failure to use the trademark. Other grounds include the loss of distinctive character, where the mark has become misleading, creating a risk of confusion among consumers as to the nature, properties or geographical origin of the goods, or where the owner of the mark has been deleted from the relevant register.
The grounds for invalidation of the protective rights to a trademark are failure to meet the statutory conditions for obtaining registration or conflict with prior rights.
Problems with standing
It has often been difficult for applicants to prove that they have a legal interest in seeking revocation or invalidation of a registered trademark, partly because of the problems with interpretation of this requirement in the existing case law. The concept of a “legal interest” was not defined in the Industrial Property Law, but it was accepted that it is the same as a legal interest providing standing to sue under the Civil Procedure Code. According to the case law and the legal literature, a legal interest is an objectively existing qualification arising out of substantive law, i.e. it must be based on a specific provision of law. It cannot be contingent or hypothetical but must actually exist at the time the given legal standard is applied.
Meanwhile, given the huge number of trademarks registered and protected in Poland and the European Union, limiting their number by eliminating protection for marks that are not being genuinely used in commerce or which could conflict with others seems a worthy goal and hardly controversial.
This is why EU trademark law and the trademark regulations of most of the member states do not require proof of a legal interest when applying for revocation of a trademark for non-use.
Elimination of this requirement from Polish law means that any person will be able to apply for revocation of a trademark that has not been genuinely used for an uninterrupted period of five years, so long as the person files an application and pays the relevant fee, without having to prove a legal interest.
This change should significantly expedite decisions on revocation of trademarks, eliminating situations where issues surrounding proof of a legal interest made it difficult or impossible to obtain a ruling in such cases, outweighing the substantive aspects of the case.
Invalidation of trademarks
The obligation to prove a legal interest is also being eliminated in proceedings for invalidation of a trademark, but only where the application is based on “absolute grounds,” i.e. the fundamental requirements that must be met for a trademark to be registered. Marks that do not meet these requirements should not be registered, and if they do obtain registration they should be invalidated not because of conflict with the rights of other entities but in light of the public interest, for example because they could be misleading, contrary to public policy, or generic.
Meanwhile, in the case of invalidation of a trademark registration because of conflict with prior rights (trademarks, rights to a business name or other personal rights or property rights), a rule is introduced that only the holder of such prior right may file an application for invalidation—in other words, practically speaking, the applicant must be an entity with a legal interest in seeking invalidation.
Significantly, in the case of an application for invalidation of a trademark, regardless of whether the grounds for the application are absolute or relative, the amendment provides for the possibility of splitting the rights to the mark for a portion of the goods or services, maintaining the date of priority, upon payment of a fee. This means that if the application for invalidation does not apply to all the goods and services, the portion not covered by the application can be set aside and the invalidation proceeding will involve only certain goods and services. Then two identical but independent trademarks will be registered for different goods and services. This will be advantageous for the holder because it will be able to freely dispose of the unthreatened rights, for example by selling them, even though an invalidation proceeding is pending with respect to the same mark for other goods and services.
Transitional regulations
In order to ensure equal treatment of all applicants in proceedings seeking revocation or invalidation of trademarks, the transitional provisions for the amendment provide that it will not be necessary to prove a legal interest with respect to applications concerning trademarks registered under either the new or the old regulations.
Monika Wieczorkowska, Intellectual Property Practice, Wardyński & Partners
