This country-specific Q&A provides an overview of Intellectual Property laws and regulations applicable in Poland.
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
Industrial property rights (further: IPR) include:
Patent protection may be granted to inventions in any fields of technology, provided they are new, involve an inventive step and are industrial applicably.
SPC is an intellectual property right that serve as an extension to pharmaceutical patent right.
Utility model protection may be granted to any new, useful solution of a technical nature affecting shape, construction or durably assembly of an object.
Design isa new and individual form of a product or its part representing the features of the outline, shape, colours, structure, or ornaments of the product that is new and has individual character.
Trade secret is technical, technological, organizational information or other information having an economic value which, as a whole or in a particular combination and collection of elements are not commonly known to people usually dealing with this type of information or are not easily accessible to such people, provided that the person authorized to use the information or dispose of it undertook, with due diligence, actions to keep them confidential.
A trade mark may include any sign if the sign is capable of distinguishing goods of one undertaking from those of other undertakings, as long as the representation is clear, precise, self-contained, easily accessible, legible, durable and objective.
Rights to prevent unfair competition
An act of unfair competition means any act contrary to the law or to good practice, which impairs or infringes the interests of another trader or of the clients. The general clause is followed by prohibitions on acts of unfair competition, e.g. false or misleading designation of an undertaking or products, the disclosure of trade secrets, hindering market access, unfair advertising, or the sale of products to consumers accompanied by an award of free bonuses in the form of products or services other than those sold.
Collective and certificationtrademarks
A collective mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings.
A certificationmark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.
Geographical indications are word indications which in an explicit or implicit manner designate the name of a place, locality, region or country (territory), which identify a good as originating in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to the geographical origin of that good. A foreign geographical indication may only be granted protection in Poland, if it enjoys protection in the country of its origin.
b) OTHER CREATIONS, TECHNOLOGY AND PROPRIETARY INTERESTS
Copyright legal protection is granted to all objects recognized as a “work”, which is a term that denotes any manifestation of a creative activity of individual nature, established in any form, irrespective of its value, purpose or form of expression.
Topographyis a solution based on the spatial, expressed in any way, arrangement of elements, of which at least one is the active element, and all or part of the integrated circuit connections, which is understood as “one or multi-layer spatial product composed of elements of semiconducting material forming a continuous layer and their conductive interconnections and insulating spaces, inseparably interconnected, intended to perform electronic functions”.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patent can be granted for a maximum of 20 years, subject to the SPC (see below).
SPC may extend patent protection for medicinal products and plant protection productsby up to five years.
Utility modelsare granted for 10 years.
Protection right for designis granted for a maximum period of 25 years, provided that every 5 years the right will be extended along with payment of fees.
Trademark protectionlasts for 10 years and may renewed next 10-year periods.
The protection of a geographical indication is indefinite.
In general copyrightis protected for 70 years after the author’s death.
Topographylasts 10 years from the end of the calendar year in which the topography or integrated circuit containing such topography was placed on the market, or the end of the calendar year in which the topography was filed at the Patent Office, depending on which of these dates expires earlier.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
The general rule is that the first owner of an IPR is the inventor, designer, author who created the work. The first owner of a registered trade mark is the named applicant.
If the IPR was created by an employee in the course of the employee’s obligation, the employer is the first owner, unless the parties agreed otherwise of the right. The same applies to inventions developed by mandataries.
Where IPR is accomplished by the creator with the entrepreneur’s assistance, the entrepreneur may exploit the IPR for his own purposes. In the contract the parties may agree that the entrepreneur is entitled to the IPR, in whole or in part.
Which of the intellectual property rights described above are registered rights?
The following rights may be registered under the Polish law: patent, SPC, utility model, design, trademark (including collective marks and certification marks), geographical indication and topography.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
The right to obtain a IPR registration belongs to the creator. If an invention has been created jointly by more than one person, the right to obtain a patent belongs to them jointly. However, should an invention be made in the course of employment or in the execution of other contract, the rights to obtain the patent belong to the employer or the commissioner, unless otherwise agreed by the parties involved.The proprietor(s) of a patent can apply for an SPC.
