New regulations could stamp out defensive trademarks and bad-faith refiling

The concept of bad faith plays a crucial role in trademark law as it ensures that a monopoly acquired through trademark registration is not misused in order to gain unjustified advantage on the market. In Poland the applicant's bad faith as an absolute ground for refusing registration was introduced (with provisions) in the Industrial Property Law (30 June 2000 and amended 2017, item 776).

‘Bad faith’ is not defined in Polish or EU law, although this concept has been the subject of case law and jurisprudence. Since Poland is a member of the European Union, EU case law concerning bad faith applies.

For many years trademark owners have been filing marks defensively in order to block others from entering the market or to keep the option open to enter the market at a later stage.  Recently, the issue of trademark owners refiling very similar or identical marks or defensive marks in the context of bad faith has become more widely discussed. 

The essential role of a trademark is to distinguish the goods or services of a certain manufacturer/entrepreneur on the market. A trademark filing made for purposes other than genuine or at least intentional use should not be granted exclusive rights. However, since intent to use a trademark is not required in Poland or for EU trademarks, it can be difficult to prove the bad faith of the applicant of a defensive mark. In Sky v Skykick (C-371/18), the EU General Court said that a trademark application made without any intention to use the mark constitutes bad faith, if the applicant had the intention of either undermining – in a manner inconsistent with honest practices, the interests of third parties – or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trademark.

The other issue with defensive trademarks is the common practice of applying for multiple classes of goods and services. In this case there tends to be general intent to use the mark, but not for all goods and services for which the entity applied. However, recent changes to the Industrial Property Law, in which the filing fee is calculated from each class (previously the filing fee covered three classes and only additional classes above this required extra fees), should prevent applicants from applying for goods and services that are not the subject of their business activity.

Another issue is the repeat filing of a trademark to circumvent the genuine-use requirements. A common strategy to evade the use requirement is to refile the same trademark and thus obtain a further five years to begin actual use of the mark. In Poland there is no law specifically dealing with this issue, so general rules with regard to bad faith should apply. It currently seems that the Polish courts and the Polish Patent Office are rather liberal with regard to refiling, even if the previous trademark failed to meet applicable genuine-use requirements. This relates to previous regulations (Article 134 of the Industrial Property Law), which stated that it was possible to re-register the same mark by the same entity for the same goods (with no additional conditions set out in this article). As of 15 April 2016 this regulation was deleted from the Industrial Property Law. It is possible that the Polish Patent Office and Polish courts could change their practice in this regard and apply the rules worked out in the EU case law related to similar issues in the future.

As bad faith may be the grounds to prevent the registration or invalidate trademark protection, trademark owners should pay close attention to this issue, especially in light of the most recent judgments and legal amendments.

This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight

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