Opposing a similar trade mark: how can a business protect its brand in Poland and the EU?

What should be checked when a similar application is detected?

Preserve the application number, applicant, representation of the sign, specification, priority date and publication date. Confirm whether it is a Polish national application, an EU trade mark or an international registration designating Poland or the EU.

Then identify the earlier basis. This will commonly be an earlier registered or pending trade mark, although other earlier rights, reputed marks or protected geographical indications may be relevant in defined circumstances. The opposition should not be wider than the right and commercial conflict justify.

Businesses still deciding where to register may consult Polish or EU trade mark: which protection should a business choose?. An opposition nevertheless requires a separate assessment of the later application.

Does a similar name always justify an opposition?

No. A conventional likelihood-of-confusion analysis considers both similarity of the signs and similarity of the goods or services. Visual, aural and conceptual features, dominant and distinctive elements, the relevant public, purchasing process and degree of attention all matter.

An identical term used for wholly remote goods may not create a conflict. Conversely, graphical differences may not be enough where a shared word element dominates and both businesses offer closely related services to the same customers. The assessment is global and fact-specific.

The strength of the earlier mark should also be examined. A descriptive or weak element generally receives a narrower scope than a fanciful, recognised sign. Reputation may support broader protection, but it needs proper pleading and evidence.

What is the Polish Patent Office deadline and procedure?

An eligible earlier rights owner may oppose a Polish application within three months of publication. The deadline cannot be reinstated. A fee must be paid, and the opposition should identify the parties, earlier right, scope, factual and legal grounds and supporting reasoning.

UPRP notifies the applicant and gives the parties a two-month opportunity to settle. On their joint request, this period may be extended up to six months. If no settlement is reached, the applicant responds and the parties submit arguments and evidence.

Where the earlier mark has been registered long enough, the applicant may raise non-use. The opponent must then show genuine use for the relied-on goods or services during the relevant five-year period, or proper reasons for non-use.

How does an EUIPO opposition work?

An opposition to an EU trade mark application must also be filed within three months of publication. The fee and an identifiable earlier basis must be provided within the applicable period. The opposition can cover all or only part of the specification.

After admissibility, a settlement period allows the parties to negotiate. EUIPO’s standard cooling-off period is two months and may, on joint request, be extended to a total of 24 months. The extended period may be brought to an end under the applicable procedural rules.

The EU trade mark applicant may also request proof of genuine use where the earlier mark meets the age threshold. Evidence should demonstrate place, time, extent and nature of use. A few undated screenshots or isolated materials may be insufficient.

How should genuine-use evidence be prepared?

Organise evidence by goods and services, territory and period. Relevant materials can include invoices, catalogues, packaging, advertising, sales figures, archived web pages, distribution agreements and documents showing how the mark appeared on the market.

Brand owners should collect these materials in the ordinary course of business. Reconstructing five years of evidence shortly before a procedural deadline increases cost and the risk of gaps.

When is settlement preferable to a final decision?

Settlement can be effective where the conflict can be removed by limiting goods or services, territory, sales channels or brand presentation. Withdrawal, assignment, licensing and coexistence may also be considered.

A coexistence agreement should not merely state that the parties tolerate their marks. It should address specifications, territories, channels, brand features, expansion, domain names, online advertising, actual confusion and remedies.

Not every settlement is safe. Broad consent may restrict future enforcement, while market partition between competitors requires competition-law review. The agreement should reflect both parties’ realistic development plans, not just their current Nice classes.

What if the opposition deadline has passed?

The loss of the opposition period does not necessarily remove every remedy, but it changes the route. Depending on the status and grounds, invalidity proceedings, claims against use or negotiation may remain possible. Each has separate conditions, costs and risks.

Monitoring is therefore part of trade mark protection, not an optional post-registration service. It should cover the relevant registers, similar signs and commercially important classes. An alert does not replace legal assessment: many results will be harmless, while some require action before an irreversible deadline.

Trade mark strategy should also be coordinated with ownership of the branding assets. Agencies and rebranding projects need a separate copyright chain, as explained in Copyright in a marketing agency.