RELATIVE GROUNDS OF REFUSAL OF A TRADEMARK

Jun 2, 2022

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). The remaining, relative grounds for refusal are examined only when the interested entity opposes to the application within the prescribed period.

CATALOG OF LEGAL GROUNDS OF OBJECTION / OPPOSITION

An exhaustive list of the grounds for opposition to a trademark can be found in Art. 132 (1) of the Industrial Property Law. Importantly, it is a closed catalog, which means that the Office may not refuse the applicant’s right to a trademark as a result of an objection for reasons other than those mentioned in this article.

Therefore, the grounds for opposition are, in particular, those situations where:

  • the registered mark infringes someone else’s personal or property rights;
  • the mark applied for is identical to the registered earlier trade mark and was applied for for identical goods and services;
  • the mark applied for is identical or similar to the registered earlier trade mark and has been applied for for identical or similar goods and services, if there is a risk of confusion on the part of the public;
  • the mark applied for is identical or similar to an earlier reputable trade mark regardless of the scope of the goods and services applied for, if the use of the mark without cause may bring unfair advantage to the applicant or be detrimental to the distinctive ability of the reputed trade mark;
  • the mark applied for is identical or similar to an earlier well-known trade mark and has been applied for identical or similar goods and services, if there is a risk of misleading the public.

WHEN AND HOW CAN I LODGE AN OBJECTIVE / OPPOSITION AGAINST A TRADEMARK APPLICATION?

The time limit for submitting an opposition to the application is a statutory time limit which cannot be reinstated. It is therefore necessary to monitor the publications of the Patent Office and changes in the register – https://ewyszukiownica.pue.uprp.gov.pl/search/simple-search.

The opposition period is 3 months from the date of publication of the trademark application by the PPO in the Patent Office Bulletin. A fee must be paid for the objection, which is currently PLN 600. The objection may be filed both in the traditional form – by post or by personal submission to the Office, and in electronic form – via the PUEUP platform (a trusted or qualified signature is required).

DO YOU HAVE TO OBJECT AN APPLICATION FOR A TRADEMARK?

It depends. As a rule, protection of the brand and applied labels is an important aspect of running a business for entrepreneurs. Consumers usually make purchases and decide to buy specific goods, including based on the name of their brand, the manufacturer with whom the brand is associated and previous positive experiences with products marked with a specific logo. Therefore, ensuring that competing entrepreneurs do not use an identical or similar designation may affect the credibility of the brand, the strength of its branding and, as a result, the purchasing decisions of its existing customers. If there is a concern that your customer will make a mistake and buy another seller’s product only because the seller used a confusingly similar logo, we strongly recommend that you protect your trademark!

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