A Western European technology business discovered that a local competitor had registered its core brand name as a trademark in Poland – months before the international client had filed any local IP registration. Distribution had already begun. Revenue from the Polish market was now at risk. Every week of inaction widened the window for the third party to entrench its position.
IP portfolio recovery in Poland, when grounded in a bad-faith registration challenge, proceeds through opposition proceedings or invalidation before the Urząd Patentowy Rzeczypospolitej Polskiej (Patent Office of the Republic of Poland). The central legal argument turns on demonstrating that the registrant knew of the earlier mark and filed the trademark application with the intent to exploit or obstruct. A well-documented evidentiary record is the decisive factor.
This case study examines the strategy we deployed, the milestones reached, the complications encountered, and the transferable lessons for any business facing a similar cross-border IP threat.
Client profile and the challenge
The client was a mid-sized software and services group headquartered in Western Europe. It operated under a distinctive brand across several EU markets. Poland was the next target market – and it was already contested.
A domestic entity had filed a trademark application in Poland covering software and technology services under the relevant klasyfikacja nicejska (Nice classification) classes. The filing predated the client's own Polish IP registration by several months. On paper, the local registrant held priority.
The practical consequences were significant. The client could not launch branded products without risking an infringement claim. Licensing discussions with Polish distributors had stalled. A delay of even six months would have meant lost commercial relationships and ceded market position to a direct competitor.
The challenge was clear: demonstrate bad faith, recover the registration, and do so within a timeline that preserved commercial viability. Our intellectual property practice in Poland was engaged to lead the matter.
Legal strategy and rationale
The central question was whether to pursue opposition proceedings or an invalidation action. Both routes are available under Polish intellectual property legislation. The choice depended on timing and evidence.
Opposition proceedings are available within three months of a trademark application being published. That window had passed. The registration had already been granted. This left invalidation as the primary route.
An invalidation action before the Patent Office of the Republic of Poland required demonstrating two things. First, that the client's mark had acquired prior reputation or use in markets the Polish registrant could reasonably have known about. Second, that the filing was made in bad faith – meaning the registrant acted with knowledge of the earlier mark and an intent to interfere with the legitimate owner's rights.
The evidentiary record assembled included: dated marketing materials from the client's EU campaigns predating the Polish filing. distribution correspondence referencing the brand. evidence of the registrant's prior commercial contact with the client's group. and domain registration records showing the local entity's awareness of the mark. Polish intellectual property legislation does not define bad faith exhaustively. Courts and the Patent Office assess it on the totality of circumstances. A strong factual record was therefore indispensable.
A parallel strategy was prepared. If the invalidation route encountered procedural delay, an interim injunction before the Polish civil courts would be sought to prevent the registrant from enforcing the mark against the client's distribution partners. This two-track approach preserved optionality throughout the proceeding.
For businesses facing intersecting IP and technology regulation issues in Poland, the principles governing AI and technology law in Poland are increasingly relevant where branded software products are involved.
Key milestones and complications encountered
The invalidation action was filed within six weeks of our engagement. The evidentiary bundle ran to several hundred pages. The Patent Office acknowledged receipt and assigned the matter to its Wydział Unieważnień (Invalidation Division) within the standard processing window.
The first complication arose at the substantive response stage. The registrant argued that the client's EU-level use of the mark did not constitute use "in Poland" sufficient to establish reputation. This is a recurring argument in Polish IP proceedings. Polish intellectual property legislation requires that reputation or acquired distinctiveness be assessed in the relevant territory. The client's EU-wide advertising spend, while substantial, was not directed specifically at Polish consumers.
We addressed this by narrowing the bad-faith argument. Rather than relying solely on reputation, we foregrounded the direct commercial contact between the registrant and the client's group. Internal correspondence showed that the registrant had attended an industry event where the client's brand was prominently featured. A follow-up email from the registrant, sent three weeks before the Polish trademark application was filed, referenced the client's product by its brand name. This direct knowledge evidence proved decisive.
The second complication was procedural. The Patent Office requested supplementary evidence on the Nice classification scope of the registration. The registrant had filed across a broad range of classes, some of which overlapped only tangentially with the client's actual product lines. We narrowed the invalidation claim to the directly competing classes. This reduced the risk of a partial outcome and focused the proceeding on the commercially critical classes.
The Patent Office issued its decision declaring the registration invalid in the contested classes. The registrant did not appeal within the statutory period. The client proceeded with its Polish IP registration without opposition.
Transferable lessons for cross-border IP matters
Three lessons from this matter apply directly to any international business managing IP exposure across Central and Eastern European markets.
File early, across all target markets. The entire dispute arose because the client had not filed a trademark application in Poland before commencing market entry activities. A pre-entry IP registration sweep – covering all jurisdictions where commercial activity is planned – costs a fraction of what a contested invalidation proceeding requires. The window between announcing a market entry and a bad-faith filer moving is often measured in weeks, not months.
Direct knowledge evidence outperforms reputation evidence. In bad-faith proceedings before the Patent Office of the Republic of Poland. Demonstrating that the registrant had actual knowledge of the earlier mark is more reliable than attempting to establish cross-border reputation. Businesses should preserve all commercial correspondence, event attendance records, and pre-contractual communications involving third parties in new markets. These records become the core of any future invalidation case.
Parallel procedural tracks preserve leverage. Filing an invalidation action does not preclude simultaneous preparation of a civil court injunction application. Maintaining that option visibly – and communicating it to the opposing party – often accelerates settlement or withdrawal. In this matter, the registrant's decision not to appeal was at least partly influenced by the demonstrated readiness to pursue enforcement in parallel proceedings.
A related approach to IP portfolio protection in neighbouring jurisdictions is examined in our case study on IP portfolio recovery in Portugal, which addresses similar bad-faith registration dynamics under a different legal system.
To discuss how a bad-faith IP registration challenge in Poland applies to your situation, contact us at info@ferrazwhitmore.com.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising clients across 46 jurisdictions on IP portfolio recovery, trademark application strategy, opposition proceedings, and infringement claims. Our IP and technology practice covers both civil law systems – including Poland and the broader Central European region – and common law jurisdictions, providing integrated cross-border counsel. Engaging a lawyer in Poland with genuine cross-border experience means working with practitioners who understand how local IP registration rules interact with EU-wide rights and international enforcement strategies. As an international law firm in Poland and across Europe, Ferraz & Whitmore supports technology companies, investors, and in-house counsel in protecting and recovering IP assets across multiple legal systems. To explore how we can build an effective strategy for your IP portfolio in Poland or elsewhere, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.