Trademark - misleading product labeling
The innumerable number of goods and services on the market not only offers a choice but also increases the competitiveness between entrepreneurs. The effect of such a phenomenon is misleading potential consumers by using similar designations for products or services used on the same market. What trade mark may mislead the consumer and what protection is available in relation to such infringements?
What constitutes a misleading trademark?
There are many companies producing products of the same type on the market, but it is necessary that the products from a specific entity differ significantly from each other, thanks to which the consumer will have the right to choose the brand and properties of the product that he wanted to buy from a specific entrepreneur.
According to the Act on Combating Unfair Competition, a designation that may be misleading or lacking will refer to the origin, quantity, quality, ingredients, usefulness, etc. (Article 10 of the Act on Combating Unfair Competition).
The mark of the goods is a trademark that enables to distinguish the goods of one entrepreneur from another (art. 120 of the act on industrial property law). A trademark can be a word, a drawing, a letter, a three-dimensional form or a color.
Supreme Court judgment of 2 February 2017 (I CSK 778/15)
The trademark may be a color per se and a combination of colors.
The price cannot be regarded as an indication of a given product, and therefore similar to the price of a product of the same type - as misleading.
The level of prices of the compared products cannot be significant for the assessment of the similarity of their signs (judgment of the Supreme Court of 6 May 2009, II CSK 665/08).
A trade mark must be constructed in such a way as not to be misleading in connection with the sale of products on a given market. According to the Administrative Court in Warsaw, the ability to distinguish is manifested in the fact that the trademark cannot mislead the participants of the trade as to the origin of the goods, which indicates that the designation for use may be granted only to one entity (judgment of the Administrative Court in Warsaw of January 12, 2018 r., VI SA / Wa 1761/17).
Marketing of products whose dominant element in the designation of the product is very similar to the trademark of another entrepreneur, creates a risk of confusion as to the origin of the product (judgment of the Supreme Court of January 15, 2014, I CSK 184/13).
A company that produces a mushroom sauce on the packaging of its product uses a marking in the form of a combination of two colors - red and green horizontally, with red at the top and green at the bottom. Another entrepreneur, wanting to obtain a better sales result, also used these two colors in his trademark, but reversed their order. In such a situation, there is a trademark infringement and the first entrepreneur may demand that the combination of such colors be discontinued on his product.
Trademark protection rights
Each entrepreneur creates a trademark for his product that is to distinguish him from other products from other companies. It can be used by:
placing the mark on goods covered by protection law or their packaging;
placing the mark on documents related to the marketing of goods or related to the provision of services;
using it for advertising purposes (Article 154 of the Industrial Property Act).
For the exclusive use of a trademark in the territory of the Republic of Poland, the entrepreneur is required, however, to submit an application for entry in the trademark register by the Patent Office. In connection with obtaining a protection right, he gets the right to use the trademark for commercial or professional purposes throughout the territory of the Republic of Poland. The duration of protection is 10 years and may be extended for a further 10 years if the appropriate fee for protection of the trademark is paid. Extension of the protection right will also require an entry in the register of trademarks (Article 154 of the Act on industrial property law).
Judgment of the Court of Appeal in Białystok of June 26, 2015 (I ACa 1028/14)
In order to obtain protection, the packaging must be completely distinctive, that is, it must have the ability to individualize the product and thus indicate its origin from a specific entrepreneur. Simple packaging in its form can also be protected, provided that they have the power to distinguish the goods.
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Trademark - infringement claims
The right to a trademark does not mean that they will be infringed by other entrepreneurs in connection with the use of a similar, misleading trademark. In such a case, the entrepreneur has two legal options, under which he may demand that the violations be stopped and the damage be remedied.
Pursuant to the Act on Combating Unfair Competition, entrepreneurs are entitled to broad protection of their rights. In the event of violations or threats, the aggrieved party has the right to file the following claims:
cessation of unlawful activities;
removing the effects of prohibited activities;
submitting a single or multiple declaration with appropriate content and in an appropriate form;
compensation for the damage caused;
issuing unjustified benefits;
adjudication of an appropriate amount of money for a specific social purpose related to supporting Polish culture or protection of national heritage - if the act of unfair competition was culpable (Article 18 of the Act on Combating Unfair Competition).
In the case of signs placed on goods or their packaging or statements contained in an advertisement, the burden of proof rests with the person who is accused of an act of unfair competition related to deception (Article 18a of the Act on Combating Unfair Competition).
Another possibility of protection will be available on the basis of the act on industrial property law, which provides a number of claims for entrepreneurs whose rights to a legally protected trademark have been infringed. As part of the claims, the person whose rights to the trademark have been infringed may request:
cessation of violations;
issuing unjustified benefits;
in the event of a culpable breach, repair the damage on general terms or by payment of a sum of money in the amount of the license fee or other appropriate remuneration.
The holder of the protection law or a person whose law allows it, may also request the omission of:
affixing a sign identical with or similar to the trade mark on packaging, etc .;
offering, marketing, import or export or storage for offering or marketing, packaging etc. (Article 296 of the Industrial Property Act).
Supreme Court judgment of 4 March 2009 (IV CSK 335/08)
In order to establish the similarity of the signs, a degree of similarity that leads to the association (merger) of the marks by potential recipients is sufficient as a condition for infringement of a protection right for a renowned trademark.
The Act of April 16, 1993 on Combating Unfair Competition
The Act of June 30, 2000 on industrial property law