PACZKOMAT TRADEMARK DISPUTE
Our law firm in Gdansk recently had the opportunity to comment on the current dispute over the Paczkomat trademark. Legal counsel and patent attorney Wojciech Gierszewski presented his position in a legal newspaper article, which we invite you to read. The article is available at the following link: https://www.gazetaprawna.pl/firma-i-prawo/artykuly/8654628,inpost-marka-paczkomat-znak-towarowy.html.
Here, referring to the content of the article, we will elaborate and clarify some legal issues that were referred to in the article.
TRADEMARK PACZKOMAT – DESCRIPTIVENESS
Descriptiveness of a trademark is an absolute registration impediment, which means that if a trademark that is considered descriptive is filed for protection, the Patent Office should independently deny such protection. This obstacle stems from Article 129(1)(1)(3) of the Industrial Property Law and indicates that.
“No right of protection shall be granted for a sign that:
1)consists exclusively of elements capable of serving in commerce to indicate, in particular, the type of goods, their origin, quality, quantity, value, purpose, method of manufacture, composition, function or suitability;”
As we explained above, the Patent Office should itself notice the existence of this obstacle and deny the right to the mark. However, if you notice that another entrepreneur has filed for protection of a descriptive trademark that you would also like to use because it just describes the goods you sell, for example, it is possible to file a letter with the Patent Office drawing attention to the existence of obstacles to registration of the competitor’s trademark
TRADEMARK PACZKOMAT – CANCELLATION
However, the situation was different in the case of the Paczkomat trademark. Here the trademark, despite its descriptive nature, was registered. This means that the elimination of this mark from the legal system was already possible only on the basis of an application for cancellation. According to Article 164(1) of the Industrial Property Law:
“The right of protection for a trademark may be canceled upon application, in whole or in part, if the conditions required to obtain this right have not been met for the reasons referred to in Article 129(1) […].”
Therefore, even if a descriptive trademark has already been registered, an application for cancellation can be filed due to the descriptive nature of the trademark.
In the case of the trademark PACZKOMAT, the trademark cancellation proceedings are still pending.
TRADEMARK PACZKOMAT – DEGENERATION
Degeneration, is a colloquially known premise for determining the revocation of a trademark. This is because, in addition to the request for cancellation of a trademark after its registration, it is possible to file a request for revocation. The legal basis for the possibility of the request mentioned above is Article 169(1)(2) of the Industrial Property Law:
“The right of protection for a trademark shall also expire as a result of:
1) the trademark has lost its distinctive features; 2)the trademark has lost its distinctive features due to the fact that, as a result of the authorized party’s acts or omissions, it has become a customary sign in trade – consisting only of elements that can be used in trade to indicate, in particular, the type of goods, their quality, quantity, price, purpose, manner, time or place of manufacture, composition, function or suitability – in relation to the goods for which it was registered;”.
Such proceedings are not pending against the PACZKOMAT trademark, but as we point out in the Gazeta Prawna article, it is possible in our opinion.
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