"As a result of amendments to the Law on Industrial Property, the party that may also be held liable for unlawful trademark use is an intermediary whose services were relied on in the course of committing trademark infringement. For example, it can be the lessor of a market hall where the counterfeit goods were traded, acourier delivering the shipment of counterfeit goods, or the owner of awarehouse where the counterfeit goods were stored" – says Dariusz.
As from 16th March 2019, namely from the implementation of amendments to the Law on Industrial Property, the intermediaries, whose services were relied on by a business entity infringing the right of protection for a third party's trademark, should stay alerted. Although it is true that those intermediaries, who did not have any knowledge about the infringement, should not be affected seriously by the new regulations, it is the adjudicative practice to be worked out in the coming years that shall demonstrate whether the newly implemented regulations will be used in accordance with the intentions of the Polish and European Union legislators.
The changes in the scope of liability for trademark infringement
On 16th March 2019, the Act of 20th February 2019 on amendment of the Law on Industrial Property came into effect, adjusting the national regulations to the Directive of the European Parliament and the Council (EU) no. 2015/2436 as of 16th December 2015. One of the assumptions of the said Directive was to facilitate the process of combating the traders of counterfeit goods. The amendment broadens the circle of entities which may be held liable for trademark infringement. So far, a trademark owner has been able to raise claims against a direct infringer, namely the entity using a trademark in an unlawful manner in turnover. According to the Law on Industrial property, trademark use shall among others consist in: affixing the mark to the goods or their packaging, import, export or storing the goods for these purposes, affixing the mark to business documents connected with introducing them onto the market, and using the mark for advertising purposes. In addition, the right holder was able to raise claims against a person who was only introducing into trade the goods bearing the holder's mark, if these goods did not originate from the right holder, or from a person who had the right holder's authorization to use the mark. Currently, on the basis of the amended regulations, one can also hold liable a person whose services were relied on in the process of committing trademark infringement - "an intermediary".
Who is an intermediary?
The Act does not provide a definition of the term "intermediary". In order to clarify what falls within the scope of this term, one has to analyze the views expressed in this regard before the amendment, along with the standpoint expressed in the reasons of the draft of amendment to the Law on Industrial Property. Basing on this analysis, one can infer that within the scope of the term "intermediary" the following, among others, will be included: market hall lessor, shopping center owner, trade fair organizer, all of whom provide commercial or exhibition space to the entities infringing trademark protection rights. In theory, the entity that can also be regarded as an intermediary is advertising agency, the services of which were used by the infringer, or even a courier delivering the shipment of goods, or a warehouse owner, where the counterfeit goods were stored. Each of the aforesaid parties will be the entity, whose services were used by the infringer. Thus, for the entities providing a variety of services on behalf of infringers, the new regulation may pose a risk of being held liable for the infringement of trademark rights.
The lack of knowledge does not always release from liability
What is essential, it must be assumed that on many occasions intermediaries will not have any knowledge about the illegal activity of their business partners. For this reason, the legislator indicates that against an intermediary it will be possible to raise only a part of claims, which the right holder can raise directly against the infringer. These claims shall include the following demands: to cease the infringement, to surrender the unlawfully obtained profits, and – should the infringement be culpable – also to repair the caused damage. As far as this legal solution is undoubtedly favorable from the point of view of trademark owners, it may raise concerns among potential intermediaries, especially if they are not aware of the committed infringement.
The scope of liability
However, in practice, honest entrepreneurs should not be afraid of the above mentioned legal changes, as the scope of their liability will depend on the scope of the undertaken actions and the nature of these actions. If there arises an obligation to return the unfairly obtained profits, for example – the income from commercial space rental, an intermediary shall be entitled to make a recourse claim against a direct infringer on the basis of general provisions of the civil law. Owing to this, the intermediary will be able to obtain a compensation for a loss caused by fulfillment of claims raised by the trademark owner. One can say that from the point of view of trademark owners, in the scope of claims against intermediaries, the most important will be the claim for cessation of infringement of exclusive rights, including for example the cessation of storing the infringing goods or presenting them at trade fairs. The fulfilment of such claim should in practice not be detrimental to the interest of an intermediary, who – by compliance with the rightful owner's request – shall order the infringer to remove the goods infringing a trademark from the intermediary's trade fair or market hall. The entrepreneurs, who may play the role of intermediaries because of the nature of their services provided within business activity, should take the appropriate precautions to guarantee that the potential claim for the cessation of infringement is effectively executed, for example by including the appropriate provisions in the agreements and regulations signed with third parties. Claims can also be raised against those intermediaries who have so far denied to admit liability, justifying themselves by the lack of knowledge about the infringement, although trademark owners had already informed them about the illegal activity of their business partners.
In the light of above, the intermediaries, who genuinely did not have any knowledge about the infringement, should not be seriously affected by the consequences resulting from the new regulations.
However, if an intermediary is proved to have been aware of illegal character of the activity of his business partner, he may be charged with claims for damages. This legal measure should not evoke any controversy, as in such case the intermediary's activity was obviously culpable.
To sum up, one can expect that the above discussed amendments will be a step forward in combating trademark infringement. The adjudicative practice in the following years will demonstrate whether the new regulations are applied in compliance with the intentions of the Polish and European legislators.
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.