The issues of registration, protection and use of the trade mark have become one from the core aspects of business strategy, and entrepreneurs are particularly keen to exercise the right to trade mark protection in the context of tax optimization and the possible safeguarding of the company's financial liquidity.
Trade mark within the meaning of Article 120(1) Act dated 30 June 2000 Industrial Property Rights (CPR) is any indication which can be presented in a graphic manner if such a designation is suitable for distinguishing goods one undertakings from goods of another undertaking. Furthermore, the trade mark, according to Article 120(2) PWPW, may be in particular: word, drawing, ornament, colour composition, spatial form, including form of goods or packaging, as well as melody or other sound signal.
The trademark, due to its numerous functions, including its distinctive, advertising, investment or communication function, is gaining popularity as an element in the business strategy of the entrepreneur. On the other hand, it seems to be dominant among the various functions of the trademark, because it allows to distinguish between the different goods from the same production segment.
It is widely accepted that in order for a trade mark to be considered correct it must meet the criteria of so-called abstract distinguishing ability. This concept means that the graphic form in which the trade mark is presented must clearly identify the goods. The trade mark should therefore be seen by the potential customer as a single and separate part of the product.
Registration and protection of the trade mark – potential benefits
The entrepreneur developing the company at the same time also develops the brand, with time gaining recognition from customers and business partners. This process is in most cases long-term and the effects begin to be noticeable after several years of activity.
In order to ensure adequate protection of the brand and the position of the company against unfair competition (for example, by impersonating competitors as the company by using a very similar or identical graphic form of the trade mark), registration of the trade mark in:
- 1) patent order of the Republic of Poland – if you operate only in the territory of Poland,
- 2) European Union Intellectual Property Office – if you are active in the EU.
However, it should be remembered that the situation is different when operating outside the European Union. The applicant shall, after having registered the trade mark at the office of origin, submit to the Office of the International Intellectual Property Organisation through the Office of the country of origin an appropriate application (the protection of the trade mark is guaranteed by the Madrid Agreement and covers only those countries which acceded to it).
The right to use and benefit from the trademark is often used by traders in the economic trade. For example, the practice of optimizing income tax through depreciation or licensing of a trademark can be identified. The right to use and benefit from the trademark may also be used to increase the company's financial liquidity by selling the right to use the trademark, which will consequently stabilise the company.
Trademark Protection – the current case law line of the TSEU
The issue of registration of a trade mark has already been addressed by the Court of Justice of the European Union (hereinafter referred to as the TEU).
The judgment of the CJEU is of particular interest dated 16 January 2019 on the Republic of Poland v European Union Intellectual Property Office 1 , concerning the dispute between Stock Polska Sp. z o.o.
and Lass & Steffen GmbH Wein und Spirituosen Import on the refusal of registration of the trademark ‘Lubelska’, owned by Stock Polska Sp. z o.o. by the Office for Intellectual Property of the European Union (hereinafter: EUIPO).
By refusing to register a trade mark, EUIPO took the view that the ‘Lubelska’ mark for the identification of alcoholic products excluding beer was deceptively similar to the German trade mark ‘Lubeca’, registered on an earlier date, identifying products from the same segment.
In the judgment under consideration, the CJEU stressed that the convergence of graphic marks could lead to/bring the consumer into confusion when buying a particular commodity.
Consequently, in cases such as those in the present case, the Article 8(1) point B Regulation (EU) 2017/1001 dated 14 June 2017 2 providing that, as a result of opposition from the proprietor of a previously registered trade mark, a trade mark applied for at a later date shall not be registered if, because of its identity with or similar to the earlier trade mark, the identity with or similar to goods or services is likely to mislead the public in the territory in which the earlier trade mark is protected.
The likelihood of confusion should be understood widely. It also includes the likelihood of association with an earlier trade mark.
In conclusion, it must be concluded that, when applying for registration of a trade mark, it is appropriate to bear in mind whether, because of the identity of the earlier trade mark or the similarity to it, the identity with or similar to the goods or services is likely to mislead the public in the territory in which the earlier trade mark is protected.
1 Judgment of the Court of Justice of the European Union dated 16 January 2019 on the Republic of Poland v European Union Intellectual Property Office (reference no.. C 162/17 P), Electronic Reports of Cases ECLI:EU:C:2019:27, hereinafter referred to as ‘the judgment dated 16 January 2019”
2 Regulation (EU) 2017/1001 dated 14 June 2017, laying down provisions on the trade mark of the European Union, (Official Journal of the European Union L, No. 154/1 dated 14 June 2017) hereinafter referred to as ‘the Regulation dated 14 June 2017”
Author
Justyna Kyć - Legal adviser in the Legal Department of 2017 associated with Russell Bedford Poland. He specializes in corporate customer service, in particular in drawing up and negotiating commercial contracts and providing ongoing legal advice.