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Scope of criminalisation of acts specified in Article 305 of the Industrial Property Law
Article 305 of the Polish Industrial Property Law establishes the fundamental principle of criminal liability for the trade in goods bearing counterfeit trademarks. This provision underwent significant amendments in 2007, with the term 'marketing' being replaced by 'trading in'. This change was prompted by interpretation uncertainties and a Supreme Court resolution in the I KZP 13/05 case, which indicated that only the initial act of introducing goods to the market would be subject to criminal prosecution, with any subsequent trading in these goods not being within the scope of penalisation.
Trademarks - when a license is required ?
Trademarks are increasingly an important element in the conduct of business by entrepreneurs, enabling them to build a reputation and recognition in the market among competitors. Obtaining a right of protection gives the right holder a kind of monopoly on the use of the trade mark for profit or for professional purposes. The right holder may authorise another person to use the mark by concluding a license agreement with that person. In the absence of a license, the use of the mark will, as a rule, be an unlawful activity.
The Polish Industrial Property Law (IPL) contains a catalogue of exemplary acts constituting the use of a trademark. Pursuant to Article 154 of the IPL, the use of a trademark consists in particular (but not exclusively!) in:
THE EXTENT OF TRADEMARK PROTECTION: CJEU RULING IN CASE C-334/22 (AUDI V. GQ).
In January of this year, the Court of Justice of the European Union (CJEU) issued a ruling in the high-profile case between Audi AG and the Polish entrepreneur operating under the name GQ. The Court sided with Audi, concluding that a car manufacturer holding an EU trademark may prohibit the use of a sign identical or similar to that trademark in spare parts.
The CJEU thereby confirmed that the so-called repair clause, established concerning Community designs, cannot be analogously applied to trademarks. Furthermore, the Court acknowledged that trademark protection rights can be invoked regardless of the purpose of using the sign in a spare part, particularly irrespective of whether the mark was used to fulfill a technical function.
