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Another amendment to Intellectual Property Law

A mere half a year has passed since the latest amendment to Intellectual Property Law (hereinafter: IPL) came into force and it is likely that another amendment will be adopted soon. On 16 October, the Sejm passed a bill amending the IPL and the Senate approved it without amendments. Although it is now waiting to be signed by President, no other scenario can be expected than the amendment being signed, which will implement significant changes to industrial property law in Poland.

Many changes pertain specifically to patent protection. The amendment harmonises the terminology used in the Polish legal system with that used in the Convention on the grant of European patents and the instruments amending it. The amendment adjusts the conditions for obtaining protection of an invention – if the amendment comes into force in its present wording, e.g. computer programmes will not be deemed an invention (currently this applies to programmes for digital machines, i.e. it has been made somewhat more precise).

One of the most important changes proposed by the legislator is the removal of the requirement to demonstrate a legal interest in the case of proceedings for patent cancellation. Currently, in order to file an application for patent cancellation one must demonstrate one’s legal interest in it. As a result of the amendment, everyone will be allowed to file such an application. It is not unlikely that this will result in a greater number of patent cancellation cases.

Do you want to limit your patent? Now it will be possible!

Moreover, not only does the IPL amendment change the existing regulations, but it also introduces new institutions and options to the right holders. One of them involves introduction of a patent limitation procedure by changing patent restrictions, which can be made at the request of a patent holder (there is no such option at present). In the event that a validity of a patent is questioned, the patent holder will be capable of limiting the scope of protection by amending the patent restrictions, which will allow him to prevent the patent from being cancelled.

The amendments apply not only to patents, but also to utility models, the so-called small patents, of which a new definition is introduced. The amendment provides that utility model is a novel, industrially utilisable (rather than merely useful, as hitherto) solution of technical nature, relating to the shape or structure of an object having a lasting form or made up of functionally related parts having a lasting form (the current regulations deny a protection right to an object consisting of several parts). Hence, this change should be assessed very positively as providing creators of new technical solutions with new possibilities.

New competences for advocates and attorneys-at-law

One of the changes that has given rise to considerable controversies is permitting advocates and attorneys-at-law to plead cases relating to filing for and maintaining protection for industrial designs and geographical indications. This way patent attorneys will lose exclusive rights to handle such industrial property rights, and their exclusive competences will still include cases relating to filing for and maintaining protection of inventions, medicinal products, plant protection products, utility models and integrated-circuit topographies. It is not yet known whether enabling advocates and attorneys-at-law to act in cases involving industrial designs and geographical indications will result in a greater number of applications.

The new regulations are expected to come into force on January or February 2020. 

#assessment of the #distinctive #character of a #trademark

In our October Newsletter we will discuss a judgment of the CJEU of 12 September 2019 in the case C‑541/18 AS against Deutsches Patent- und Markenamt. The judgment involved making more precise the criteria for assessing the distinctive character of a trade mark. The Court has already heard hundreds of cases concerning the distinctive character of a trade mark. This time, however, we are presented for the first time with a judgment of the Court where one of the key subjects of scrutiny was the hashtag indication (specifically ‘#darferdas? – German: Is he allowed?).

So is he allowed or not?

AS filed for registration with the German office for patents and trademarks (hereinafter: DPMA) of a mark in the form of a word element preceded by a hashtag as a trademark. A protection right for the #darferdas? trademark was to be granted with respect to goods belonging to class 25 of the Nice classification, namely in “clothes (particularly T-shirts), footwear and headgear”.  The DPMA denied registration arguing that the mark in question lacked any distinctive character for the purposes of German law. AS complained against the decision to the federal patent court.

In a ruling of 3 May 2017, the court dismissed the complaint arguing that the mark consisted of a related series of characters and words that was essentially made up of utterances common in the German language. It only constitutes a stylistic variant of presenting a subject for discussion. The hashtag only means that recipients are invited to discuss the question “Is he allowed?”.

AS brought an appeal against the ruling to the federal court of justice (hereinafter: FCJ). According to FCJ, it cannot be excluded that using the mark in question on the front side of the clothes corresponds to only one way of using it. The mark could also be placed on the label sewed in on the inside of the garment – then the recipient would perceive the mark as indication of the commercial origin of the goods.

When is using a mark really using it?

The FCJ explained that in order to deem a mark to have distinctive character, and hence to be fit for registration as a trademark, it is not necessary that every possible use of the mark be a trademark use. It is sufficient if there are in practice important and reliable possibilities of using the mark in relation to the goods or services for which one seeks protection in such a manner that it will be perceived by recipients as a trademark without any difficulty. However, having doubts in that regard, the FCJ decided to stay the proceedings and refer to the Court for a preliminary ruling.

In the CJEU’s opinion, when applying for registration of a trademark one is not required, on the date of filing, to indicate or even know how the trademark will be used if registered. There could be cases where a mark, for which trademark registration is sought, has never been used prior to the application. Under these circumstances, the authorities that will be required to establish the distinctive character of mark whose registration has been applied for will only have such criteria for assessment at their disposal as are available under the practices established in a given industry.

The Court also stated that the distinctive character of a mark whose registration has been applied for must be examined with regard to all material factual circumstances, including all likely manners of use of the trademark in question. Such manners will correspond, in lack of other clues, to the manners of use that may be important in practice in the light of the practices adopted in a given industry. This means that if a given mark, in this case #darferdas?, were found both on the front side and inside of a garment, consumers could understand it not only as a mere question “Is he allowed?”, but also as an indication of origin of the goods.

How the applications containing hashtags will be processed will most probably depend not only on the ruling at issue, but also on those using hashtags to mark their goods and services and wishing to register them as trademarks. It might turn out that the ruling will serve as a trigger for a greater number of such applications, which even prior to the ruling had been growing. For instance, three years ago 290 hashtag-preceded marks were registered with the EUIPO, whereas now there are 478 such registrations. Trademarks and hashtags is certainly such an interesting and attention worthy topic that we will certainly return to it.

Newsletter Concurrence 10/2019