Genuine Use in inter partes cases

4th Liaison Meeting on Trade Marks11-12 June 2009

 

Use of a trademark excluding possibility of lapsing right of protection:

• must take place in Poland• must be genuine (real) and serious• should concern registered trademark and goods for which it was registered 

Use of a trademark should concern registered trademarkex:

Naomi Naomi Campbell

Article 169 IP Law

The right of protection for a trademark shall also lapse:

• on failure to put to genuine use of the registered trademark for the goods covered by the registration for a period of five successive years, unless serious reasons of non-use thereof exist,

In such cases, the Patent Office shall make a decision on the lapse of the right of protection for the trademark at the request of any party having a legitimate interest therein.

Use of a trademark must be genuine (real) and serious Ex:

Trademark LORD – exclusive shoes

Genuine Use of a trademark also means the use of a mark:

• in a form varying in elements which do not alter the distinctive character of the mark in the form for which the right of protection has been granted,

• by affixing the mark to goods or the packaging thereof solely for export purposes,

• by a third party with the right holder’s consent,

• by a party authorised to use the collective trademark or the collective guarantee trademark. 

Use of a trademark in advertising

Use of a trademark in advertising of the product, which is neither available on the market nor is manufactured in the country for export purposes shall not be deemed to constitute genuine use. 

Burden of proof

Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trademark has been used or that serious reasons for non-use of the trademark exist shall be on the holder of the right of protection.

Assessing genuine use of a trademark Patent Office should take into account specially such agents like:

• scale of use• company’s position on the market• specific features of the market• period of use• type and character of particular product, it’s value and ways of distribution

Thank you for your attention