To obtain IPR registration it is necessary to submit an appropriate application to the Polish Patent Office (further: PPO) and pay the application fee.PPO examines the application to a different extent depending on the respective IPR, for example: in case of patents and utility models there is a mandatory search and publication; in case of trademarks PPO examines absolute grounds of refusal and publishes the mark and the opposition period starts; in case of design, geographical indication and topographies there is just formal examination. If the application complies with the legal requirements and if there is no obstacle to registration, PPO grants the protection. The applicant shall pay the protection fee and after that applicant receives a certificate of registration.
How long does the registration procedure usually take?
The patent registration usually takes about 3-5 years. Currently, the utility model application procedure is 3 years and design procedure takes about 6 months. Model registration of a trademark in Poland takes about 8 months. The geographical indication registration procedure for agricultural products and foodstuffs lasts at least 18 months. The term depends on complexity of the case.
Do third parties have the right to take part in or comment on the registration process?
By the time the decision on granting the right is issued, third parties maysubmit their reservations to PPO concerning: a) in patent registration proceeding –grounds that may prevent grant of a patent; b) in trademark registration proceeding – absolute grounds of decision. Moreover, within three months form application’s publication in PPO’s Bulletin, third party may file an oppositionagainst trademark application based on relative grounds.
What (if any) steps can the applicant take if registration is refused?
Applicant may file a motion to reexamine a decision. The applicant may file a complaint to the Provincial Administrative Court in Warsaw.The decision of the provincial ProvincialAdministrative Courtmay be subject to a cassation appeal to the Supreme Administrative Court.
What are the current application and renewal fees for each of these intellectual property rights?
Official application fees
The amount of the fee in PLN
Patent and utility models
1. in one class;
2. for each subsequent class
Year of protection
The amount of the fee in PLN
first period (1st, 2nd and 3rd year)
first period (1st, 2nd and 3rd year)
second period (4th and 5th year)
third period (6th, 7th and 8th year)
fourth term (ninth and tenth year)
first period (1st-5th year of protection)
second period (6th-10th year of protection)
third period (11th-15th years of protection)
fourth period (16th-20th years of protection)
fifth period (21th-25th years of protection)
for another 10-year period (for each class)
the first period, covering a period of up to five years
the second period of integrated circuit topography protection
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
All fees should be paid before the end of the expiry of the protection period. If IPR owner fails to pay the renewal fees within the due time, there is 6 months grace period when IPR may be renewed by paying an additional fee of 30% of the fee due. The additional six-month period cannot be restored.
What are the requirements to assign ownership of each of the intellectual property rights described above?
The IPR, right to obtain IPRas well as the priority is transferable.As to the copyrightonly economic rights are transferable. The IPR transfer agreement needs to be concluded in writing in order to be valid. An agreement to transfer the author’s economic rights specify the fields of exploitation it covers,if contract is not concluded in writing it may be considered as licensing.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Registering an assignment is not mandatory and does not render the assignment invalid. However the transfer of the IPR becomes enforceable with respect to third parties upon the entry of said transfer into register.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
License agreement shall be concluded in writing in order to be valid. However a non-exclusive license agreement of copyrights may also be concluded in a different form. A license agreement shall include the scope, territory and time of such use. An license of copyrights have to contains the fields of exploitation specified in the contract.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
There is no mandatory requirement to register licenses of IP rights under Polish law. The license shall, at the request of the interested party, be entered in the IPR register.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
A holder of an exclusive license entered into the register may make claims for the infringement of the IPR equally with the proprietor of the IPR, unless the license agreement provides otherwise.Moreover, with the consent of the trademark proprietor, all licensees (whether exclusive and non-exclusive) may bring an action for infringement, unless the license provides otherwise. An exclusive licensee may bring an action for trademark infringement of the right of protection if despite being summoned, the proprietor does not bring such an action within a reasonable time.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
IP law provides criminal liability infringement of IPR.Perpetrators of the criminal offencesare always prosecuted at the request of the injured party. The penalties for such a crime are fine, limitation of freedom or imprisonment for a period of up to two years.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
Civil court – interim injunction; infringement, non-infringement; trademark and design cancellation proceeding as a counterclaim.
The Patent Office –cancelation and declaration of the lapse of IPRs. This cases are revised by administrative court.
Alternative dispute resolution is not a common practice. These solutions are mainly used in cases related to internet domain protection.
What is the length and cost of such procedures?
Civil proceeding cases tend to take approximately 2–4years from commencement to reach first instance.Appeals in civil cases typically take around 2-4 years. Length depends on the complexity of the case and the overall value of the claims. Costs depends on the complexity of the case.
