Proving legal interest in Poland
According to Polish legislation, a registered trademark may be declared lapsed if it has not been put to genuine use in the five consecutive years after it was granted. However, an entity that initiates these proceedings before the Polish Patent Office (PPO), by filing a request for declaring a lapse, must prove that it has a justified legal interest; otherwise, it cannot become a party in the proceedings.
There is a predominant view in Polish case law that a legal interest should be understood in the same way as its definition in the Administrative Procedure Code. According to article 28 of the code, which refers to the parties in administrative proceedings: “The party in the proceedings is each entity whose legal interest or obligation becomes the subject of the proceedings, or who requests the administrative body to undertake action with regard to one’s legal interest or obligation.”
However, in practice it may be frequently difficult to prove one’s legal interest, especially because the law does not provide specific indications on what is considered appropriate evidence for proving it. The question of determining whether a party does have a legal interest is left to the judicial practice of the courts and the PPO. Consequently, these organs have to examine each case individually to determine whether the entity initiating the proceedings has a justified interest and whether the matter is eligible for examination.
The interpretation of legal interest in proceedings before the PPO and administrative courts is usually very wide. As is stressed in the Polish legal doctrine, even the most general legal norms creating the right to run a business activity can be regarded as the source of legal interest in matters concerning industrial property (articles 20 and 22 of the Constitution of the Republic of Poland; article 6, clause 1 of the Law of July 2, 2004 on the Freedom of Business Activity; Journal of Laws, number 173, item 1807 with amendments).
According to the constitutional principle of the freedom of economic activity: “A social market economy, based on the freedom of economic activity, private ownership, and solidarity, dialogue and cooperation between social partners, shall be the basis of the economic system of the Republic of Poland (article 20 of the Polish Constitution).”
Further, according to article 22 of the Constitution: “Limitations upon the freedom of economic activity may be imposed only by means of statute and only for important public reasons.”
In addition, article 6, point 1 of the Law on Free Economic Activity provides: “Undertaking, performance and termination of economic activity is free to any entrepreneur on equal terms, subject to observance of the requirements specified under the relevant legal regulations.”
"it may be frequently difficult to prove one’s legal interest, especially because the law does not provide specific indications on what is considered appropriate evidence for proving it."
However, the above provisions cannot be applied in all cases to justify one’s legal interest in the procedure for declaring the lapse of a trademark. In the relevant case law and the Polish legal doctrine it is stressed that the legal interest of a party does not only have to be personal, specific and real, but also has to be reflected in the existing state of facts to justify the application of the norms of the material law. Therefore, a party’s chance of justifying its legal interest on the basis of the aforementioned constitutional regulations will depend, among other things, on a given state of facts and on whether the challenged IP right directly affects the rights of the challenging party.
For example, the District Administrative Court in Warsaw has previously found: “The very intention of a company to start business activity in Poland under its trademark does not create legal grounds for that company to justify legal interest. A potential decision on declaring lapse of the right holder’s trademark would not have any direct impact upon the current legal situation of that company. It is obvious that the company filing the request for declaring a lapse of the mark in question does not have to fulfill its intention to start business activity in Poland, so consequently it cannot treat its alleged intentions as a potential basis for awarding it legal interest, which must be real, rather than existing only in theory. The protection rights to the trademark which are currently owned by the right holder do not have any direct influence upon the current rights of the complaining party. At the same time, business activity performed by the complaining party does not encounter any obstacles or impediments resulting from the rights of the questioned mark holder.”
According to a 1997 resolution of the Supreme Administrative Court: “The person does have legal interest in seeking the issuance of administrative decision on declaring lapse of another party’s mark if that person’s rights are directly affected by that decision.” In general, the party that files a request for declaring the lapse of another trademark must expect the decision to be issued by an official body to bring some specific benefits. For example, it will allow the party to use a trademark that has so far been monopolised by another entity.
It must be stressed that the party filing the request for a lapse has to prove the existence of its legal interest at the date of filing the request. The legal interest cannot be merely expected to arrive in the future, or be purely hypothetical.
The case law in the field of determining legal interest, both produced by the PPO and the courts, is very rich. Because the notion of legal interest does not have a strict legal definition, its application to each case has to be examined individually.
Izabella Dudek-Urbanowicz is head of trademarks and designs at Patpol. She can be contacted at: izabella.urbanowicz@patpol.com.pl
