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21 September 2015
The problem of establishing the boundaries of a trademark's protection is of profound importance for the rights holder and parties that could be suspected of unlawfully using another party's exclusive rights. The EU Community Trademark Regulation (207/2009) provides few restrictions on trademark rights, one of which is set out in Article 12(c):
"A Community trademark shall not entitle the proprietor to prohibit a third party from using in the course of trade… (c) the trademark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided that he uses them in accordance with honest practices in industrial or commercial matters."
By providing such a general clause, the legislature left it to the courts to define more closely inadmissible forms of using a third party's trademarks.
Article 12(c) reiterates the principle established in Article 6(1)(c) of the EU Trademarks Directive (2008/95/EC). Similar rules can be found in national trademark laws throughout the European Union, including Article 156(1)(3) of the Polish Industrial Property Law. The prior restriction on trademark rights is also referred to as the "informative use of a trademark".
On June 17 2015 (I CSK 327/14), the Supreme Court examined a cassation appeal brought by Mazda against a former distributor of its cars and ruled in favour of the claimants. The former distributor continued to use three trademarks for second-hand cars:
The marks were used in advertisements and commercial documents and, in particular, outside the car showroom in the same way that they had been used when the defendant had been an official seller of Mazda cars.
The Supreme Court went further in its interpretation of the indispensability requirement included in Article 12(c) of the Community Trademark Regulation than the European Court of Justice in cases C-63/97 BMW and C-228/03 Gillette. The written reasoning is forthcoming, but the court emphasised that:
Following the Supreme Court ruling, interference with the rights holder's rights should be considered when examining the indispensability of using a trademark. If the word trademark is sufficient to indicate the intended purpose of the goods or services, a third party is not allowed to use logos or word-figurative versions of the mark.
For further information on this topic please contact Szymon Gogulski or Sylwia Macura-Targosz at Soltysiński Kawecki & Szlęzak by telephone (+48 22 608 7000) or email (firstname.lastname@example.org or email@example.com). The Sołtysiński Kawecki & Szlęzak website can be accessed at www.skslegal.pl.
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