Shortening IP proceedings deadlines may cause more harm than good

There has been much legislative activity of late related to intellectual property in Poland. We recently reported on a new bill aiming to amend the act on the system of common courts, which included proposals related to IP courts. In the meantime, another bill has appeared, dedicated solely to the industrial property law. The bill’s aim is not to amend current industrial property law (which has been amended approximately 20 times in the last 20 years) but to create a new act from scratch.  

The aim of this bill is to systematise all current provisions and propose new solutions that enable the protection of exclusive rights, and simplify and shorten procedures (including that of granting protection). However, IP practitioners in Poland have doubts about whether all the proposed amendments are necessary.

One of the proposals refers to the shortening of the opposition period from three to two months. This amendment would make Polish regulations different from those of the European Union ((EU) 2017/1001, Directive (EU) 2015/2436) and a number of EU countries, affecting brand owners, and forcing EU practitioners to adapt their practices for their marks that are registered in Poland.

The opposition period not only serves preparing the notice of the opposition, but in most cases, to become familiar with the trademark application at issue, its analysis, as well as initiate the agreement talks and make a decision. Often an agreement is negotiated in this time and no opposition is filed. Therefore, a reduction in procedure times may increase opposition filings.

A second significant proposal relates to the shortening of the cooling-off period. Currently, the parties have two months to settle the case amicably, starting from when the applicant receives the notice of opposition, and it may be extended to six months by a joint motion from both parties. Pursuant to the proposal of the new bill, the cooling-off period will not be obligatory and will be granted only on both parties’ motions filed within one month of informing the applicant about the opposition. If the parties do so, this period will last two months and cannot be extended. The amendment seeks to shorten this period (which is already shorter than that of the EUIPO where parties may extend this period to 24 months). One, or even three months after extension pursuant to the proposal, is definitely not enough time to reach an agreement.

Justifying these proposals, the Polish Ministry of Development and Technology underlines the fact that shortening the opposition deadlines may speed up the proceedings and will influence the certainty of the exclusive rights. However, the opposite may be true.

Even assuming that fewer oppositions will be filed and more trademarks will be registered without opposition against them, it may lead to a situation where more applications for the cancellation of marks will be filed. Therefore, it is not guaranteed that the shortening of the opposition-proceedings deadlines will lead to an increase in the certainty of the granted rights.

The Polish Ministry of Development and Technology emphasises in its reasoning that even if there is no provision for the extension of the cooling-off period, parties may use the provisions of the administrative procedural code, which provide for a suspension of the proceedings. The public administration authority may order a suspension of the proceedings if a party upon whose application the proceedings have been initiated applies for the suspension. If no parties apply to have the suspension lifted within three years of the proceedings being suspended, the opposition notice shall be deemed withdrawn. This might be a solution, nevertheless, it requires additional action from the parties. Using the suspension may prolong the proceeding to three years and may have the opposite effect of that intended by the ministry.

There are also proposals that can improve the current proceedings in the new bill; one of which is introducing the notice of opposition. Currently, the opponent, while filing the opposition in Poland, is obliged to submit grounds for and scope of the opposition. The opponent may submit more evidence in later stages. However, it is obligatory to submit the notice of the opposition in its entirety within the substantiation. The bill proposes to submit the notice of the opposition within a brief presentation of the facts of the case. In the event of an agreement between the parties, this will avoid the costs associated with gathering evidence in a situation where the dispute can be resolved at an early stage.

We agree that each IP office should look for opportunities to speed up the proceedings, and we support efforts with such an aim. However, shortening the deadlines is not an appropriate way to do so.