Supreme Administrative Court considers whether advertising material may demonstrate use

In April 2009 a request was filed for a declaration that the right of protection for the figurative trademark depicted below (No R-139598) had lapsed due to non-use:

The applicant indicated that it had a legal interest in filing such a request. As a manufacturer and distributor of windows, doors and walls made of metal and other materials, the applicant used the image of a stork to mark and advertise its products, and the image represented in the figurative mark at issue was misleadingly similar to that used on its own products. Moreover, the figurative mark was intended to identify, among other things, the same kind of goods and services as those of the applicant. The applicant thus claimed that the mark in question constituted a serious limitation to its freedom of running business activities in the field of building construction.

The holder of the mark in question filed a petition for the dismissal of the request. However, the Patent Office, by virtue of a decision issued in March 2012, declared that the right of protection for the mark had lapsed in part.

Under Article 169(1)(i) of the Polish Law on Industrial Property (Journal of Laws of 2003, No 119, item 1117, with amendments), the right of protection for a trademark shall lapse if the owner fails to put the registered mark to genuine use for the goods covered by the registration for a period of five successive years, unless there are serious reasons justifying non-use.

According to the Patent Office, it could not be determined from the evidentiary material before it that the holder of the mark in question had put the mark to genuine and serious use in respect of the relevant goods and services covered by the registration in Classes 6, 19 and 37. The Patent Office also found that the evidentiary material had no dates which would refer to a specific period of time. It held that, under Article 169(1)(i) of the IP Law, the mark had not been put to genuine use with respect to the goods and services mentioned by the applicant.

The Patent Office also noted that the evidence filed to prove genuine use contained only advertising material, which was regarded as insufficient. According to the office, one cannot consider that a mark has been put to genuine use if it has been used only in advertisements for a product or service which is not available on the domestic market. Lastly, the Patent Office considered that the holder of the mark had not demonstrated that there were any serious grounds which would justify the non-use of the mark.

The holder of the mark disagreed with the decision and filed a complaint before the District Administrative Court. The court dismissed the complaint, finding that the Patent Office had analysed the evidentiary material correctly. The court also shared the opinion of the Patent Office that the mark had not been put to genuine use.

With regard to the mark owner's allegation that the Patent Office had failed to examine the issue of the alleged reputation of the mark, the court stated that the decision of the office was correct in this regard - as the case concerned the lapse of a right of protection due to non-use, the examination of the potential reputation of the mark would be irrelevant. In addition, the trademark holder had not provided any evidence showing the reputation of the mark in question.

The holder of the mark decided to appeal to the Supreme Administrative Court and filed a cassation complaint. However, the cassation was dismissed by the Supreme Administrative Court by virtue of a judgment dated October 2 2014 (Case file No II GSK 1194/13).

The Supreme Administrative Court upheld the view of the lower court that the evidence provided by the trademark holder in the form of advertising material could not be regarded as evidence of genuine use of the mark. Pursuant to Article 169(5) of the IP Law, the use of a trademark to advertise a product which is neither available on the domestic market, nor manufactured in the country for export purposes, shall not be deemed to constitute genuine use. 

Izabella Dudek-Urbanowicz, Patpol, European and Polish Patent and Trademark Attorneys, Warsaw