Fee changes for trademark prosecution in Poland
On October 6 2016 an amendment to the Regulation of the Council of Ministers as of September 8 2016 concerning the protection fees for inventions, utility models, industrial designs, trademarks, geographical indications and topography of integrated circuits was published. The amendment came into effect on October 14 2016 and brought essential changes in the scope of fees for a trademark application.
Before the amendment, the fee for an application in up to three classes of goods or services was PLN 500 for an electronic filing and PLN 550 for filing in paper form. The fee for each additional class was PLN 120. As a result of the amendment, an applicant filing a trademark application in the Polish Patent Office in one class of goods or services will now pay a fee of PLN 400 (if filed electronically) or PLN 450 (in paper form). The fee for each additional class is PLN 120, regardless of the manner of filing.
Moreover, the fee for the 10-year protection period has been unified and is now PLN 400 for each class of goods or services. Before the amendment, the fee was PLN 400 for each class up to three classes, and PLN 450 for each additional class. The fee for publication of information about the grant of a right of protection has remained unchanged at PLN 90.
As regards other changes, the fee for filing an opposition against a trademark application has been reduced from PLN 1,000 to PLN 600.
The amendment has also brought in several essential changes concerning the fees for filing a request for conversion of an EU trademark into a national application, and a request for conversion of an international registration into a national application. As regards conversion of an EU trademark, the fee is now PLN 200 in the case of one class of goods and PLN 150 for each additional class. The fee for conversion of an international registration into a national application is PLN 120 in one class and PLN 100 for each additional class. Before the amendment, the fee for both requests was PLN 550, regardless of the number of classes.
The schedule of fees now includes a new fee of PLN 1,000 for a request for reconsideration of a matter in connection with a decision issued after examination of an opposition. The need to establish this fee resulted from the Law on Industrial Property, which came into effect on April 15 2016 and which revolutionised the system of examining trademark applications and conducting the opposition proceedings before the patent office.
The fees for requests for issuing decisions in litigation proceedings have remained unchanged at PLN 1,000. These fees concern, for example, the requests for cancellation or declaring lapse of a trademark. The same fee is charged for filing a complaint to the Administrative Court. The amendment also contains interim provisions, according to which the existing binding provisions shall be applied with regard to the single fees to be paid for applications, requests or other actions filed before the amendment.
Moreover, the existing binding provisions shall also be applied to the periodical fees, the term of payment of which was due before the amendment, or which were paid before the amendment, and the amount of which was determined in a summons or a decision on the grant of an exclusive right, issued before the amendment.
This article first appeared on WTR Daily, part of World Trademark Review, in December 2016. For further information, please go to www.worldtrademarkreview.com.
European Trade Mark Attorney