What does the right to a trademark give us – use of a trademark
The right to a trademark guarantees its owner an almost unlimited exclusivity of use of the mark for specifically indicated goods and/or services in relation to any third parties.
This type of exclusivity is a breach among all other industrial property rights, because a well-“nurtured” right can serve the entrepreneur for many years, depending on economic needs.
Entrepreneurs who are happy owners of brands with a value reaching hundreds of thousands or even millions of zlotys know well that we can benefit from the law at a fairly cheap cost, which gives quite substantial profits and an excellent tool for protection against competitors practically throughout the entire life of the company, and even longer.
BUT! The value of the monopoly held in the form of trademark rights is not unconditional. It should be remembered that the right to the trademark lasts 10 years, after which time this right must be extended by paying the required fee to the account of the authority that registered the mark. Otherwise, the trademark enters the so-called public domain, and thus appears on the market as a potentially tasty morsel to be “seized” by other competitors. In such a case, we can no longer say that the use of a trademark without the consent of its owner will be unlawful use, since we lose this right – at our own request.
There are (in principle) no obstacles to re-applying for protection of such a mark, including by other entrepreneurs. In our law, there is a “first come, first served” principle. At this point, we omit considerations concerning whether the re-registration of the same mark by another entrepreneur will have the same field of impact and whether it will be an effective tool of attack or defense. It should only be noted that this issue is legally quite complicated. Nevertheless, it is a fact that the Industrial Property Law Act does not protect an unregistered trademark – except for a well-known mark. Only registration of a mark, whether in the Polish Patent Office or EUIPO, will give the entrepreneur the right to exclusive use of such a mark in a given area.
Obligation to use a trademark
There are more traps waiting for entrepreneurs, threatening to lose a trademark. It is not enough just to watch over the extension of protection at the end of the 10-year protection period. The condition for safe maintenance of exclusivity is the use of trademarks.
Pursuant to Article 169(1)(1) of the Act of 30 June 2000. Industrial property law, “the right of protection for a trademark expires as a result of non-use of the registered trademark in a genuine manner for the goods covered by the protection right within an uninterrupted period of 5 years, after the date of issuance of the decision on granting the right of protection, unless there are important reasons for its non-use”. The condition is to submit an application to the appropriate office. Therefore, the initiative in this area belongs fully to entrepreneurs.
The quoted provision often gave sleepless nights to patent attorneys watching over the huge portfolios of clients’ trademarks. This is a long norm that accumulates a number of instructions. Not only does it show that:
- trade mark must be used, but also that the trade mark must be
- the use of the trade mark must be genuine,
- relate to legitimate goods and, in addition,
- indicates the period after which the right may be lost – the so-called temporary cut-off point.
Loss of trademark rights – trademark expiration
In practice, there are a number of problems related to the date on which the right to a trademark may expire. This is not usually an important moment, because it determines the possibility of its owner recognizing when the use of a trademark without consent is still unlawful and when it ceases to be an unlawful act. It has happened more than once in the jurisprudence of the Polish Patent Office that an incorrect indication of the date of expiry of the right in the application for revocation resulted in the dismissal of the application for revocation of the mark. As a result of such a mistake, an entrepreneur who wanted to “annihilate” an unused right from the market had to leave empty-handed. A potentially simple condition, due to the complexity of its interpretation in the case law, could therefore cause considerable damage.
Unlawful use of a trademark takes place only when a given entrepreneur has a legal tool to oppose such use.
After years of considerable uncertainty, the Supreme Administrative Court issued a very important ruling (judgment of 30.10.2023, ref. no. II GSK 842/20), which – hopefully – will introduce the desired legal certainty – which lawyers always want the most.
In the cited judgment, the Supreme Administrative Court expressed its opinion unequivocally on the subject of the obligations of the Polish Patent Office with regard to the date on which the expiry of the right to a trademark should be determined, even if the applicant in the proceedings initiated before the Polish Patent Office incorrectly indicates the earliest possible date of expiration, i.e. makes a mistake about the “magical” 1 day, which so far could have caused a lot of blood, leading to the dismissal of applications, in which such a mathematical error appeared.
The Supreme Administrative Court ultimately provided all practitioners with clear guidelines, which can be reduced to the principles indicated below.The Supreme Administrative Court took as its starting point the obvious finding that since:
„ protection right expires after 5 years, and this period begins to run at the earliest in the day following the date of issuance of the decision on granting the right of protection for the trademark, the request for a declaration of revocation of the right of protection may not relate to the period earlier than 5 years counted after the date of granting the right of protection for the trademark.”
Thereby:
- if the prerequisites for declaring the revocation of the right of protection for a trademark are met, the Patent Office is obliged to declare this expiration on the actual date specified in Article 172 of the IPL, even if it was different than indicated in the application by the applicant, because the right of protection for the trademark expires by operation of law on the above-mentioned date
- As follows from Article 172(2) of the IPL, the date of expiry of the right of protection for a trademark is confirmed in the decision, which obviously falls within the competence of the authority, not the applicant
- It does not follow from Article 255(4) of the IPL that the Patent Office is bound by the date of expiry of the right indicated by the applicant.
The Supreme Administrative Court unequivocally confirmed that the position of the Patent Office as to the need to indicate in the application the date of expiry of the right to the trademark and to bind the Office with it is not confirmed by Article 255¹(3) of the IPL. This provision sets out the requirements for an application to initiate proceedings for declaring revocation of a trademark. There is no obligation to indicate the date of expiry of the right. Therefore, such an obligation cannot be imposed by the authority, to the detriment of the applicants, who have so far indicated this date incorrectly, which in consequence led to the loss of the dispute.
Summarizing…
The importance of the obligation to use trademarks cannot be overstated . This right has its value only if the goods or services marked with a given mark are actually present on the market. This is the only way to build the actual identification of the trademark with the entrepreneur. It should be remembered that the designation of origin (building this uniform identity) is the basic function of a trademark. For this reason, it is assumed that the use of a trademark without the consent of the owner is treated as unlawful use of the trademark only if we have grounds to believe that a specific conduct is actually unlawful.
We can only talk about illegality when the competitor’s action is unfair. It is also considered unfair to maintain a monopoly (blocking access to the mark) when the entrepreneur actually does not want to use the mark and ultimately does not use it. Hence the obligation to use the obligation imposed on entrepreneurs and the absolute consequences of failure to comply with this obligation.
Author: Helena Gajek
