Renseignements pour le réexamen au titre de l'article 24:2 de l'Accord sur les ADPIC (Liste de questions concernant les indications géographiques) ‒ Afficher les détails du document

Poland

In Poland protection for geographical indications is provided through both measures mentioned above, i.e. there are three articles to that effect in the Act of 1993 on Combating Unfair Competition and a separate Part II in the Act of 2000 – Industrial Property Law which provides for the protection of geographical indications by way of registration.

As indicated in response to question 1, there are two separate regimes which are complementary to each other.

[Answer 1: In Poland protection for geographical indications is provided through both measures mentioned above, i.e. there are three articles to that effect in the Act of 1993 on Combating Unfair Competition and a separate Part II in the Act of 2000 – Industrial Property Law which provides for the protection of geographical indications by way of registration]

The regime under Unfair Competition Act applies both to goods and services, while the regime of protection under the provisions of Part II of the Industrial Property Law applies only to goods.

The requirements of Article 22.2 are met by the provisions of Articles 185, 296-300 of the Industrial Property Law, as well as Article 3(2), Article 8 and Article 9 of Unfair Competition Act. The strengthened protection of geographical indications for wines and spirits, as required by Article 23.1 of the TRIPS Agreement, is provided by Article 131(3) and (4) of the Industrial Property Law. The texts both of the Act on Combating Unfair Competition and Industrial Property Law were notified to the WTO Secretariat pursuant to Article 63.2 of the TRIPS Agreement.

See the responses to questions 1-4 above.

[Answer 1: In Poland protection for geographical indications is provided through both measures mentioned above, i.e. there are three articles to that effect in the Act of 1993 on Combating Unfair Competition and a separate Part II in the Act of 2000 – Industrial Property Law which provides for the protection of geographical indications by way of registration]

[Answer 2: As indicated in response to question 1, there are two separate regimes which are complementary to each other.]

[Answer 3: The regime under Unfair Competition Act applies both to goods and services, while the regime of protection under the provisions of Part II of the Industrial Property Law applies only to goods.]

[Answer 4: The requirements of Article 22.2 are met by the provisions of Articles 185, 296-300 of the Industrial Property Law, as well as Article 3(2), Article 8 and Article 9 of Unfair Competition Act. The strengthened protection of geographical indications for wines and spirits, as required by Article 23.1 of the TRIPS Agreement, is provided by Article 131(3) and (4) of the Industrial Property Law. The texts both of the Act on Combating Unfair Competition and Industrial Property Law were notified to the WTO Secretariat pursuant to Article 63.2 of the TRIPS Agreement.]

Since the registration procedure for geographical indications, introduced by the provisions of the Industrial Property Law, started operating as from 22 August 2001, no geographical indication has been registered so far.

According to Article 131(1)(iii) of the Industrial Property Law, the registration is refused in respect of a trademark whose use may mislead the public as to the nature, quality, properties of the goods (services) or as to their origin. Article 131(3) of the Law states that in case of wines and spirits, any trademark, which incorporates geographical elements discordant with the true origin of the good shall be considered as a trademark misleading the public and therefore its registration is to be refused. The difference between the above two provisions is that the first one extends to any goods or services and constitutes a relative ground for refusal, while Article 131(3) is applicable only for wines and spirits and constitutes an absolute ground for refusal.

According to Article 185 of the Industrial Property Law: (1) A geographical indication for which a right in registration has been granted may not be used on the territory of the Republic of Poland by parties, whose products do not satisfy the requirements for the grant of a right in registration. (...) (2) A geographical indication may not be used by the parties referred to in paragraph (1) even if such use is not intended to designate the geographical origin of the products or where the true place of the production of the product is indicated. (3) A geographical indication may not be used by the parties referred to in paragraph (1) even if accompanied by expressions indicating the kind of the product, such as "imitation", "type", "process". (4) The prohibition referred to in paragraphs (1) to (3) shall cover geographical indications in their original reading, in translations or in other related forms. The above provisions are applicable to any products, including wines and spirits.

