Poland: Devil's Tricks Still Being Played…, Or How To Determine The Date Of The Beginning Of The 5-Year Period For Declaring Lapse Of Protection In Poland Of International Trademarks After The Implementation Of Directive No. 2015/2436?

Last Updated: 14 August 2019
Article by Monika Zielińska

In my previous entry to IP Blog - "The devil is in the details..., or from when one should count the 5-year period, during which it is possible not to use one's trademark without consequences?" - I discussed the problems connected with determining the initial date of the 5-year period for declaring lapse of protection in Poland of international trademarks.

The Polish regulation Art. 15215 Par. 2 of the Law on Industrial Property, in the wording as from 16th March 2019, is nearly a literal repetition of the relevant regulation in the Directive. Unfortunately, in this case the literal wording means that the proposed dates are not adapted to the procedure at hand.

After over 4 months from implementation of this amendment, a preliminary response to the question how a third party can determine the beginning of the term for declaring lapse of an international registration in Poland took the examiners of the Polish Patent Office a few days, and it is still only "unofficial information". However, I decided to share this information with IP Blog readers, because it is not known when or whether the Patent Office will decide to issue a formal communication along with the relevant guidelines in this matter.

According to the information that I obtained from the Polish Patent Office by making a phone inquiry on the last day of July 2019, base dates for calculation of the 5-year period of non-use of an international trademark designating Poland are as follows:

NO provisional refusal was issued The date of ineffective expiry of the time limit resulting from the Madrid Agreement or the Protocol for the issuing of provisional refusal (Art. 15215 Par. 2 Point 1 of the IP Law)

Poland has to notify the provisional refusal within 12 months after the PPO receives the notification from WIPO in the case of designations under Madrid Agreement and 18 months for designations under Protocol to the Madrid Agreement. This period shall be added to the date of notification from WIPO to the Polish Patent Office, while the date of notification shall be published in the Madrid Monitor (under INID code 580).

Comment: The initial date established in such way shall possibly apply to the international trademarks designating Poland before 14th April 2016. As from 15th April, Poland introduced the opposition system. However, Art. 15215 Par. 2 Point 1 of the IP Law refers to Art. 1522 Par. 1, which concerns the new procedure implemented after 15th April 2016. This may be misleading and – in my opinion - constitutes a legislative error.

NO opposition was filed The date of ineffective expiry of the opposition period (Art. 15215 Par. 2 Point 2 of the IP Law)

The 3-month opposition period starts from publication in the Bulletin of the Polish Patent Office ('Biuletyn Urzędu Patentowego' - BUP), which is available under the following link: http://portal.uprp.pl/wydawnictwa.html . Therefore, the date of ineffective expiry of the opposition period will be 3 months after the date of this publication.

Comment: However, in order to avoid searching all Bulletins, one has to establish the issue number of the relevant BUP by making a phone inquiry in the Patent Office.

Provisional refusal was issued Date on which the decision to grant protection – issued after an initial refusal of protection – becomes final and binding (Art. 15215 Par. 2 Points 4 and 5 of the IP Law)

The Polish Patent Office assumed that the decision becomes final and binding after 3 months from the date of notifying WIPO by the Patent Office about the decision on granting protection to an international trademark registration (the date of this notification shall be made available in the Madrid Monitor).

Opposition as filed Date on which the opposition was withdrawn (Art. 15215 Par. 2 Point 3 of the IP Law)
Date on which the decision to grant protection – issued after the examination of the opposition – becomes final and binding (Art. 15215 Par. 2 Points 4 and 5 of the IP Law)

In case of withdrawal of the opposition, it was assumed that it shall be the date of issuing a decision on closing the opposition proceedings. However, this date is only to be determined by phone inquiry in the Polish Patent Office.

At the same time, the Patent Office has to clear out whether the date can be at all made available to third parties (namely, the parties not participating in the opposition proceedings or not having legal interest).

As to the date when the decision on granting protection – issued after the examination of the opposition – becomes final and binding, by analogy to the decision issued after a provisional refusal, it was assumed that such decision becomes final and binding after 3 months from the date of notifying WIPO by the Patent Office about issuance of the decision on granting protection.

Well, everyday life and the jurisprudence will determine whether such – quite arbitrary – interpretation of those regulations is appropriate and consistent with the objectives of the Directive. However, for the safety of trading, it is necessary that this interpretation is at least officially communicated by the Patent Office. This will not make the lives of right owners and their representatives easier, who for each international registration will have to carry out an investigation in order to determine one fact – whether the trademark is already vulnerable to revocation, or not.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions