We're returning to the topic of trademarks. In today's post, I'll outline the rights available to you in the event of a trademark infringement.

The above issue is regulated by Article 296 of the Act of 30 June 2000 – Industrial Property Law (UPWP). Pursuant to paragraph 1 of the above-mentioned provision, a person whose trademark protection right has been infringed may demand from the infringer, i.e. the person who infringed their right:

• refrain from violating
• handing over unjustly obtained benefits

These claims are cumulative, regardless of the infringer's fault. This means that during court proceedings, the plaintiff is not required to prove the defendant's fault. However, the defendant cannot defend themselves by claiming no fault. Therefore, these rights apply regardless of whether the infringer knew whether the trademark was registered.

In the event of culpable infringement, the person holding the right to a trademark may also request:

• compensation for the damage caused under general principles
• compensation for the damage caused by paying a sum of money in the amount corresponding to the license fee or other appropriate remuneration that would be due at the time of the claim for consent given by the entitled person to use the trademark

The above claims are for damages. Pursuant to the provision, only one of the above-mentioned claims may be filed.

In the case of compensation for damages under general principles, the provisions of the Civil Code (hereinafter referred to as the Civil Code) should be consulted. The basic rules regarding liability for damages are contained in Articles 361 and 362 of the Civil Code. Under these provisions, compensation for damages covers both the losses suffered by the injured party and the benefits that could have been obtained had the infringement not occurred.

Pursuing a claim under general principles requires the following conditions to be met:

• the occurrence of an event involving infringement of trademark protection rights
• damage caused by infringement of trademark protection rights
• demonstrating a causal link between the infringer's actions and the damage caused to the property of the person entitled to the trademark
• occurrence of fault on the part of the infringer

The final prerequisite – fault – occurs when the infringer was aware of the trademark protection right being granted and committed the infringement anyway. Fault may also be attributed when, with due diligence, the infringer could have learned of the granting of the right.

Compensation for damages may also consist of payment of a sum of money equivalent to a license fee or other appropriate remuneration that would be due at the time of the claim for the trademark holder's consent to use. In exercising this right, there is no need to prove the amount of damages or lost profits – this refers to the remuneration that the holder would have received had the parties entered into a license agreement.

The Act of 20 February 2019 amending the Industrial Property Law Act extended the catalogue of rights available in the event of trademark infringement, including:

• claim for cessation of placing markings identical to the trademark, including on packaging, labels, tags, and product components
• a claim for cessation of offering, placing on the market or storing for these purposes, as well as importing or exporting packaging, labels, tags, security features, elements or devices for verifying authenticity or any other means on which the mark is placed
• the law regarding the reproduction of trademarks in dictionaries, encyclopedias or similar collections of information
• the right to prevent the transit of goods bearing a counterfeit trademark

So what steps should we take when our trademark rights have been infringed?

The first step is always to file a direct complaint with the infringer, demanding they cease and desist from the infringement and return any unjustly obtained benefits. The complaint can also include other claims, including compensation. If an amicable resolution fails, the only remaining option is to file a lawsuit with the appropriate court.

Finally, it's worth adding that there are no obstacles to asserting claims under the Act of 16 April 1993 on Combating Unfair Competition (hereinafter referred to as the UZNK), alongside claims under the UPWP. However, claims under the UZNK are primarily used when a person does not have a registered trademark. The provisions of the UZNK apply to all designations used in trade.

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