OF CONSENT OR A BONE OF CONTENTION? JURISDICTION REPORT: POLAND
LETTERS OF CONSENT: A SOURCE
Slawomira Piotrowska Patpol
Te most frequent basis for refusal of protection for a trademark is the existence of valid earlier rights (pending trademark applications or registered marks, or trademarks applied for with earlier priority) in the name of third parties in the same sector.
In order to improve the chances of successful registration, the applicant can obtain and file a ‘letter of consent’ with the Polish Patent Office, which is a written consent for registration of a later trademark from the owner of an earlier, similar mark. However, Polish law does not provide for the possibility of issuing a letter of consent where an earlier trademark is still valid. According to the law, this possibility exists only in cases where protection for an earlier similar mark has already lapsed.
Terefore, issuing and accepting letters of consent may be regarded as a bone of contention rather than a source of consent. Te Supreme Administrative Court (SAC) has had to pass judgment on several occasions. According to ordinary practice, a party dissatisfied with the Patent Office’s decision may file a complaint with the District Administrative Court and, if necessary, a cassation with the SAC.
Te latter court, in the course of reviewing these complaints, was in line with the earlier standpoint of the District Court which, in turn, had agreed with the Patent Office. Based on European legislation, the SAC emphasised that under some circumstances patent offices in EU member states are allowed to refrain from issuing refusal decisions in respect of trademarks which are similar to earlier marks, provided that the owner of an earlier mark has given consent to registration of the later mark. Article 4.5 of the Trademark Directive, the aim of which is to make trademark legislation uniform in all member states, is one of the EC regulations which leaves freedom to each member state as to whether those regulations are accepted into its national laws. It is important to note that this article was implemented into the Polish intellectual property law only in as far as it refers to trademarks whose protection has lapsed.
Te SAC has declared that the system of registration of marks on the grounds of the Law on Industrial Property will guarantee equal protection of the interests of entrepreneurs and customers alike. Terefore, in the meaning of the regulation, the Patent Office may refuse to register a trademark, despite mutual arrangements between professionals conducting business activity, if there is a risk that ordinary customers may be confused and misled as to the origin of goods or services from those entities. In that context, the intentions of entrepreneurs have no direct impact upon creating public order. Te Patent Office is an institution of public administration, which decides on registration of marks, and must take into consideration ex officio all the relevant circumstances specified under the law. In that respect, the
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“THE PATENT OFFICE MAY REFUSE TO REGISTER A TRADEMARK, DESPITE MUTUAL ARRANGEMENTS BETWEEN PROFESSIONALS CONDUCTING BUSINESS ACTIVITY, IF THERE IS A RISK THAT ORDINARY CUSTOMERS MAY BE CONFUSED.”
Patent Office must observe commonly binding legal regulations which also serve to protect consumers’ interest.
Te above mentioned judgments of the SAC clearly confirm the standpoint of the Patent Office on its refusal to accept letters of consent in the course of trademark registration proceedings. Terefore, under the current law, a change in the Patent Office’s standpoint seems rather unlikely.
In light of the above, this question remains unanswered: if the applicant for a later trademark has in hand a written consent for registration from the owner of an earlier mark, will the Patent Office’s denial of registration prevent the later mark from appearing on products or services on the market? Will the interest of ordinary customers be protected well enough?
Slawomira Piotrowska is a European patent and trademark attorney at Patpol in Warsaw. She can be contacted at:
slawomira.piotrowska@patpol.com.pl
World Intellectual Property Review March/April 2012 59
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