ASSIGNMENT OF RIGHTS TO A TRADEMARK – COGNITION OF THE PATENT OFFICE

Dec 1, 2022

Most changes concerning industrial property rights entered in the registers kept by the Patent Office of the Republic of Poland require the submission of an application and the presentation of relevant documents that justify the entry. Most often it will be the transfer of the right to a trademark, patent or granting an exclusive or non-exclusive license.
According to Art. 229 of the PWP, the Patent Office has limited jurisdiction and possibilities to examine submitted documents. The competence of the office, in accordance with section 2 of the indicated article, is to examine whether the Act has not been violated and whether they comply with the applicable regulations in terms of form. In practice, however, a problem may arise: what should the Patent Office do if the content of the agreement is unclear? It does not indicate, for example, the number of the protection right to be transferred, or contains provisions contrary to the law, e.g. it grants an exclusive and non-exclusive license at the same time. The acceptance of such an agreement by the Office would, for example, lead to the entry of an unlawful change in the register.

This issue was examined in one of the cases concluded with the judgment of the Supreme Administrative Court. In this case, the practice of the Office, which has just made a substantive assessment of the contract due to its unclear content, was questioned. The Supreme Administrative Court repealed the judgment of the Provincial Administrative Court, which considered this practice to be correct, and pointed out, referring to previous jurisprudence, that the scope of jurisdiction of the Patent Office does not cover the substantive assessment of submitted documents.

The Patent Office is not a body controlling the correctness of any civil law regulations binding parties interested in a given entry in the register. These, in fact, would possibly be examined in civil proceedings in accordance with the disposition of Art. 284 PWP. Therefore, the authority is not competent to analyze this issue on its own in the course of the procedure for making changes to the register and should leave this assessment to common courts.

Although the above view may seem controversial, on the basis of it, an entry in the register of an “invalid” license can be made, with no possibility of objection on the part of the Patent Office. It seems, however, that it is necessary due to the clear division of competences between public administration bodies and common courts. In the event that an entry is actually made on the basis of an agreement containing defective provisions or simply invalid, it is possible to obtain security under civil proceedings by, for example, making an entry in the register of pending proceedings or prohibiting the implementation of rights, e.g. from a licence.
Judgment of the Supreme Administrative Court of November 8, 2022, II GSK 1005/19, LEX No. 3430487

Trademark and “silent company”

How to protect Your trademark in a silent company? What is a silent company and what to be aware of when conducting one? We explain all of that in our newest blog post.

PHONETICAL SIMILARITY OF SIGNS

Where a later trade mark is similar or identical to an earlier trade mark registered with EUIPO, following a written complaint by the person concerned, the Office examines the likelihood of confusion and the likelihood of association. As the CJEU points out, a...

SIGNIFICANTLY CHANGED FORM OF THE TRADEMARK

BASIS The reasons for the expiry of the trademark protection right are set out in Art. 169 IPL However, one of them is the loss of distinctive features by the registered trademark as a result of the actions of the owner. Such a trademark will provide information only...

CHRONOLOGY OF ACTIVITIES IN REGISTRATION OF A COMMUNITY DESIGN BAGS – REGISTER FIRST, THEN ADVERTISE

It must be admitted that the fashion industry is one of the most difficult and susceptible to complicated processes of obtaining, enforcing and maintaining intellectual property rights. This translates into both procedures for obtaining rights from the registration of...

DESCRIPTIVENESS AND LEGAL PROTECTION OF A TRADEMARK

A trademark is a sign that allows the recipient to distinguish the goods or services of one enterprise from the goods and services of another enterprise. It can take any form - it may contain a word, a drawing, a letter, a number, a color, it may constitute a spatial...

PROTECTION OF INTELLECTUAL RIGHTS TO A PACKAGING

The July issue of the packaging published an article by Dr. Wojciech Gierszewski, legal advisor and patent attorney, on how to protect the intellectual property rights of packaging producers. The article presents a range of possibilities for the protection of rights...

SECURITY OF CLAIMS IN MATTERS OF INTELLECTUAL PROPERTY

Intellectual property matters require the parties to react quickly to the actions of entities infringing their rights and to efficiently defend allegations of infringement of someone else's rights. Conducting a dispute before a court, despite the statistical speed of...

NEW BOOK ON DESCRIPTIVENESS OF A TRADEMARK

The latest publication by Wojciech Gierszewski, legal advisor and patent attorney, has already appeared in the Profiinfo bookstore. The publication is a practical guide to the descriptiveness of a sign, i.e. one of the grounds for refusing to grant a protection right...

RELATIVE GROUNDS OF REFUSAL OF A TRADEMARK

In the proceedings concerning the application for a protection right for a trademark (i.e., the registration of a trademark), the Patent Office ex officio only examines the existence of absolute grounds for refusal (e.g. descriptiveness, bad faith of the applicant)....

WHAT YOU CAN DO WHEN A COMPETITOR USES YOUR TRADEMARK

Entrepreneurs run their business under a name or logo of their choice in order to appear in the minds of their clients and create a specific image of their own brand. Therefore, it is extremely important for entrepreneurs to react to all activities of their market...

CALL US

+48 (58) 716 71 68

WRITE US