Proceedings before PPO tend to take approximately 2 years from commencement to reach first instance trial. Appeal proceedings on the merits last approximatively 2 years.Costs depends on the complexity of the case.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
As of 01.07.2020 it is planned to create four departments for intellectual property matters at District Courts in Gdansk, Lublin, Poznan and Warsaw, as well as two specialized departments in the Courts of Appeal in Warsaw and Poznań. All newly created departments will have the competence to hear a dispute on matters relating to intellectual property including EU trademarks and Community designs. The IP department in Warsaw court will have exclusively competence in intellectual property matters of a technical nature.
Complaint starts the litigation. Defendant has the right to answers the complaint. A counterclaim can be brought the latest in the answer to the claim or, in case there was no answer – in the contest of decision rendered in absentia or during the first hearing that the defendant has been informed about or called to.Next judge will set a date for the a preparatory meeting. If the dispute cannot be resolved, the court prepares the hearing plan with the participation of the parties. There is a requirement to lay out all claims and evidence in their first documents within the litigation. In business cases evidence from witness testimonies may be allowed by the court only if, after exhaustion of other means of evidence or due to lack thereof, certain facts have not been clarified which are crucial for the adjudication of a case. In the event that special information is required, the court, having heard the petitions of the parties as to the number and selection of expert witness, may summon one or more than one expert witness to testify.The judgment is issued, as a rule, when the evidentiary proceeding is conducted in full. An appeal may be lodged against the sentence.
What customs procedures are available to stop the import and/or export of infringing goods?
Customs procedures may either be based on the EU regulation and/or Polish law.At the request of an interested party or ex officio,Customs may suspend or detain suspected infringing goods at the border. TheIPR holder may submit an application for action in Customs. There are no official application fees. An application for action affords protection for one year and can be extended.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
Claimant does not have to comply with any preliminary requirement before commencing judicial proceedings. Nevertheless, it is advisable to send a prior warning letter and request a declaration to cease and desist. Claimant is obliged to inform the court if he made an attempt to solve the case in amicable way in statement of claim. If such attempt has not been taken, the claimant must give a reason why that happens. The lack of the agreement talks before filing the claim can not be the base to dismiss the statement of claim.
What options are available to settle intellectual property disputes?
Parties may settle a dispute at any time, whether before, during or after commencing proceedings. Parties or court can initiate a mediation procedure. In the context of a legal dispute, the judge shall invite parties to settle the case.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
The general rule in Polish law is that the burden of proof to establish infringement rests with the claimant.Parties may submitted all kind of evidence, including: documents, witnesses, expert opinion, inspection.
Claimant should proof, in relation to;
patent and utility models– that the contested product has been reproduced/ manufactured following a process that reproduces the patent’s/ utility model’s claims;
industrial design– that the contested design produces the same impression that the prior design;
trade secrets– that the third party use or disclose an unlawfully acquired trade secret or to use or disclose a trade secret in breach of a contractual or other duty.
Trademark –double identity; or that the contested sign is identical or similar to the prior trademark, designates identical or similar products or services and creates a likelihood of confusion for the consumer; or renown character of the trademark and fact that by unjustified use infringer takes unfair advantage of or when the use damages without justification the distinctive character or the repute of the trade mark.
geographical indication– that the geographical indication was unlawfully used by third party.
topography – that the protected topography are reproduced or commercially exploited or detained, used, shipped, exported or imported for this purpose.
copyrights – that third parties are exploiting the economic rights connected to the protected work for example reproducing, or anyway using the copyrighted work without the prior authorization of the copyright holder or that the moral rights were infringed.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
The court shall use in all evidence submitted by the parties. If case requires special knowledge court, at the request of the party,may use expert opinion. The opinion of expert is issued by a permanent legal expert entered in the register maintained in regional courts or other person that is known to have adequate knowledge in the field.
By informative claim IPR owner may request the infringer to disclose information on the origin and distribution networks of the infringing goods or services advertised/marketed/sold.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
Evidence and information are submitted in writing, as well as verbally at the hearing. The court is free to assess the evidence provided by the parties, unless otherwise stated by the law. Therefore, there is no kind of pre-fixed rules for the evaluation of the evidence for the judges, but they must explain their motivation in their rulings. Cross-examination is not admissible.
