When can non-use be justified?
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.
The Polish Patent Office declared the trademark Goplana Michalki lapsed. Jutrzenka filed a complaint to the District Administrative Court in Warsaw, which dismissed it. As a result, the company filed a cassation complaint to the Supreme Administrative Court.
“The court concluded that the ideas behind invalidation proceedings are not notions of similarity or identity between the trademarks, but actions aimed at protecting the plaintiff’s trademark right".
The Supreme Administrative Court dismissed the cassation complaint, finding that serious reasons for trademark non-use should be factual and/or legal obstacles.These may be external events of a force majeure nature that are impossible to predict and prevent. All circumstances relating to ordinary business risks that concern the current operations of each business entity cannot be deemed such obstacles. A legal obstacle preventing the use of a trademark may be, for example, an individual administrative act prohibiting the use of the mark.
Polish law doesn’t stipulate that a company should refrain from using a trademark once a request for cancellation has been filed. On the contrary, the Industrial Property Law says that as long as the right of protection is valid, the holder has the exclusive right to use the trademark.
Ceasing the use of the mark during cancellation proceedings is the sole decision of the holder of the trademark and cannot be regarded as a reason for non-use. Justified reasons for not using a trademark are exceptional and, as a result, they must be assessed restrictively.
The judgment is important as it clarifies the situation regarding trademark non-use. Previously, the District Administrative Court had ruled that pending cancellation proceedings against a trademark registration did qualify as a justified reason for trademark non-use. With the new ruling, it is now explicit that such administrative proceedings cannot be invoked during the invalidation process.
The Supreme Administrative Court also confirmed that in order to prove the required legal interest in filing the request for declaring a trademark lapsed due to non-use, it is sufficient to refer to a requesting party’s own trademark registered for the same category of goods or services and to mention the elements common to both trademarks.
It is crucial that there is no risk of confusion between the marks at issue when proving the legal interest in requesting the lapse. Proceedings for trademark cancellation and declaring a trademark lapsed due to non-use differ also in the understanding of legal interest. The court concluded that the ideas behind invalidation proceedings are not notions of similarity or identity between the trademarks, but actions aimed at protecting the plaintiff’s trademark right, the right to exclusive use of a given mark.
