When can non-use be justified?


Monika Wieczorkowska

The Supreme Administrative Court ruled in December that the fact that there are cancellation proceedings pending against a trademark registration does not constitute an important reason for non-use.

A Polish company Sniezka Invest filed a request with the Polish Patent Office for a declaration that the word and device trademark registration ‘Goplana Michalki’ had lapsed. The mark was registered in the name of Jutrzenka in class 30 for chocolate candies. Sniezka Invest claimed that the mark has not been genuinely used in Poland for five successive years since the right was granted.

Sniezka is the holder of a word trademark registration for ‘Michalki’ and argued that the existence of goods designated with Goplana Michalki would interfere with its business activity.

In response, Jutrzenka claimed that there were good reasons for the non-use of its Goplana Michalki trademark, namely the pending administrative proceedings for cancellation of the mark. The cancellation request was also filed by Sniezka. In the opinion of Jutrzenka, the use of the mark in the course of those proceedings would be irrational as it would expose the company to future infringement claims. It also claimed that Sniezka had no legal interest in requesting the lapse of its mark.

non-use, PPO