A registered trade mark must be put to genuine use by the owner (the right holder). Even at the stage of applying for trade mark registration, the intention to use is required. Otherwise, filing an application may be regarded as acting in bad faith. The use of the mark is also necessary to benefit from the protection right.
Under Article 169, section 1 point 1, of the Polish Law on Industrial Property of June 30 2000, the right of protection lapses if the owner fails to put the trade mark to genuine use for the goods covered by the registration for a period of five successive years, unless there are serious reasons for non-use.
Non-use may be harmful to the trade mark owner and his products: non-use or long-lasting toleration of another entity using the mark may result in the loss of protection against that infringement. Non-use may also lead to the loss of trade mark protection in its entirety if the Patent Office decides the trade mark right should lapse on the request of third parties.
Since decisions or orders issued by the Polish Patent Office in inter partes proceedings have led to complaints to the Administrative Court, in one of its recent judgments the District Administrative Court in Warsaw established a relatively simple and obvious but crucial rule. This rule is applicable when a decision on the lapse of the right of protection to a trade mark is issued. It states that the Patent Office must not only assess and accept the evidence of non-use, but also look into the reasons for the non-use.
According to the Court, the fact that the Patent Office has not conducted a sufficient examination as to whether there existed fully justified reasons for non-use may be quoted as one of the grounds for appeal. Even if provisions under Article 169, section 1 point 1, are fulfilled, and the period of time within which the mark was not put to genuine use allows the Patent Office to issue a decision on the lapse of the right of protection, it is necessary to conduct a reliable assessment of non-use reasons, their seriousness, impact on non-use and their applicability under the given circumstances. Lack of findings in this area justifies the waiver of the decision.
According to the Court, when assessing the reasons for non-use, the Patent Office should consdier that any pending litigation over the right to the trade mark initiated at the request of the competitor may be regarded as justified non-use. Such justified non-use would last until the end of the case in question and the entire duration of proceedings may not be counted for the period of five successive years of non-use.
It seems therefore that any legal actions against trade mark owners will be regarded as potentially justified, serious reasons for non-use. These could include cease and desist letters, actions connected with alleged unfair competition and requests to grant Customs protection. A trade mark owner will not be certain about the outcome of these actions and should therefore proceed with caution to avoid the consequences. As a result, it may not be possible to use the trade mark within a certain period of time.
Therefore, all the circumstances that might prevent a trade mark owner from taking advantage of his trade mark rights, or impede free use of the mark, should be duly assessed when issuing a decision on the lapse of the right of protection to that trade mark.
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| Adrianna Ziecik |
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