Protection of earlier CTMs in Poland reinforced

In MPAY24 GmbH v MPAY SA (Case XXII GWzt 7/08, November 28 2008), the Warsaw Community Trademark Court has addressed for the first time the issue of the extension of protection to Poland of Community trademarks (CTMs).

MPAY24 GmbH is the owner of the CTM MPAY24 (Registration 2601656). The priority date of the mark is September 6 2001. The defendants, MPAY SA and MPAY International Sp zoo, are associated companies located in Warsaw. The defendants created their firm names on October 18 2002 and September 9 2003, respectively. MPAY International applied for the registration of the trademarks MPAY and M-PAY in Poland on April 2 2003. However, the trademarks were registered and published only on March 3 2008, after MPAY24 had filed an action for infringement. In the meantime, MPAY SA had obtained the registration of the trademark MPAY in Benelux (Registration 781548) and had registered the domain name ''.
MPAY24 requested that the court enjoin the defendants from using the trademark MPAY for goods and services in Classes 9, 16, 35, 36 and 38 of the Nice Classification (in particular, financial and telecommunication services).
Where the protection of a CTM is extended to a new EU member state, the priority date of the mark will be the accession date of the country in question - which, in the case of Poland, is May 1 2004.

In the present case, the issue was thus whether the defendants could:
  • request that the court prohibit the use of the MPAY24 mark in Poland under Article 159(a)(5) of the Community Trademark Regulation (40/94); and
  • rely on this provision in an action for infringement of a CTM. 
Article 159(a)(5) reads as follows:

“The use of a Community trademark as referred to in Paragraph 1 may be prohibited pursuant to Articles 106 and 107 if the earlier trademark or other earlier right was registered, applied for or acquired in good faith in the new member state prior to the date of accession of that state; or, where applicable, has a priority date prior to the date of accession of that state.”
The court held that the presumption of validity of a CTM (Article 95(1) of the regulation) may be challenged only by a decision of the Office for Harmonization in the Internal Market or a CTM court as a result of a complaint or counterclaim. Consequently, the right under Article 159(a)(5) cannot be exercised in the form of a plea by the defendant in infringement proceedings, even though the national law may allow such a plea. The court thus dismissed the defendants' plea and held that it had no competence to rule on the case.
In addition, the court gave an interesting interpretation of Article 159(a)(5). The court held that the defendants' claim that their trademark rights in Poland predated the priority date of the CTM failed on the merits, because this provision applies only to "earlier trademark or other earlier rights". According to the court, the insertion of the word 'earlier' in the provision was not accidental, but intentional. The court further held that if it followed the defendants' approach, Article 159(a)(5) would lose its relevance. The court thus concluded that the defendants' trademark rights (the priority date of which was April 2 2003) did not predate the priority date of the CTM (September 6 2001). 
The decision strengthens the protection of CTMs in Poland and will make it more difficult for owners of Polish registrations to enforce them. However, it is unclear whether this was the intention of the authors of Article 159(a)(5). Nevertheless, the interpretation of the court (ie, that the inclusion of the word 'earlier' was intentional) seems reasonable.
The decision has been appealed and the judgment of the Court of Appeal of Warsaw is expected with great interest.
Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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