How do I file a trademark application and what can we expect during the processing of our application? I hope I've been able to shed some light on the process.

1. Let's start with what must be included in an application for trademark protection submitted to the Patent Office of the Republic of Poland (hereinafter: UPRP). In addition to providing basic contact information for the entity to which the right is to be granted and, if applicable, the details of the representative (if applicable), the application must also specify the trademark itself. First and foremost, the trademark must be presented on the form or attached to the application. Additionally, the trademark type must be specified, its color scheme indicated, and its appearance described. At this point, doubts may arise as to whether it is possible to file multiple trademarks in a single application. However, this is not possible. Only one trademark can be filed as the subject of a single application.

However, if we wish to file a joint trademark application or obtain joint trademark protection with another entity, the application must also include regulations for the use of the mark. In such regulations, we are required to indicate:

1) the rules for using the mark, including the consequences of violating the provisions of the regulations;
2) persons authorized to use the mark or the conditions of membership in the organization referred to in art. 136 paragraph 1 of the Act of 30 June 2000 - Industrial Property Law (hereinafter: the Industrial Property Act) - in the case of a collective trademark;
3) persons referred to in art. 122 paragraph 1 of the Industrial Property Act - in the case of a collective right of protection for a trademark.

The next step is to indicate the goods for which the mark is intended.

The guidelines in this regard specifically address the use of Polish technical terminology and the method of preparing and comprehensively listing goods. Differences in the media used within trademarks also have their significance when filing a trademark application.

If you wish to register a figurative trademark, you must, of course, attach a photograph or print of your trademark to your application. Similarly, if your trademark is a sound trademark, you must attach the medium containing the sound recording of the trademark to your application.

It is also worth pointing out that the Patent Office may make corrections to the documentation submitted as part of a trademark application, but this only applies to the removal of obvious mistakes and linguistic errors.

2. Let's now move on to the next stage of the trademark application process, which occurs after the application has been submitted. Depending on our actions and the accuracy of our application, the Polish Patent Office will issue various decisions:

1) if the application was properly submitted or properly supplemented, the Polish Patent Office will issue a decision granting protection for the trademark, in accordance with the applicant's request;
2) if the trademark application does not meet the requirements prescribed by law, the Polish Patent Office may request the applicant to eliminate the identified errors or omissions, under penalty of discontinuance of the proceedings in whole or in part;
3) the Polish Patent Office may also determine the absence of conditions required to obtain protection for a given trademark; this situation occurs when the sign presented in the application cannot be recognized as a trademark; this happens when that sign is contrary to public policy or good morals, or contains an element of high symbolic value, in particular of a religious, patriotic or cultural nature. The full list on the basis of which the Polish Patent Office may determine the absence of conditions for obtaining protection for a given trademark is contained in Article 129'1, Article 136'1 and Article 136'3 of the Patent Law If any of the negative premises indicated in the above-mentioned provisions occur, the Patent Office will issue a decision refusing to grant the right of protection, which, of course, may be appealed against.

To ensure proper completion of the above-described procedure, you can seek the assistance of specialists, as the application can also be submitted by a proxy. Thank you for reading our latest post on the Technoglogy blog.

This alert is for informational purposes only and does not constitute legal advice.

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