Pursuant to Article 175, the following constitute geographical indications: (1) designations of origin used to describe products: (a) originating in a specific territory, and (b) the properties of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production or processing of which takes place in that territory, (2) names of regions used to describe products: (a) originating in a specific territory, and (b) the properties or other characteristics of which are essentially attributable to their geographical origin, that is the territory on which they are produced or processed. Geographical indications also mean designations used to describe the products produced of raw materials or intermediate products coming from a defined area larger that the production or processing area, provided that special conditions for the preparation of the raw materials or intermediate products exist and there are inspection arrangements to ensure that those conditions are adhered to. Geographical indications are also geographical designations which do not correspond to the true place, in which the product originates, or other traditional designations, if they are normally used in respect of the goods originating in a defined area.

According to Article 174 of the Industrial Property Law of 2000, geographical indications are word indications which in an explicit or implicit manner designate the name of a place, locality, region or country (territory), which identify a good as originating in that territory, where a given quality, reputation or other characteristic of the good are essentially attributable to the geographical origin of that good.

See the responses to questions 8 and 9 above. Moreover, a given indication may not be registered, if in consequence of its use it has become a generic name.

[Answer 8: Pursuant to Article 175, the following constitute geographical indications: (1) designations of origin used to describe products: (a) originating in a specific territory, and (b) the properties of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production or processing of which takes place in that territory, (2) names of regions used to describe products: (a) originating in a specific territory, and (b) the properties or other characteristics of which are essentially attributable to their geographical origin, that is the territory on which they are produced or processed. Geographical indications also mean designations used to describe the products produced of raw materials or intermediate products coming from a defined area larger that the production or processing area, provided that special conditions for the preparation of the raw materials or intermediate products exist and there are inspection arrangements to ensure that those conditions are adhered to. Geographical indications are also geographical designations which do not correspond to the true place, in which the product originates, or other traditional designations, if they are normally used in respect of the goods originating in a defined area.]

[Answer 9: According to Article 174 of the Industrial Property Law of 2000, geographical indications are word indications which in an explicit or implicit manner designate the name of a place, locality, region or country (territory), which identify a good as originating in that territory, where a given quality, reputation or other characteristic of the good are essentially attributable to the geographical origin of that good.]

The human creativity is involved in the definition of designations of origin (see the response to question 8 above). The geographical environment and the human creativity are equally important.

No other intellectual property rights are involved.

According to Article 176 of the Industrial Property Law, a geographical indication application should contain, among others, the detailed delimitation of the area to which it relates. Thus, it is for the applicant who defines the region, but it is controlled as a part of the product specification by the competent authority.

According to Article 131(4) of the Law in part relating to trademark protection, in the case of homonymous geographical indications for wines and beers, protection shall be accorded on the condition that the subsequent applicant, who has later filed his application alters his trademark at the invitation of the Patent Office so as to make it distinguishable from the trademark earlier registered or applied for registration. Thus, distinguishability is the criterion for homonymous indications for wines and beers.

Pursuant to Article 174(2) of the Industrial Property Law, a foreign geographical indication may only be granted protection in Poland, if it enjoys protection in the country of its origin. Under Article 176(5) of the Law, persons applying for registration of foreign geographical indications shall be required to refer to, or to complete the application with, a document confirming that the indication is provided protection in the country of its origin. In particular, any international agreement under which geographical indications are protectable may be considered as such confirmation document.

Prohibition is implied by Article 174(2) cited in response to question 15 above, i.e. only those foreign geographical indications may be protected in Poland, which are protected in their countries of origin.

See the response to question 8 under I above.

[Answer 8: Pursuant to Article 175, the following constitute geographical indications: (1) designations of origin used to describe products: (a) originating in a specific territory, and (b) the properties of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production or processing of which takes place in that territory, (2) names of regions used to describe products: (a) originating in a specific territory, and (b) the properties or other characteristics of which are essentially attributable to their geographical origin, that is the territory on which they are produced or processed. Geographical indications also mean designations used to describe the products produced of raw materials or intermediate products coming from a defined area larger that the production or processing area, provided that special conditions for the preparation of the raw materials or intermediate products exist and there are inspection arrangements to ensure that those conditions are adhered to. Geographical indications are also geographical designations which do not correspond to the true place, in which the product originates, or other traditional designations, if they are normally used in respect of the goods originating in a defined area.]

