Protection of reputable Community trade marks in Poland

Consequently, providing goods or services under a trade mark may be subject to the legislation of different jurisdictions. Therefore, it can be very important to guarantee uniform legal protection for brands within the European Community, by registering them as Community trade marks.

Community trade marks

A Community trade mark constitutes an effective solution in terms of the protection of a trade mark used by entrepreneurs, who do not limit their business activity to the territory of only one EU Member State. In practice, however, different interpretations of the provisions of the European trade mark legislation by domestic courts may lead to a different level of protection and, de facto, weaken the principle of the uniform character of the Community trade mark.

In cases where the trade mark has a reputation in the Community, protection is particularly strong: the owner of such a mark can prevent use in respect of goods and services which are dissimilar to those for which its mark is registered, provided that the use of the mark, without due cause, results in an unfair advantage or is detrimental to the distinctive character or the Community trade mark. Such a solution is particularly attractive for businesses who possess a strong and well-known brand which, competitors may attempt to exploit for their own interests.

In this context, the interpretation of the "reputation in the Community" requires particular attention. Is it necessary for a trade mark to maintain a reputation within the territory of the entire Community, or reputation within only part of it? If so, what part of the Community may be deemed sufficient? In particular, would such criteria be met when the Community trade mark possesses a reputation within the territory of only one Member State?

Guidance from the Court of Justice

The Court of Justice of the European Union assists us with its judgements which provide fairly unambiguous instructions concerning the appropriate interpretation. In the CHEVY case¹ the Court clarified that the trade mark which possesses a reputation is a trade mark which is well-known to a specifically large group of consumers. In a case concerning General Motors², the Court was more specific and indicated that "the aforementioned condition is fulfilled when the trade mark has a reputation in the Member State. In the absence of any definition of the Community provision in this respect, a trade mark cannot be required to have a reputation "throughout" the territory of the Member State. It is sufficient for it to exist in a substantial part of it". The Court arrived at a similar conclusion in the case of Pago³, indicating that "the Community trade mark must be known by a significant part of the public concerned by the products or services covered by that trade mark, in a substantial part of the territory of the European Community, and that, in view of the facts of the main proceedings, the territory of the Member State may be considered to constitute a substantial part of the territory of the Community". Therefore it follows clearly from the judgments of the Court of Justice that stronger protection of a reputable Community trade mark can extend to the entire territory of the European Community, even though the reputation exists only in part of the Community.

The position of Polish administrative courts

Meanwhile, the decisions of the Polish Patent Office acknowledging this concept of Community wide reputation are being reversed by Polish administrative courts. In a 2009 judgment⁴ the Supreme Administrative Court stated that the "reputation has to be maintained and determined in the country in which the protection is sought". A similar position was taken by the Supreme Administrative Court also in 2009 in a judgment⁵, in which the Court indicated that the international reputation is not sufficient and the domestic reputation cannot be based merely on the reputation acquired in other countries. As a result, the reputation of Community trade marks, despite their cross-border nature, in the opinion of Polish administrative courts, is determined separately for each Member State.

Conclusion

In the opinion of the Polish administrative courts the reputation of a community trade mark needs to be demonstrated separately for the Member State where the legal protection is claimed. This is a surprising position as it not only contradicts the judgments of the Court of Justice of European Union but also undermines the unitary character of the Community trade mark as set out clearly under the relevant EU legislation. This example shows also that, despite uniform European legislation is the practice of the domestic courts which to a significant extent determines the level of protection enjoyed by Community trade marks.

If you have any questions on this article please contact us.

Regulatory

Privacy & Cookie Policy

Terms of Use

© 2021 Taylor Wessing LLP