The most characteristic protection regime for signs used in business activities remains industrial property law, particularly in the field of trademarks. Many people may not realize, however, that the Act of 16 April 1993 on Combating Unfair Competition (Journal of Laws of 2022, item 1233, as amended) (hereinafter referred to as "ZNKU") constitutes, to a certain extent, a competitive protection regime that may be particularly attractive to entities that have not registered their rights under industrial property law.
It is worth paying particular attention to Article 5 of the ZNKU, according to which: "An act of unfair competition is a designation of an enterprise that may mislead customers as to its identity by using a company name, name, emblem, abbreviation, or other distinctive symbol previously used, in accordance with the law, to designate another enterprise." The "designation of an enterprise" referred to in this provision should certainly be understood as the formal names of companies, cooperatives, or other entities conducting business activities. Very often, the name of an entrepreneur coincides with the name of the enterprise. Sometimes, however, these names may differ, which often depends on the industry in which the entity operates or the business strategy. However, the provision in question also provides for a designation in the form of an abbreviation. Examples include Pekaes, WBK, and Pekao SA. (J. Szwaja (ed.), Act on Combating Unfair Competition. Commentary. 5th ed., Warsaw 2019).
The Trademark Protection Act (ZNKU) does not make the granting of protection under the commented provision conditional on any formal actions. On the other hand, the mark must be used in trade, while the trademark protection regime allows for prohibiting third parties from using a registered mark for a period of five years from registration, even if the right holder has not used the mark during that period. Certain evidentiary difficulties in pursuing rights under the ZNKU are also posed by the need to demonstrate that the entity seeking to block a competitor's use of the name has previously used the mark.
It's also worth noting that a prior designation must be used lawfully. An interesting example is the case concluded with the ruling of the Poznań Court of Appeal of May 27, 2014 (case file reference I ACa 222/14 Legalis). The parties entered into an agreement under which the franchisee used the franchisor's logo, company name, and know-how. The court ruled that such use was not unlawful. Although the provision in question does not address whether a given designation is descriptive or not, as with trademarks, it should be noted that no entity will be able to monopolize descriptive designations, meaning those that convey information about the subject of its business.
Neither the Industrial Property Law nor the Industrial Property Law provide clear conflict rules between the protection regimes discussed. It is worth noting the concept of "formal" and "substantive" protection, where formal protection is linked to the mere fact of registration. In its ruling of September 30, 1994 (III CZP 109/94, OSN 1995, No. 1, item 18), the Supreme Court stated that "if the plaintiff had actual commercial contacts under the name of the company operated by the plaintiff, and the defendant's subsequent registration of a trademark with a wording identical to the name of the plaintiff's company could mislead consumers, the conditions for unlawful use of that mark would be met. The fact that the defendant obtained registration of the said trademark has no impact on the assessment of this unlawfulness. Thus, the legal protection thus acquired under registration (Article 10 of the Industrial Property Law) is merely a formal right." In such a situation, the protection provided for in the Industrial Property Law would take precedence. It is also worth noting Article 160, paragraph 1. 1 of the Industrial Property Law, according to which: "A person who, while conducting local business activity on a small scale, used in good faith a sign subsequently registered as a trademark for another person, has the right to continue to use that sign free of charge to no greater extent than before." As we can see, the legislator undertakes to regulate the relationship between the two regimes to a certain extent, but this is not a comprehensive regulation.
In summary, it should be noted that the protection of company designations provided by the Trademark Registration Office (ZNKU) may prove attractive to entities that have used these designations without formal disclosure. However, it is important to bear in mind the additional requirements associated with seeking this type of protection, particularly the need to demonstrate prior use of the designation. This should not, however, discourage anyone from registering trademarks, which do, however, guarantee more absolute and secure protection.
This alert is for informational purposes only and does not constitute legal advice.
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