Trademark – what is it and how to protect it?

26.05.2021

According to article 120(1) of the Polish Industrial Property Law (hereinafter: IPL), a trademark in Poland may be any sign capable of being represented graphically, if such sign is capable of distinguishing the goods of one enterprise from those of another enterprise.

At the forefront of this definition is the idea in people’s consciousness of the association of a given sign with a given product. In fact, the awareness of the public is just as important as the material substrate of the trademark itself.

Secondly, a trademark in Poland cannot be a sign that cannot be graphically represented. The requirement of graphical representability is dictated by the fact that the scope of protection claimed by the applicant must be precisely defined already at the stage of filing the trademark application for registration. Lack of graphic representativeness is an absolute bar to registration.

A trademark registered with the Patent Office of the Republic of Poland is subject to temporary protection throughout the entire territory of Poland, i.e. the territory of registration. Protection is also granted to marks that are not registered, but are used in commerce and commonly known within the limits of the territory of their recognition and similarity of goods (services) against the danger of misleading the public.

Article 296(2) of the IPL specifies what a trademark infringement consists of. It is the unlawful use in the course of business of:

a mark identical to a registered trademark with respect to identical goods,
a mark identical or similar to a registered trademark with respect to identical or similar goods, if there is a risk of misleading the public, which includes, in particular, the risk of association of the mark with a registered trademark,
a mark identical or similar to a reputable trademark registered with respect to any goods, if such use is likely to take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier mark.

A person whose trademark protection right has been infringed, or a person who is permitted to do so by law, may demand that the person who infringed the right desist from the infringement, surrender the wrongfully obtained benefits, and, in the case of a culpable infringement, also repair the damage caused, either on general principles or by paying a sum of money equivalent to the license fee or other appropriate remuneration which, at the time of their assertion, would have been due by virtue of the authorized person’s permission to use the trademark (article 296(1) IPL). The damage caused by the infringement includes the losses incurred and the lost profits, and its remedy should lead to compensation in the property of the right holder due to the infringement.

In addition to civil-legal protection, the IPL regulation also contains criminal provisions. According to article 305(1) of the IPL, whoever, with a view to marketing, marks goods with a counterfeit trademark, a registered trademark that he is not entitled to use, or trades in goods marked with such marks, shall be subject to a fine, restriction of liberty or imprisonment for up to 2 years. In a minor case, the perpetrator of the offense shall be subject to a fine. If the perpetrator has made a regular source of income from the commission of the offense or commits this offense with respect to goods of significant value, he shall be subject to a penalty of imprisonment from 6 months to 5 years.

Trademark – what is it and how to protect it?

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