Logo European Patent & Trademark Attorneys – JWP Poland
  • Trademark watching
  • Experts
Helena Gajek
attorney at law
patent & trademark attorney
Tomasz Grucelski
attorney at law
patent & trademark attorney
Joanna Janoszek
patent attorney
patent & trademark attorney
Alicja Kicińska-Fujawa
attorney at law
patent & trademark attorney
As a result of key changes in Polish trademark law which came into force on 15 April 2016, the Polish Patent Office neither assesses the similarity of a trademark applied for registration to prior trademarks nor checks whether there exist marks identical and/or similar to the one applied for registration. Although these changes are similar to the procedure in force at the EUIPO (the European Union Intellectual Property Office), there are differences, for example the Polish Patent Office does not provide the holders of prior marks with information about a new application potentially infringing their rights. The owner of an earlier, registered trademark should take care of this on his own – he has to check whether such later marks have been filed.

Under the new procedure, other entities may apply for trademarks identical/very similar to the already registered ones, and, what is worse, these trademarks may obtain protection, unless…

The owner of the prior mark files an opposition within 3 months from the date of publication of the information on the new application in the Bulletin of the Polish Patent Office. If no opposition is filed within the above indicted term, identical or similar trademark will be registered, and the only way of eliminating it after registration will be cancellation proceedings, which are more risky, time-consuming and costly.

How the trademark owner should know whether an identical/similar trademark has been filed? He should watch his newly-filed mark, i.e. check whether after the date of its application there appear trademarks identical or similar to his sign.

Moreover, trademark watching should be conducted in order to protect the right to a registered trademark as it gives the possibility of detecting and eliminating competitive signs that have been filed with one of the intellectual property offices in order to obtain protection, as well as a chance to watch the activity of competitors.

We offer the following options of trademark watching:

  • watching in the territory of Poland
  • watching in the territory of all EU countries
  • worldwide watching
  • watching in the territory of selected country/countries

Before applying for a trademark registration, we recommend conducting a clearance search for the selected name. It allows us to establish whether there exist any prior trademarks, and therefore, whether there are entities which may file oppositions against the registration of the proposed sign. As a result of conducting the clearance search, appropriate amendments to the selected trademark can be made, in order to eliminate the risk of oppositions filed by third parties.

Trademark clearance search also allows us to amend trademark application in such a way that it does not fall within the scope of protection of the trademarks that have been filed/registered earlier.