ASSIGNMENT OF RIGHTS TO A TRADEMARK – COGNITION OF THE PATENT OFFICE
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 The Supreme Administrative Court repealed the judgment of the Provincial Administrative Court, which considered this practice to be correct, and pointed out, referring to previous jurisprudence, that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
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