Zaborski, Morysiński - Poland
On 18 May 2021 seven Supreme Court judges (III CZP 30/20) handed down a crucial decision on the protection of trademarks and the trademark limitation period. Historically, the courts have not shared a single perspective on this subject, resulting in a number of contradictory decisions. While trademark infringement may comprise a single or continuous act, there have been many discussions on how to measure the infringement limitation period when the infringing act is continuous.
The case at issue referred to one of Audi’s EU trademarks. The car manufacturer filed a claim against an infringer that used its mark to sell and offer car parts. The infringer raised the objection of the statute of limitations on non-pecuniary claims (ie, claims for an order to discontinue the use of the mark or withdraw products bearing the trademark from the market and an obligation to publish the judgment). The first-instance court shared the objection of the statute of limitations claims and held that the allegation was well founded. The court stated that since the defendant had been using Audi’s mark for more than 12 years and Polish law states that there is a five-year limitation, Audi’s claims were deemed to be precluded.
The plaintiff filed an appeal. However, the appeal court found that the limitation issue raised several legal doubts and was so complex that it submitted the case to the Supreme Court.
The main doubt related to measuring the period of limitation of non-pecuniary claims for the protection of an EU trademark. The court was uncertain whether this should be counted from the first day of infringement – taking into account the fact that the infringer's actions were not singular, but continuous, repetitive and continued at the time of filing the claims – or separately for each infringement.
The enlarged composition of the Supreme Court held that if the infringement of an EU mark is repetitive and continues at the time of filing a non-pecuniary claim, including a claim for non-infringement, then the five-year limitation period specified by the Industrial Property Law runs from each day on which the infringement took place.
Considering the above, in the case in question, it cannot be assumed that the statute of limitations began when the defendant commenced operations and that the period expired after five years. Instead, the statute of limitations should run separately from each day on which the infringement took place.
Practitioners are still waiting for the justification of the decision. Nevertheless, the Supreme Court has confirmed the interpretation that strengthens trademark protection. Although the decision refers specifically to EU trademarks, the rule also applies to national marks.