The draft new Industrial Property Law, which has been submitted for public consultation, does not propose a revolution in the field of trade marks, but it does contain several solutions that may have real practical significance. Three areas deserve particular attention: changes to the opposition procedure for trade marks, a new approach to contentious proceedings before the Polish Patent Office, and the introduction of a new institution — the electronic know-how deposit.
These are not changes that turn the industrial property protection system upside down. They may, however, affect the way cases are conducted, litigation strategy is planned, and intangible assets are documented within an enterprise.
Trade marks: faster and more efficient, but not without question marks
In the area of trade marks, the draft is primarily intended to organise and clarify the existing rules. The most interesting changes, however, concern the opposition procedure, i.e. proceedings conducted where the holder of an earlier right challenges a new trade mark application.
The planned shortening of the maximum period available for an amicable resolution of the case — the so-called “cooling-off” period — should be welcomed. The draft maintains the basic two-month period for negotiations between the parties, but any extension would be possible only once, for a maximum of a further two months. This is an important change compared with the current model, under which the amicable period may last considerably longer (in total up to six months).
From a practical perspective, this is a reasonable solution. If the parties genuinely see room for agreement, they are usually able to assess fairly quickly whether a settlement is possible. If, however, one party is not interested in discussions or the parties’ positions are too far apart, a long waiting period merely blocks the further course of the case unnecessarily. The draft also provides for the possibility of ending this stage earlier by filing a statement withdrawing from the amicable resolution of the dispute. This may reduce situations in which the “cooling-off” period becomes merely a tool for prolonging the proceedings.
Another noteworthy solution is the possibility of supplementing the opposition after the amicable phase has ended. In practice, this means that at the first stage the opposition would not yet need to contain full argumentation and complete evidence. If the parties fail to reach an agreement, the opponent will be able to supplement the factual circumstances and evidence. This solution brings the Polish model closer to the practice known from proceedings before the EUIPO and may be beneficial for businesses, particularly from the perspective of costs and efficiency.
An interesting proposal is also that, where the applicant fully acknowledges the opposition, the opposition proceedings would be discontinued and the application deemed withdrawn. However, the draft does not go one step further and does not provide for an analogous effect where there is no response to the opposition at all. This is unfortunate. In practice, applicants sometimes remain entirely passive. Treating the lack of response as acknowledgement of the opposition could further streamline the procedure and limit the conduct of cases where there is no genuine dispute between the parties.
Less positively, the draft does not introduce a broader change to criminal liability for trading in goods bearing counterfeit trade marks. The draft essentially repeats the current solutions, focusing on marking goods with a counterfeit sign and placing them on the market. From the perspective of rights holders, the problem remains the same: the absence of an express inclusion of, among other things, importing, storing or keeping counterfeit goods within the scope of these provisions. In practice, this may continue to lead to a narrow interpretation of the rules and difficulties in effectively prosecuting infringements.
Contentious proceedings: more written submissions, fewer hearings
The second important area of change concerns contentious proceedings before the Polish Patent Office, including cases for invalidation or revocation of a trade mark right.
The draft assumes that, as a rule, cases will be examined in closed sessions, while a hearing will become the exception. A hearing would be held only where the Office considers it appropriate or where a party files a justified request.
This is a change of considerable practical significance. Contentious proceedings may become, to a greater extent, written proceedings in which the preparation of the case at the very outset will be crucial. The application or response to the application will need to contain well-considered arguments, properly selected evidence and a clearly defined strategy. There will be less room for “filling in” the case at a hearing.
On the one hand, this may increase the efficiency and predictability of proceedings. On the other hand, it raises the importance of professional case preparation. For businesses, this means the need to plan litigation strategy earlier and to collect evidence already at the initial stage. In practice, this may favour entities that are better prepared organisationally and financially.
If a hearing is ordered, the draft provides that it will be held remotely. This solution should be assessed positively, especially from the perspective of parties and representatives based outside Warsaw. Remote hearings may reduce the costs of participating in proceedings and facilitate access to the procedure, without the need to appear each time at the seat of the Polish Patent Office.
The draft also provides for greater formalisation of the rules concerning adjudicating panels, including their composition, the qualifications of presiding members and the rules on exclusion of panel members. This may give contentious proceedings a more court-like character and increase their professionalisation.
Know-how deposit: a new evidentiary tool for businesses
The most innovative institution provided for in the draft is the electronic know-how deposit maintained by the Polish Patent Office.
The deposit is intended to cover information constituting a trade secret, in particular technical, technological, organisational or other information with economic value. The duration of the deposit is to be five years, with the possibility of extension for further one-year periods upon payment of a fee.
What is crucial, however, is what the deposit will not mean. The Polish Patent Office is not to examine whether the deposited information actually constitutes a trade secret. Nor will it assess whether the depositor is entitled to that information or what its economic value is.
In practice, the deposit will therefore primarily be an evidentiary tool. It may be relevant in disputes concerning the misappropriation of trade secrets — for example, where know-how is taken over by former employees, confidential information is used by a contractor, or there is a dispute as to what scope of information existed at a given time. An entrepreneur will be able to rely on the deposit, and the court — through the Polish Patent Office — will be able to access it. It will also be possible to make the deposit available to a court expert.
The deposit will not, however, replace trade secret protection. It will still be necessary to demonstrate the conditions resulting from the Act on Combating Unfair Competition: that the information had economic value, was not generally known, and that the entrepreneur took appropriate steps to keep it confidential.
Despite these limitations, the know-how deposit may prove to be a very useful instrument for companies whose competitive advantage is based on knowledge, procedures, technological solutions, data, formulas, technical documentation or other intangible resources. It may help not so much in “obtaining a right” as in better documenting what the entrepreneur had and when.
Practical significance
The draft new Industrial Property Law does not change everything, but it does shift the emphasis in several areas. In trade mark matters, greater importance may attach to a quick assessment of the prospects of settlement and to more efficient conduct of opposition proceedings. In contentious proceedings, the preparation of arguments and evidence from the outset will be crucial. The know-how deposit, in turn, may become an important element of a trade secret protection strategy.
For holders of industrial property rights, the key conclusion is simple: the new rules may reward those who act earlier, more consciously and who document their rights and intangible assets more thoroughly.
Attorney-at-law / Partner