What defences to infringement are available?
There are many defenses against infringement actions in Polish law.The most common is response including that the intellectual property right is invalid.Defensesalso include:
private, non-commercial use,
exhaustion of IPRs,
Who can challenge each of the intellectual property rights described above?
IPRs may be challenged at the request of any person. No legal interest is required.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
The IPRs may be challenged during the registration process by:
reservations from the third partyconcerning grounds that may prevent grant of a IPR until end of the application proceeding;
opposition in case of trademark application within 3 months following a publication notice.
In case of patent, utility model and design, ay person may file a substantiated opposition to a final and non-appealable decision within 6 months following a notice of the grant of said right having been published in “WiadomościUrzęduPatentowego“.
The interested parties after the granting of the IPRs may also file the application for IPRs invalidation or revocation in case of trademark.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
The IPRs may be invalidated if statutory requirements to obtain a IPRs have not been satisfied.
Oppositions, cancellations and revocation proceedingsare held by PPO. The contentious proceedings before PPO are adversarial.
As of July 1, 2020 it will be possible to file counterclaim in the civil proceeding regarding cancellation or revocation of trademark and cancellation of design.
In civil cases,an action shall be brought before the court of the first instance in whose region the defendant’s place of residence is located.Actions in the case of tort claims may be instigated before a court within whose region the event which caused damage took place.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
The party having legal interest may bring an action to determine that the activities taken or intended by him do not constitute an infringement of IPR.
PPO may grant a compulsory licence for patent, if the statutory conditions are met. Any license to use intellectual property right will limit the ability of the owner to file an infringement suit against a defendant.
A person, who pursuing his local economic activity on a small scale and used the sign in good faith that is later registered as a trade mark by another person, may continue using the sign free-of-charge to the same or smaller extent.
The IPR does not extend to actions concerning the goods or processes, including, in particular, the offer of the goods for sale or placing of on the market, if the goods have been previously marketed within Poland or European Economic Area by the proprietor or with his consent.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
The following claims may be asserted in civil law proceedings:
(a) that the infringements be discontinued
(b) that the effects of the infringements be removed,
(c) deliver up the unlawfully earned benefits
(d) claim for damages on general terms.
Additionally in case of industrial property rights, damage can be claimed through payment of cash in the amount corresponding to the licence fee or other relevant remuneration which would be due on the pursuing of the claim for the proprietor’s consent to use the trademark.
In case of copyright damage may be additionally calculated by paying an amount of money equal to double value of relevant remuneration which, at the time of its enforcement, would be due on account of the rightholder’s consent to use a work.
If the claim is based on unfair competition, the plaintiff may request that a relevant statement to be made once or several times, specifying the required form and content of such a statement
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
Costs include court fees, attorneys’ costs, expert’s fee, translation and the appearance of witnesses. Their amount can vary depending on the complexity and technicality of the case, the strategy and the arguments raised in defense. The costs for IPR enforcement proceedings follow the general principle that the losing party bears the costs.
Has the COVID-19 pandemic caused any changes (temporary or permanent) to the protection or enforcement of intellectual property? For example, changes to deadlines, filing or evidence requirements or court processes.
Due to the Covid-19 pandemic, PPO and Polish courts declared a judicial break. Between 31 March and 24 May, judicial and procedural deadlines before courts and offices have been suspended as same as the time limit provided for by the administrative law. From March 31 to May 31 no hearings were held, except for urgent matters listed in the bill. All actions taken during this time remained valid. The new law that entered into force on May 16, 2020repeals the prohibition to hold hearings and public sessions during the epidemic of Covid-19. The bill enters the possibility to examine the cases during e-hearings. The e-hearing shall be basic form of conducting hearings.
Between 8 March and 30 June 2020, the deadlines for filing an opposition against trademark applications are interrupted or withheld.The 3 month opposition period will start again on 1 July 2020 – this means, in practice, that the registration procedure of trademark applications being before or within the opposition window is prolonged, as well as the time limit to file oppositions against such trademark applications.
The same rule applies also to time limits for submitting a Polish translation of a European patent with the Polish Patent Office. Between 8 March and 30 June 2020, the deadline for filing the translation is interrupted or withheld, and starts again on 1 July 2020;. Tis rule, however, does not apply for opposition against applications for designs, utility models and patents.
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