See the response to question 14 under I above.

[Answer 14: According to Article 131(4) of the Law in part relating to trademark protection, in the case of homonymous geographical indications for wines and beers, protection shall be accorded on the condition that the subsequent applicant, who has later filed his application alters his trademark at the invitation of the Patent Office so as to make it distinguishable from the trademark earlier registered or applied for registration. Thus, distinguishability is the criterion for homonymous indications for wines and beers.]

According to Article 176 of the Law, an application may be filed by an organization entitled to represent interests of the producers running their business activities on a given territory, as well as by a state or local administration agency competent in respect of the territory, to which the geographical indication relates.

Pursuant to Article 216(2) of the Industrial Property Law it is the Patent Office of the Republic of Poland which has authority in granting protection for geographical indications.

The procedures must be based on the initiative of an organisation of producers or a state or local administration agency.

According to the Regulation of the Council of Ministries of 29 August 2001, the filing fee amounts to PLN 200 (c56 EURO) and the maintenance fee amounts to PLN 500 (c138 EURO).

The criteria also include human factors.

An application concerning a geographical indication shall include: (i) a detailed description of the indication and of the elements with which it is to be used in the course of trade, such as labels and the packaging; (ii) the specification of the goods for which the indication is intended; (iii) the detailed delimitation of the area, to which it relates; (iv) a description of the characteristic features or properties of the products as originating in the defined area; (v) the conditions of the use of the geographical indication, including: the production process, the characteristic features or properties of the products, other requirements to be fulfilled by the persons wishing to use that indication and, where applicable, the inspection arrangements; (vi) the specification of the undertakings which use or intend to use the indication.

See the response to question 22 above.

[Answer 22: An application concerning a geographical indication shall include: (i) a detailed description of the indication and of the elements with which it is to be used in the course of trade, such as labels and the packaging; (ii) the specification of the goods for which the indication is intended; (iii) the detailed delimitation of the area, to which it relates; (iv) a description of the characteristic features or properties of the products as originating in the defined area; (v) the conditions of the use of the geographical indication, including: the production process, the characteristic features or properties of the products, other requirements to be fulfilled by the persons wishing to use that indication and, where applicable, the inspection arrangements; (vi) the specification of the undertakings which use or intend to use the indication.]

See the response to question 22 above (item (ii)).

[Answer 22: An application concerning a geographical indication shall include: (i) a detailed description of the indication and of the elements with which it is to be used in the course of trade, such as labels and the packaging; (ii) the specification of the goods for which the indication is intended; (iii) the detailed delimitation of the area, to which it relates; (iv) a description of the characteristic features or properties of the products as originating in the defined area; (v) the conditions of the use of the geographical indication, including: the production process, the characteristic features or properties of the products, other requirements to be fulfilled by the persons wishing to use that indication and, where applicable, the inspection arrangements; (vi) the specification of the undertakings which use or intend to use the indication.]

Pursuant to Article 246 of the Industrial Property Law, within six months from the publication in the official bulletin "Wiadomości Urzędu Patentowego" of the mention of the registration of a geographical indication, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a right in registration. The opposition may be filed on the same grounds, on which a right in registration may be invalidated. Further action is the following: the Patent Office immediately communicates the opposition to the right holder and invites him to file his observations within a fixed time limit. Where, following the communication of the Patent Office, the right holder claims the opposition to be unjustified, the case is submitted for examination in litigation proceedings. Otherwise, the Patent Office decides on reversal of the decision on the grant of a right in registration and discontinues the proceeding. The decision taken by the Patent Office may be subject to complaint to the Supreme Administration Court.

Any party.

