How to avoid document translation pitfalls in trademark cases

Written documentation is the most common form of evidence in trademark proceedings. Agreements, invoices and statements can all be used to prove use, distinctiveness and other conditions relevant to proceedings. When the evidence refers to the Polish market and is in Polish, the case is clear – documents can be filed as they are. Issues arise when the party in the proceeding provides evidence in a foreign language.

Under Article 242 of the Polish Industrial Property Law, an applicant who, in the course of proceedings before the Patent Office, requests a translation of materials and documents drafted in a foreign language that might indicate the existence of barriers to obtaining a right of protection shall bear the costs of translation into Polish. The office may also request payment in advance and the application will be withdrawn if the applicant fails to pay within the timeframe specified. The same shall apply to translating materials and documents for proceedings before the administrative court.

Current regulations do not exclude the use of a document in a foreign language in administrative proceedings, however, such documents must be translated into Polish if the authority conducting the main proceedings is to review it. All translations should be made by a sworn translator and cover the entire document.

In a judgment issued by the Supreme Administrative Court on 31 May 2007 (reference I GSK 1647/06), it was pointed out that a document drawn up in a foreign language and used as evidence in a case should be translated into Polish, not by summarising selected fragments but by translating the document in its entirety. It was also stated that the translation of evidence could be carried out only by a sworn translator and the obligation to use Polish in the proceedings existed regardless of whether the authority demanded an official translation from a party.

A sworn translator is entitled to translate documents from a foreign language into Polish (Article 13(1) of the Act on the Profession of Sworn Translators). The principle of certified translation applies particularly to cases where the translated documents are crucial pieces of evidence. According to procedural law, factual findings of key importance to a claim cannot be based on materials in foreign languages.

As mentioned, the provisions of the Polish Language Act do not prohibit the submission of foreign-language documents (eg, a witness statement) as evidence in administrative proceedings. However, the act does require translation of documents if official actions are to be taken based on them by a public administration body. This does not change the fact that the original, untranslated document will be considered the official evidence, not its translation, which serves only to establish the document’s content (judgment of the Supreme Administrative Court of 12 July 2016 (reference II GSK 409/15).