Trademarks are increasingly an important element in the conduct of business by entrepreneurs, enabling them to build a reputation and recognition in the market among competitors. Obtaining a right of protection gives the right holder a kind of monopoly on the use of the trade mark for profit or for professional purposes. The right holder may authorise another person to use the mark by concluding a license agreement with that person. In the absence of a license, the use of the mark will, as a rule, be an unlawful activity.
The Polish Industrial Property Law (IPL) contains a catalogue of exemplary acts constituting the use of a trademark. Pursuant to Article 154 of the IPL, the use of a trademark consists in particular (but not exclusively!) in:
- placing the mark on the goods covered by the right of protection or their packaging, offering and placing the goods on the market, importing or exporting them and storing them for the purpose of offering and placing them on the market, as well as offering or rendering services under the mark;
- affixing the sign to documents related to the placing on the market of goods or the provision of services;
- using it for advertising purposes.
Importantly, the failure of the user of the mark to have a relevant license may have far-reaching consequences. First and foremost, the unjustifiably obtained benefits must be handed over, and in the case of a culpable infringement, the right holder may also demand compensation for the damage caused. In practice, most often the trademark owner demands payment of a sum of money in the amount corresponding to the license fee that would have been due as a result of the license granted by the owner for the use of the trademark, and in the absence of any payment - also the costs of the lawsuit.
In addition to civil claims, a trade mark infringer may be held criminally liable if he marks or markets counterfeit goods. In extreme cases, such actions can lead to imprisonment of up to 5 years.
In summary, trade mark owners are protected by both civil and criminal law. The amount saved by not entering into a paid license agreement may be significantly less than the sum of the costs that will arise if a protection right is found to have been infringed. Do you want to use someone else's trademark? Without a license agreement is a bad idea!
Originally published 04 September 2024
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