The procedure for foreign applicants is the same as that applied in respect of Polish ones. There are only two differences: one is that, as indicated in the response to question 15, persons applying for registration of foreign geographical indications shall be required to refer to, or to complete the application with, a document confirming that the indication is provided protection in the country of its origin. The second difference is that foreign applicants may act before the Polish Patent Office in registration procedure only when represented by a patent attorney domiciled in Poland.

Term of protection for a geographical indication is unlimited in time and starts from the date of its entry in the Register of Geographical Indications kept by the Polish Patent Office.

Not applicable.

It is not explicitly stated in the Industrial Property Law that use is required to maintain rights. However, pursuant to Article 192(1), any party having a legitimate interest may demand that a decision be taken on the lapse of the right in registration for the geographical indication which ceased to satisfy the requirements for the grant of protection or has not been used for a period of five years and no serious reasons for non-use thereof exist. This shall not apply to indications, the protection of which follows from an international agreement. The burden of proof that the geographical indication is used or that the justified reasons for non-use thereof exist shall be on the holder of the right in registration.

A limit for non-use is five years – see the response to the question above.

[Answer 30: It is not explicitly stated in the Industrial Property Law that use is required to maintain rights. However, pursuant to Article 192(1), any party having a legitimate interest may demand that a decision be taken on the lapse of the right in registration for the geographical indication which ceased to satisfy the requirements for the grant of protection or has not been used for a period of five years and no serious reasons for non-use thereof exist. This shall not apply to indications, the protection of which follows from an international agreement. The burden of proof that the geographical indication is used or that the justified reasons for non-use thereof exist shall be on the holder of the right in registration.]

The authorities monitoring whether the use of geographical indications in respect of agriculture products and foodstuffs are in compliance with the product specification are the county centres for purchasing and processing of agriculture products

Under the Act of 21 December 2000 on the commercial quality of agriculture products and foodstuffs, county centres for purchasing and processing of agriculture products only check whether the products capable of being marked by a given geographical indication are so marked, but no particular legal procedures are stipulated for monitoring the use of geographical indications. In the case provided for in Article 192(1) – see the response to question 30 above – it is for the holder of the right in registration to prove that the geographical indication is used or that the justified reasons for non-use thereof exist.

See the response to question 30. At the demand of the interested party to declare the right in registration for the geographical indication lapsed, the Patent Office takes a respective decision in litigation procedure.

[Answer 30: It is not explicitly stated in the Industrial Property Law that use is required to maintain rights. However, pursuant to Article 192(1), any party having a legitimate interest may demand that a decision be taken on the lapse of the right in registration for the geographical indication which ceased to satisfy the requirements for the grant of protection or has not been used for a period of five years and no serious reasons for non-use thereof exist. This shall not apply to indications, the protection of which follows from an international agreement. The burden of proof that the geographical indication is used or that the justified reasons for non-use thereof exist shall be on the holder of the right in registration.]

On the initiative of the interested party (see above).

[Answer 34: See the response to question 30. At the demand of the interested party to declare the right in registration for the geographical indication lapsed, the Patent Office takes a respective decision in litigation procedure.]

The recognised geographical indication may be used by the right holder, by the undertakings specified in the geographical indication application as those who use or intend to use that indication, as well as by any party, whose products satisfy the conditions for the use of that geographical indication. The latter may also request the Patent Office to be entered in the Register of Geographical Indications as a party authorised to use it. Additionally, under Article 186 of the Law, any parties who, while operating on a given territory, earlier used a geographical indication in good faith, and whose products do not satisfy the requirements for the grant of a right in registration, may continue to use that indication, however for no longer than one year counted from the date of the grant of the right in registration.

The entity that obtained the recognition.

No official fees are involved.

This kind of dispute may be settled by general dispute settlement procedures before civil courts as infringement cases.

See the responses to questions 30 and 31.

[Answer 30: It is not explicitly stated in the Industrial Property Law that use is required to maintain rights. However, pursuant to Article 192(1), any party having a legitimate interest may demand that a decision be taken on the lapse of the right in registration for the geographical indication which ceased to satisfy the requirements for the grant of protection or has not been used for a period of five years and no serious reasons for non-use thereof exist. This shall not apply to indications, the protection of which follows from an international agreement. The burden of proof that the geographical indication is used or that the justified reasons for non-use thereof exist shall be on the holder of the right in registration.]

