Aleksandra Kryśka of Patpol considers trademarks with reputations, and analyses the legislation and case law surrounding them

Due to their special character, reputed marks enjoy broader protection than ordinary marks. Trademarks that have obtained a reputation are perceived by customers as a proof of high quality, exceptionality and luxury. The high value of reputed marks makes them vulnerable to illegal use by unauthorised parties. Using the reputation of another’s party’s trademark allows a user to promote its own goods or services without bearing the necessary costs.

The notion of ‘reputation’ is not defined in Polish law. According to case law, a trademark’s reputation is associated with established opinion among customers about the characteristics of the goods bearing the mark or the services provided thereunder. Reputation is not a simple consequence of a trademark’s use and circulation, but is also a well-established and deeply rooted image in the consciousness of the relevant consumers. It comes about as a result of the rights holder both maintaining the quality of the goods sold under the mark and consistently presenting the mark on the market through long-term, intensive advertising.

Determining whether a trademark has obtained a reputation should involve consideration not only of how well known it is among potential customers, but also of the circumstances of each individual case, focusing on the following factors:

  • Participation in the market (with both regard to the quantity and value of the sale of goods), and the scope and duration of advertising under the mark;

  • The territorial extent and duration of the mark’s use;

  • Licences granted for the mark’s use and the quality of goods sold under it;

  • The value of the trademark, as assessed by independent financial institutions;

  • The amount spent on promoting the mark;

  • The relation in price between the goods covered by the mark and substitute goods; and

  • Whether and to what extent the mark is used by third parties.

  • Judicial decisions have established that in order for a mark to have a reputation, it must be known to a significant part of the relevant public—its target customers. However, there is no definition of ‘a significant part’ in case law, so each case must be evaluated individually.

    The relevant population in determining a mark’s knowledge, recognition or fame is the public affected by the trademark (ie, either the public at large or a more specialised sector of the public, depending on the product or service being marketed). If the goods or services designated by the mark have a specific application or are exclusively designed for professional use, the relevant public is limited to the specific purchasers of the products concerned.

    In this respect, the Polish courts and the Patent Office (PPO) should follow the criteria set out in the Court of Justice of the EU’s verdicts in El Cortes Ingles (T420/03) and General Motors (C-375/97)—that is, the relevant public for the determining the recognition or fame of a mark is the public affected by that trademark.

    However, in a recent Polish administrative case, which considered the harm done to the reputation of the ‘Tiffany’ mark (II GSK 522/10), the Supreme Administrative Court stressed that the reputed character of a trademark should be assessed with respect to the public relevant from the perspective of the attacked trademark.

    Protection of reputed trademarks is provided under Article 132.2.3 of the Industrial Property Law, according to which: “A right of protection for a trademark shall not be granted if the trademark is identical or similar to a trademark registered earlier or applied for registration with an earlier priority date (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark.” This provision applies accordingly to unregistered trademarks that have become well known.

    Protection against dilution of a trademark can also be sought under Articles 3 and 10 of the Unfair Competition Law. Pursuant to Article 3: “The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer”.

    Where the infringer’s activity is likely to mislead potential customers as to the origin or quality of goods, Article 10 can be applied: “Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and other significant features of products or services, as well as concealing the risks connected with their use, shall be the act of unfair competition.”

    Reputed marks enjoy broader protection in Poland than ordinary marks. They are not only protected against the risk of confusion among customers, but also against the risk of dilution and further parasitic use.

    Pursuant to Article 296(2)(iii) of the Industrial Property Law: “Infringement of the right of protection to a trademark consists in unlawful use in the course of trade of a trademark identical or similar to a reputed trademark 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 trademark.”

    Protection against parasitic use and dilution of the mark is also afforded beyond the similarity of goods. It concerns any kind of goods, irrespective of the factual scope of registration and use of the reputed mark. However, if two conflicting marks are destined for different kinds of goods, it is necessary to provide evidence of parasitic use of the reputation of the earlier mark or its dilution by the later mark.

    The owner of a reputed mark can oppose the registration or use of a later mark irrespective of whether it is destined for similar or dissimilar goods. However, in order to oppose a trademark destined for dissimilar goods, it is necessary for the rights holder to not only prove the reputation of its own mark, but also to file evidence of the parasitic use or dilution.

    The owner of a reputed mark can also enforce its claims in litigation before the PPO, as well as in civil and criminal proceedings before the courts.

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