REFUSAL IS NOT THE END OF THE WORLD
Even if your mark was refused registration, all is not yet lost. You can fight to protect your mark - in many cases it is worth considering filing a response to the notice of the Polish Patent Office concerning the grounds for refusal of an application to obtain protection for a trademark. Remember - you must file your response within the deadline set by the Office. Before even starting the procedure for filing a trademark application, it is, however, wise to conduct a registrability examination. This allows you to assess whether the trademark is likely to be registered, including verification if it contains descriptive or prohibited elements.
If your mark contains only descriptive elements or contains prohibited elements, you can file a new trademark application. In a new application you can make modifications to the mark, like adding fanciful word or figurative elements or removing prohibited elements. However, in this case you will have to bear the official application fees again.
OPPOSITION
Third parties may file an opposition to a trademark filed with the Republic of Poland Patent Office. They have a specific deadline to do so - 3 months from the date of announcement of the application for a trademark in the Patent Office Bulletin.
An opposition can be filed by:
1) the holder of an earlier trademark,
2) the holder of an earlier personal or property right,
3) the person entitled to exercise the rights arising from an earlier application for a geographical indication or designation of origin, provided that these indications will be registered.
Opposition may also be based on applications for trademarks with an earlier priority if a right of protection is granted.
NEGOTIATE!
In some cases, an amicable settlement of the dispute may be considered. Once an opposition is filed, the Office examines its admissibility and then immediately notifies the trademark applicant of the opposition and informs both him and the opponent of the possibility of settling the case amicably within two months of the date of service of the information to the party who received it later. At this point, the period when a settlement can be attempted begins. What can be included in such a settlement agreement? For example, an obligation to withdraw the opposition in exchange for an obligation to restrict the list of goods or services for which the mark was filed.
RESPOND IN TIME
If you don't see any chance of an amicable settlement then you can present your position on the case after the settlement period and it is worth doing so! After all, not every opposition is justified. However, remember to respond within the time limit indicated by the Office.
PREVENT
If you want to reduce the risk of an opposition being filed, it is worthwhile to check whether there are trademarks or other signs identical or similar to the one you want to apply for and to review the market environment before applying for registration. To do this, you can search the following databases for information on trademarks applied for and registered: e-search (Poland), Tmview, Madrid Monitor (WIPO), eSearch plus (EUIPO), Global Brand Database (WIPO).