When serious reasons prevent trade mark use

According to Polish law the right of protection for a trade mark lapses on failure to put it to genuine use for the goods covered by the registration for a period during five successive years, unless serious reasons of non-use exist. Preparations for the use of the trade mark are not sufficient and the five-year period begins the day after a decision on granting protection rights is issued, in case the owner has not used the trade mark, or if the trade mark had been in use, on the date its genuine use was abandoned.

Even though the Act on Industrial Property uses the term "serious reasons", it does not state what kind of evidence is serious enough to prove the non-use of the trade mark. For, while examining every single request for the lapse of the trade mark due to non-use, the adjudicating body undertakes to decide whether the reasons due to which the trade mark has not been used and which the applicant considers "serious reasons" are indeed sufficient.

It was underlined by the District Administrative Court in its judgment on October 14 2011 that "according to the jurisdiction, such reasons include any events which cancel an objection of reprehensible actions of the holder of the trade mark. Primarily, the events showing features of force majeure (vis major) or other external circumstances which are impossible to predict and to prevent, and also factual obstacles or legal obstacles which occur irrespectively of the holder's will".

Vis major is termed as superior, an irresistible force. It may be a loss that results immediately from a natural cause that could not have been prevented by the exercise of prudence, diligence and care. In most cases the external occurrence shows features of force majeure and a natural and unavoidable catastrophe that interrupts the expected course of events such as war, earthquake or flood.

The holders of a trade mark frequently refer to the occurrence of "serious reasons", even when they are not the effects of a natural force causing inevitable accidents, including credit difficulties or import restrictions. In each case the adjudicating body conducts a very rigorous examination to check whether the holder of the trade mark bears the blame for the "serious reason", whether the reason applies for a category and if it justifies the non-use of the trade mark for five years. These reasons that are not natural forces are accepted as vis major very rarely. For instance, The Supreme Administrative Court has stated that a single administrative act imposing a ban on the use of the trade mark can be considered as a legal bar preventing the use of the designation.

In another case the District Administrative Court in Warsaw indicated that another serious reason for the non-use of a trade mark is legal action against the owner, which in effect would result in passing by a civil court a judgment obligating the owner to stop the use of the litigious mark.

These are exceptional cases. The adjudicating body usually does not agree with the owner on the existence of "serious reasons". For example, in December 2010 the Supreme Administrative Court disagreed with the owner of a mark, who claimed that due to pending invalidation proceedings and a risk that, if the litigious trademark is invalidated, the opposing party could pursue a claim, there are serious reasons for non-use. The Court stated that the non-use due to pending proceedings was the sole decision of the owner, which cannot be considered as actions taken due to such reasons.

In another case at the District Administrative Court in December 2007, the owner of the trade mark claimed that it could not be used due to serious economic bars, namely that the Polish market was not ready for launching the expensive goods and a lack of manufacturing facilities. The Court stated that the use of the mark did not require manufacturing of the goods in the country where the protection rights were granted. Additionally, any economic obstacles presented by the building of a new factory with a special production line for the goods did not stop the launch of these goods on the market by importing them or selling them via the internet.

Izabella Dudek-Urbanowicz