1. Map the dispute before comparing the names
An opposition addresses whether a later trademark application should obtain protection. It is not a damages claim or an automatic prohibition on using a name in the marketplace. Start with the application number, publication date, goods and services, and the earlier right relied on. The comparison concerns particular signs and their protected specifications, rather than business names or Nice class numbers alone. [1] [3]
For a Polish application, opposition must be filed with the Polish Patent Office within three months after publication in the Office Bulletin. That deadline cannot be reinstated. The working calendar should record the publication, final day, filing method and receipt. Commercial discussions do not by themselves stop the clock. Identify the legal grounds and earlier rights before filing: not every missing element can be supplied later. [1] [2]
2. Separate the signs from the goods and services
For a likelihood-of-confusion ground, prepare one comparison of the signs: appearance, sound, meaning and distinctive elements. Then examine the goods and services, their purpose, customers, distribution channels and possible complementarity. A common class does not establish similarity, and different classes do not exclude it. Reputation-based protection and earlier personal or property rights require their own conditions and evidence. [1] [3]
A useful working table links each earlier right to the challenged goods, legal condition, supporting exhibit and remaining gap. A register extract establishes information about a right; it does not normally establish sales, reputation or consumer recognition on its own. Where the conflict is partial, consider a precisely limited opposition or specification. A general assertion that both businesses operate in the same industry does not replace the comparison.
3. The five-year rule: check eligibility, dates and scope
A non-use defence is not available on identical terms against every earlier mark. Under Article 152¹⁹(4) of the Polish Industrial Property Law, the relevant continuous five-year period precedes the filing of the challenged mark, subject to proper reasons for non-use and the exception where five years have not elapsed since registration of the earlier mark. The Office states that the defence must be raised in the response to the opposition. [1] [2]
First establish whether the earlier registration is already subject to the use requirement; then identify the evidence period and goods concerned. EUIPO applies Article 47(2)–(3) of Regulation 2017/1001, referring to the later application’s filing or priority date and the territory appropriate to the earlier right. Do not import the dates used in revocation proceedings into an opposition without checking the separate procedural test. [3]
4. Build evidence around time, place, extent and nature
Potential exhibits include invoices linked to branded products, dated catalogues, packaging, delivery records, advertisements and distribution data. Each should answer a particular question: when, in which market, on what scale and for which product was the sign used? An invoice bearing only the supplier’s company name may need a catalogue or product reference to connect it to trademark use. An undated web screenshot has different weight from several mutually corroborating records.
In Ansul, C-40/01, the Court of Justice distinguished real commercial exploitation intended to create or maintain a market from token use solely to preserve registration. Assessment depends on the sector, products, scale and frequency. There is no universally sufficient minimum number of invoices. Evidence should be assessed together; modest turnover does not end the inquiry in a small, specialised market. [4]
5. Worked example: a coffee brand with a broad specification
Consider a hypothetical earlier mark registered for coffee, tea and confectionery, supported by records concerning roasted coffee only. This is an educational example, not a client matter. Check the sign on packaging, sales dates, customers and the link between invoices and products. Tea sales cannot be inferred simply because tea appears in the register.
If use is established for only some goods, examine how that affects the earlier right considered in the particular opposition. For EU proceedings, Article 47(2) expressly limits the relevant specification accordingly. The next step remains a comparison between the relevant goods and the later application. Successful proof of use does not itself establish likelihood of confusion. Conversely, incomplete use evidence may alter the dispute before the similarity assessment is reached. [3]
6. Settlement and a continuing evidence archive
The Polish procedure includes a settlement stage, normally two months, extendable once to six months on a joint request. A settlement should identify the signs, specifications and procedural steps expected of each party. Restricting an application, withdrawing opposition and agreeing coexistence are different instruments. Check both what must happen in the register and what the business agreement requires in actual trading. [1] [2]
After the proceedings, keep a brand archive organised by year, country and product. Preserve originals, metadata, packaging versions and information about authorised users. This makes future assessment easier but does not replace checks on admissibility, deadlines and reliability. The method described here is educational and cannot guarantee the outcome of an individual opposition.
Sources and further reading
- 1Polish Industrial Property Law — opposition and trademark use ↗
Dz. U. 2023 poz. 1170 ze zm.; art. 132¹,152¹⁷–152²³,169
Official statutory text; check current wording and transitional rules before filing.
- 2Polish Patent Office — opposition procedure ↗
UPRP: Procedura krajowa / Procedura sprzeciwowa
Practical guidance on time limits, settlement and the non-use defence.
- 3EU Trade Mark Regulation ↗
Rozporządzenie (UE) 2017/1001; art. 8,18,46–47
The separate EUIPO procedure, proof of use and the relevant period.
- 4CJEU: Ansul v Ajax Brandbeveiliging ↗
C-40/01, 11.03.2003, ECLI:EU:C:2003:145, pkt 35–43
Genuine rather than token use; assessment in the context of the relevant market.
Rekel Patent — an intellectual-property information website. Publisher: Vadym Rekel.