In a judgment from 19 February 2009 (signature VI SA/Wa 1917/08) District Administrative Court in Warsaw overruled the decision of the Polish Patent Office in the subject of annulling the right of protection for the trade mark “corotape” issued as a result of a submitted opposition claiming bad faith of the applicant and the fact that the above-mentioned mark is similar to the trade mark “coroplast”.
The Court hearing the case ruled that application of a trade mark in bad faith takes place when it occurs despite the knowledge or lack of it, which is a result of lack of diligence, about the existence of a third party’s right or interest worthy of being protected, which might be threatened because of that, and with the intention of harming those interests. The Court pointed out, that in assessing bad faith on the applicant’s side the reprehensible intention from the point of view of honesty has significant importance. It is the case when the application of a trade mark is performed to eliminate competition with the intention of intercepting its clients. Therefore acts in bad faith who knows or after applying due diligence should have known about the actual and successful use of a mark by another entrepreneur and, forestalling his application to register the mark, himself applies to register that mark. Acts in bad faith also who submits the application of a mark belonging to a foreign entrepreneur only in the purpose of preventing him from obtaining the protection in Poland or in the purpose of obtaining benefit from disposing the obtained right.
In the Court’s judgment, basing on the above-mentioned deliberations it appears impossible to recognize acting in bad faith in a case of submitting an application of an only similar, because of using the same prefix, trade mark. The mere fact that the applicant knew about the use of a similar mark by another entrepreneur does not suffice to assume his bad faith.
Katarzyna Kręźlewicz
Patent Attorney
Jarzynka & Partners – Law-Patent Office
Al. Jana Pawła II 70/10
00-175 Warsaw
TEL: + 48 22 861 21 21
FAX: +48 22 861 21 22
http://jarzynka.eu/