[Answer 31: A limit for non-use is five years – see the response to the question above.]

Not applicable.

The protection regime does not allow geographical indications to be licensed.

The only provision to a similar effect is Article 186 of the Law under which any parties who, while operating on a given territory, earlier used a geographical indication in good faith, and whose products do not satisfy the requirements for the grant of a right in registration, may continue to use that indication, however for no longer than one year counted from the date of the grant of the right in registration.

The general rule, under the provisions governing trademark protection in the Industrial Property Law, is that a right of protection shall not be granted for a trademark that contains geographical elements which, although literally true as to the territory, region or locality, in which the goods originate, are of such a nature as to mislead the public by false representing that the goods originate in another territory famous of given goods. Article 177 of the Law stipulates that a geographical indication, the use of which would encroach upon a right of protection for a trademark, shall only be eligible for registration, if the holder of the right of protection surrenders his right. Surrender of the right of protection for a trademark shall not be required, where in the application of the geographical indication for registration, filed in agreement with the holder of the trademark registration, the latter is mentioned among the parties authorised to use that indication and the maintenance of his right is not supposed to entail excessive restrictions on freedom to use the geographical indication by other authorised parties. When assessing whether or not the protection of the trademark is supposed to entail excessive restrictions on freedom to use the geographical indication by other authorised parties, that indication’s capability of being used in forms other than the form which is represented by the trademark shall, in particular, be taken into account.

Conflicts between trademarks and geographical indications can arise in the context of opposition or cancellation proceedings before the Patent Office (litigation proceedings), or can arise in the context of a civil action for infringement in civil courts, in unfair competition proceedings in civil courts or in other types of private litigation.

See the response to question 45.

[Answer 45: Conflicts between trademarks and geographical indications can arise in the context of opposition or cancellation proceedings before the Patent Office (litigation proceedings), or can arise in the context of a civil action for infringement in civil courts, in unfair competition proceedings in civil courts or in other types of private litigation.]

According to Article 131(1)(iii) of the Industrial Property Law, the registration is refused in respect of a trademark whose use may mislead the public as to the nature, quality, properties of the goods (services) or as to their origin. Article 131(3) of the Law states that in case of wines and spirits, any trademark, which incorporates geographical elements discordant with the true origin of the good shall be considered as a trademark misleading the public and therefore its registration is to be refused. Pursuant to Article 164 of the Law, a trademark registration may be invalidated in whole or in part at the request of any person having a legitimate interest therein, provided that that person is able to prove that the statutory requirements for the registration have not been satisfied.

Rights in the geographical indications are enforceable under the Industrial Property Law of 30 June 2000 (Articles 296-300 and 302) and under the Act of 16 April 1993 on Combating Unfair Competition (Articles 18-22). Both acts were notified pursuant to Article 63.2 of the TRIPS Agreement.

Under the Industrial Property Law, it is any party whose right of registration for a geographical indication has been infringed or any party enjoying the same status. Under the Act on Combating Unfair Competition, it is an entrepreneur whose interest has been threatened or prejudiced by an act of unfair competition.

Civil regional courts decide in infringement cases. Regular court fees are involved.

Granted registrations for geographical indications are subject to publication in a monthly official bulletin "Wiadomości Urzędu Patentowego".

Under the Industrial Property Law, anyone marking goods not protected by a right in registration for a geographical indication, with statements or signs calculated to give the impression that the goods enjoy such protection, shall be liable to a fine or detention. Anyone putting on the market, or preparing or stocking for that purpose the goods or providing by announcements, communications or otherwise, information calculated to give the impression that the goods enjoy legal protection, while being aware of their being falsely marked, shall be liable to the same penalties.

No.

For the time being, only the Paris Convention for the Protection of Industrial Property which provides means for preventing false geographical indications and the Madrid Agreement (The Hague Act) for the Repression of False or Deceptive Indications of Source on Goods (the accession procedure to the Lisbon Act having been initiated).