Opposition Proceedings in Poland During Transitional Period

In May 2016, we wrote about the introduction of the pre-registration trademark opposition system in Poland, after the relevant amendment entered into force on April 15, 2016.

Under the previous system, the Polish Patent Office (PPO) conducted substantive examination on absolute and relative grounds for the refusal of trademark applications. Holders of prior rights had two non-mutually exclusive options to try to prevent the registration of a conflicting mark – they could file observations after the publication of the trademark application, and they could file oppositions within six months of the publication of the decision to grant trademark registration (post-registration opposition).

With the introduction of the new pre-registration opposition system, applications filed as of April 15, 2016 are examined by the PPO only with respect to absolute grounds, while holders of prior rights may file oppositions within three months from the publication of applications.

But what happens with the applications filed before April 15, 2016?

The PPO’s interpretation of transitional provisions and how they will be applied is the following – first, the PPO will examine applications filed before April 15, 2016 both on absolute and relative grounds; second, holders of prior rights may still file observations against them, as long as the examination is not yet completed. However, neither pre-registration nor post-registration oppositions will be available against those applications.

Once the protection for these trademarks is granted and notice of their registration is published, it is only possible to contest them by filing invalidation actions. The new invalidation proceedings are, procedurally and in terms of fees, analogous to post-registration opposition proceedings that existed before the changes came into force.

By: Katja Hafner

For more information, please contact Katja Hafner at our Slovenia office.