The Polish Supreme Court has recently issued an important decision concerning infringement of rights deriving from a trade mark registration by another trade mark registered later.
An internationally known manufacturer of skylights, which holds a word-figurative trade mark Velux registered in Poland in respect of building materials (including skylights), proceeded with legal action against a Polish company that it accused of infringing its trade mark. The infringed trade mark represents the word Velux written in white capital letters inside a red rectangle.
The infringing trade mark Okpol, used by a Polish company in the course of trade, is very similar in visual respects to the trade mark Velux and covers similar goods. The mark Okpol is also word-figurative and consists of a red rectangle with the word Okpol written inside in white capital letters. Under the word Okpol there is the additional phrase in Polish okna do poddaszy meaning skylights. The word-figurative mark Okpol was registered and enjoyed independent protection in Poland.
Pursuant to the Polish Law on Industrial Property, infringement of the right of protection for a trade mark consists of unlawful use in the course of trade of (i) a trade mark identical to a trade mark registered in respect of identical goods; (ii) a trade mark identical or similar to a trade mark registered in respect of identical or similar goods, if there exists the likelihood of misleading the public, including in particular the risk of associating the trade mark with a registered trade mark; (iii) a trade mark identical or similar to a renowned trade mark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trade mark. Any person whose right of protection for a trade mark has been infringed may demand the cessation of infringement, redress, the surrender of unlawfully obtained profits and compensation for damage if the infringement has been committed with intent.
These regulations imply that the protection rights deriving from trade mark registration shall be effective against any person infringing the rights, irrespective of whether the trade mark used by the infringer has been registered on his behalf or not.
Prior to the decision of the Supreme Court, the lower court decided that the trade mark Okpol used by the Polish company may mislead customers, on the grounds that there is a risk that the mark will be associated with the earlier trade mark registration Velux. Consequently, the use of the trade mark Okpol by the Polish company infringes the rights to the trade mark Velux.
The holder of the trade mark Okpol appealed to the Supreme Court. One of the questions raised in the appeal was whether a holder of an earlier right in trade mark registration may enforce his claims against a holder of a similar mark registered later, and in particular, whether the holder of an earlier right in trade mark registration may prohibit the use of the later mark.
According to the Supreme Court, trade mark registration provides the holder only with a formal right to use the mark. If a protection right is infringed by a later trade mark registration, the Court has the authority to assess whether the use of the later mark deserves legal protection or not. If the Court's assessment is not in favor of the holder of the later mark, the Court may prohibit its use if it is in conflict with earlier registration, although protection was granted by the Patent Office to both marks. The decision of the Court does not result in invalidation of the later mark, as under Polish law the Patent Office, not the civil courts, deals with invalidation proceedings.
To summarise, if the use of a registered trade mark violates another registration which is earlier, the infringer should refrain from using his right of protection as his formal right does not warrant substantive protection. If the infringer continues to use the mark violating the third party's earlier rights, any person entitled to those rights may enforce claims against the infringer directly in the civil proceedings, without the need to demand that the Patent Office declare the later trade mark registration invalid.
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| Malgorzata Zielinska-Lazarowicz |
Patpol
162J Nowoursynowska Str.
02-776 Warsaw
Poland
Postal address
PO Box 168, 00-950 Warsaw, Poland
Tel: +48 22 644 96 57 / 96 59
+48 22 644 96 68 / 97 69
Fax: +48 22 644 96 00 / 44 02
patpol@patpol.com.pl
www.patpol.com.pl