Types of infringement of a right to trade marks with reputation in Polish and EU jurisprudence

Abstract

This article aims at examining the extent to which the Polish and European Union adjudication bodies apply the EUCJ guidelines regarding determination of each type of the right to a trade mark with reputation (TMwR) infringement. The author analyses and interprets legal provisions of EUTMR and argumentations of variety decisions of European Union and Polish adjudication bodies concerning the problem of an infringement of a right to a TMwR. A close analysis of the latest judicial decisions concerning the TMwR protection indicates that, in principle, detailed guidelines regarding the occurrence of each form of the TMwR infringement are already in place. However, there are still some deviations from these guidelines, most notably in the Polish jurisdiction, since adjudicating bodies tend to see parasitism in the probability of association of juxtaposing trade marks alone. Thus, it happens that a three-step test on the likelihood of transferring trade mark with reputation associations onto goods/services designated with a third party mark (as described below) is omitted. This is especially significant where a later sign is used for goods/service that are not similar to those that are signed by the TMwR. Furthermore, an enhanced evidentiary standard applied in the Intel case seems to be frequently absent in the practice of law application. Changes in the economic behaviour of the average consumer or a serious likelihood that such a change will occur are hardly ever taken into account in the assessment of the activity detrimental to the distinctive character or the repute of a TMwR. Although many years have passed since key preliminary rulings were issued by the EUCJ, which shaped the principles of examining the evidence that pointed to the possibility of an infringement of a right to a TMwR, some negligence and shortcomings in the application of the law in this respect have not been entirely eliminated. Hopefully, the years to come will witness a greater awareness of the binding provisions and principles of their application among adjudication bodies and interested parties alike.