Article

Trade marks and unfair competition

Summary:Among the many interesting problems described in this issue of the bulletin, I would like to highlight that of the concept of the use of a trade mark. The scope thereof largely sets the boundaries of protection afforded to the trade mark holder.

Contrary to what one might imagine, a protection right to a trade mark does not cover all forms of use. It is strictly limited by law, and the boundaries are precisely determined by court rulings. Legal protection is only afforded to the use of a mark within those boundaries. What is more, the very use of a mark (or lack of use) entails important legal consequences.

First of all, the use of a mark guarantees its endurance as a designation protected by law. A lack of use brings on the risk of the protection right to the trade mark expiring, and this may be taken advantage of by competitors, who may apply for a ruling on the expiry of the right. It was within such a dispute over the continued existence of a mark that the Court of Justice ruled on the subject of the territorial scope of the use of a mark. In a ruling discussed in this bulletin, the Court of Justice answered the question of whether the use of a Community mark in only one EU country can be deemed legally effective. The Court of Justice also ruled that the use of a mark is an autonomic concept of Community law. On the one hand, it strengthens legal certainty with regard to Community marks, but on the other hand it may create a certain tension resulting from the differences between the criteria applied by European authorities and those accepted in the domestic systems of individual Member States.

It is not only a lack of use that can cause a trade mark holder trouble. As derives from the article on the designation ‘Green Point’, the incompetent use of a mark may even lead to its loss. If a mark is overused, and the trade mark holder has no proper policy regarding the use of the mark, the designation may lose its distinctive capacity. In accordance with a ruling by the Supreme Court of Administration, what is essential is the way the designation functions. It must fulfill the function ascribed to trade marks, and so the universal use of a mark in trading may prove fatal, even if everyone using the mark does so with the permission of the trade mark holder. This confirms that managing a mark, even a very renowned and popular one, is no easy task.

Also worthy of note is a planned amendment to the Act on Electronic Services. Though the most controversial solution it contains, that of an exemption from liability for search engine operators, has been removed from the draft, the community of companies whose growth depends on compliance with intellectual property rights still has cause for concern. The development of the internet industry in Poland should not take place at the cost of loosening standards of legal protection over intangible goods, and the amended act may substantially lower those standards.

I hope you enjoy this issue, and I encourage you to send in any comments you may have, for which my thanks in advance.

Oskar Tulodziecki

Author: K&L Gates Publication date: 2013-05-01 Number of pages: 20 Price: 0