For any trademark that is filed for registration, third parties may file an opposition citing their prior rights, regardless of whether the mark was filed under national, EU, or international procedures. Under national procedures, one of the grounds for filing an opposition, as defined in Article 1321, paragraph 1, item 1 of the Industrial Property Law, is demonstrating that the use of the applied-for trademark infringes the personal or property rights of third parties.
It's worth emphasizing that this category does not include protection rights granted for earlier trademarks, as infringement of these rights constitutes a separate relative obstacle to the granting of trademark protection rights. This obstacle will specifically apply to the right to: a surname, pseudonym, company name, name of a legal entity other than an entrepreneur, image rights, copyright, industrial design rights, the name of an artistic group, press titles, and titles of works or earlier company designations. It's worth examining several of the categories presented above in more detail.
Copyright infringement will occur when a trademark constitutes a work, and its specific use can be considered use of the work in one or more fields of exploitation. It is also worth recalling that for a trademark to constitute a work within the meaning of Article 1, Section 1, it must be a manifestation of creative activity of an individual nature, established in any form. Meeting these requirements will be particularly important in the case of figurative and figurative marks. A graphic element, especially a more complex one, revealing the author's "personal stamp," will constitute a work. Simple marks, for example, those consisting of basic geometric elements presented in simple colors, will not be classified as works. Therefore, recognizing a trademark as a single color will be even more difficult, and recognizing a trademark as a combination of colors will be significantly more difficult.
Very rarely, a word mark will be recognized as a trademark. It's also worth emphasizing that we're talking about word terms that can even possess a very high degree of distinctiveness from the perspective of the goods they designate. If we call a sports store "velvet oak," such a name will undoubtedly possess this distinctiveness, given that it has nothing to do with the goods sold by this type of business. Nevertheless, this name is not original within the meaning of copyright law, given that it is a simple combination of existing words assigned to a given activity. It seems that a certain margin of exception to this rule could be allowed in the case of filing a trademark that also constitutes the original title of a work (titles of works may, quite exceptionally, meet the requirements for copyright protection – see Nt 76). (see: K. Osajda (series editor), Ł. Żelechowski (volume editor), Industrial Property Law. Commentary. 2nd ed., Warsaw 2022, art. 132(1)).
The possibility of infringing rights derived from the registration of an industrial design is also quite significant. An industrial design is a new and unique form of a product or its part, given to it in particular by the features of the product's lines, contours, shapes, colors, texture, or materials, as well as by its ornamentation (Article 102, Section 1 of the Industrial Property Law). If a previously registered industrial design is a three-dimensional product, and the trademark is a three-dimensional mark, it may infringe upon that earlier design, provided there is an appropriate degree of similarity.
Surnames seem to be a particularly interesting category. It's worth emphasizing at the outset that a surname can be registered as a trademark, which is common practice in some industries. It doesn't matter whether the surname is common or simple (e.g., Smith or Kowalski). A refusal will apply, particularly if the mark is registered by a person who doesn't bear the surname, or if the registration is filed by a legal entity, unless, of course, such entity has obtained the appropriate consent from the interested party.
In summary, it's important to remember that not only the prior registration of a similar or identical trademark can constitute grounds for an opposition to trademark registration. We have a very broad category of rights that can be invoked to block trademark registration. It's particularly important to remember such important legal protection categories as personal rights and copyrights.
This alert is for informational purposes only and does not constitute legal advice.
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