Industrial property rights are an important tool in the competitive struggle in the market place as well as being an acknowledged method to secure the rights and interests of an entrepreneur. Therefore it is crucial to remember that registering the right with the relevant office is not enough and one should subsequently undertake acts of diligence which are necessary to maintain the rights. One of them is the timely payment of fees as related to the given industrial property right. In Poland, trade mark rights are granted for a period of 10 years and may be renewed upon payment of a relevant renewal fee prior to the expiry of the previous protection period. Although the law maker provided for some flexibility and allowed for late payment within the so called grace period (i.e. within 6 months following the relevant deadline), any delay in payment is always risky and may, under circumstances, result in expiry of the trade mark right.
Given the fairly long, 10 year protection period for trade marks, observing the renewal deadlines may be an issue for right holders. Thus it is worth mentioning that there is a new legislation being prepared by the Polish government which is intended to make the life of entrepreneurs somewhat easier in this respect – pursuant to the draft legislation the Polish Trade Mark Office will have to notify the right holders in advance of the approaching deadline for renewal of their trade mark rights.
The purpose of the draft legislation is to implement the EU Directive 2015/2436 of 16th December 2015 to approximate the laws of the Member States relating to trade marks. Pursuant to Article 49 sub sec. 2 of the Directive the office shall inform the proprietor of the trade mark of the expiry of the registration at least six months before the said expiry. Simultaneously, the next sentence clarifies that the office shall not be held liable if it fails to give such information. The deadline for implementation of the Directive is 14th January 2019.
Interestingly enough the draft legislation goes beyond the wording of the Directive and also extends the obligation for notification onto other industrial property rights such as patent rights, SPCs, utility models and industrial design rights. Pursuant to the draft law the right holder would have to specifically request such notification, which would then only take place one month prior to the relevant deadline. Such approach is reasonable, as there are no valid reasons why only the trade mark holders should enjoy the privilege of the said notifications.
The Polish government is still working on the draft law and hence it is hard to say what the final wording of the new law will be. However without waiting for the new law to come into force the Polish Trade Mark Office decided to introduce a new service of e-notifications in order to comply with the requirements of Article 49 sub sec. 2 of the Directive. Pursuant to the information published on the office’s website, e-notifications will only be sent to trade mark holders and will apply to trade marks which expire no sooner than in the second half of 2019. The service is planned to be launched in January 2019. The TMO also published a special non mandatory form to be completed by the trade mark holders for facilitating communication with the office. One should identify the trade marks in this form and should also provide the relevant contact details. Interestingly apart from an e-mail address (which is clearly the preferred form of communication) one can also submit a telephone number and thus in theory the e-notification may also be sent via SMS, MMS or alternatively may even be communicated via a telephone conversation.
There is no doubt that both the draft legislation as well as the Polish TMO’s initiative regarding the e-notifications are definitely positive developments which will help the trade mark holders to manage their trade mark portfolios. On the other hand however they may nevertheless result in some issues in practice:
- The TMO and the trade mark holders in Poland have struggled for some time with an illegal practice of various imposters who send the entrepreneurs payment requests pretending to be formal letters from the TMO. There is a risk that the new law and the e-notifications will spur this kind of scam even further and in this context the idea of contacting the TMO in this respect by providing contact details together with information on the relevant trade marks as suggested by TMO seems to be, as a counter-measure, particularly advisable.
- What happens if the TMO fails to notify the trade mark holder and subsequently the trade mark expires? The reply to this question is clear under Article 49 sub sec. 2 of the directive 2015/2436 ("the office shall not be held liable if it fails to give such information"). However the wording of the draft law which is intended to implement the directive is not that unambiguous in this respect, as it only states that failure to receive the information "remains without impact on the assessment whether the right holder complied with the payment term". It could therefore be interpreted that under the draft legislation the right holder could theoretically consider a damage action against the office, whereas such option would be clearly excluded under the Directive. This inconsistency with the Directive’s wording should be definitely rectified within the further legislative process.
