HOW TO PROVE TRADEMARK RIGHTS IN COURT

Feb 14, 2023

After obtaining the right to a trademark (sometimes colloquially referred to as registering a logo or patenting a mark), the question arises as to how to prove in a dispute that we actually have this right. There are many options, they have different evidentiary strengths, and choosing the right one can weigh on the outcome of the ongoing dispute. This is why lawyers are quite meticulous about the form of proof.

HOW TO PROVE THE RIGHT TO A TRADEMARK

The right to a trademark derives primarily from the certificate of protection that the Polish Patent Office sends after granting the right and registering the mark in the register, as well as from an extract from the Patent Office database.

While it is perfectly fine to use the certificate of protection shortly after obtaining the right to a trademark, submitting this document several years after obtaining the right will certainly meet with disapproval from the lawyer on the other side of the dispute. This is because a certificate of protection certifies only that the right was once granted, it does not prove that a certain person actually has the right at the time of the dispute. Indeed, the right to a trademark can be cancelled, but it can also expire if the renewal fee is not paid after 10 years. Therefore, it is important to present a possible up-to-date document. Such a document should be an extract from the register, issued in accordance with the regulation of the Prime Minister’s Decree of 12.01.2017 on the registers kept by the PPO.

EXCERPT FROM THE REGISTER FOR PROOF OF TRADEMARK RIGHTS VS. PRINTOUT FROM A WEBSITE

An excerpt from the register is an official document, the issuance of which must be preceded by an appropriate procedure and payment of a fee of 60 or 100 zlotys, depending on the scope of the information to be included in the excerpt. A printout, on the other hand, is a simple copying by means of paper or other medium, of the information that is visible on the Patent Office’s website. Such a printout is free and can also be submitted during a dispute.

So what is the difference between a paid extract from the register and a free printout? The difference seems to be purely theoretical, but it can determine the fate of a dispute.

According to the Code of Civil Procedure, an extract from the register is an official document, as referred to in Article 244 of the Code of Civil Procedure. Such a document enjoys two presumptions: the presumption of authenticity and the presumption of truthfulness. This means that once a party presents an official document in court, it is up to the other party to prove that either the document is not from the authority that issued it, or that it does not contain truthful information. Demonstrating these circumstances would require a great deal of expert evidence.

In contrast, printouts and photocopies, even if they are printouts from official websites of state bodies, do not benefit from these presumptions, as they do not have the status of an official document. Lawyers argue about whether this evidence has the character of private documents, or is another means of evidence, or has no evidentiary power at all.

Recent case law takes the position that printouts from the website of the Polish Patent Office should be considered another means of evidence, not a private document. However, this does not take away the evidentiary power of such a printout, which the court is obliged to take into account and determine whether it gives credence to this evidence and whether the circumstances it was intended to prove are proven.

Such a conclusion follows from the decision of the Court of Appeals in Poznań of 29.09.2022, XIX GW 240/22, in which the Court held:

“In the current state of the law, a document in the sense of substantive, but also procedural civil law, is any medium that makes it possible to get acquainted with the information contained in it (Article 773 of the Civil Code). Thus, even photocopies can be such, as long as human thought is contained in them. If, moreover, there is text in them and it is possible to determine the person from whom it Ref. XIX GW 240/22 comes (defined by the legislator as the “issuer of the document”), then Articles 2431 et seq. of the Code of Civil Procedure apply to them. Naturally, this rule does not extend to the norm of Article 245 of the Code of Civil Procedure, because due to the lack of written or electronic form, it cannot be assumed that the person whose signature appears on the photocopy made the statement contained therein. In the current state of the law, although uncertified photocopies of documents do not constitute documentary evidence under Articles 244 and 245 of the Code of Civil Procedure, they are not deprived of evidentiary power, within the meaning of Article 232 of the Code of Civil Procedure in conjunction with Article 308 of the Code of Civil Procedure. This evidence, like any other, is subject to the court’s evaluation under Article 233 of the Code of Civil Procedure. Printouts, on the other hand, are to be considered another means of evidence within the meaning of Article 309 of the Code of Civil Procedure.”

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