TM REGISTRATION CANNOT BE RETALIATION ON FORMER EMPLOYEE

Many cases related to intellectual property or, more broadly, unfair competition, originate from actions taken by former employees of a given entity. Typically, such an employee starts a competitive business in which he naturally uses the knowledge and experience gained in his previous job. Sometimes, however, this use extends into areas that threaten the interests of the former employer, and also concerns, for example, registration or use of its markings.

A rather unusual situation occurred in one of the cases considered by the Regional Court in Gdańsk. In this case, the employee (defendant) established a competitive business selling products under his chosen trademark while still employed. Moreover, this employee, being the commercial director of the Plaintiff, ordered his trademark to be placed on the packaging of the Plaintiff’s products in order to promote his brand or create the impression of a connection between the brands. After discovering the practice, the Plaintiff dismissed the defendant and decided that due to the fact that the above was done as part of the defendant’s official duties, he, as the employer, was entitled to the marking. Therefore, he registered the mark at the Polish Patent Office. The above was also related to the lack of certainty as to the possibility of further use of packaging with the indicated trademark.

The plaintiff was in possession of a certain amount of these packages. The plaintiff filed an action for infringement of the trademark right against the defendant, who in turn filed an action for invalidation of the trademark right due to it being obtained in bad faith. The court in the case agreed with the Defendant that it was unfair for the Plaintiff to obtain trademark registration. The court pointed out that it constituted a form of retaliation against the employee – a private vendetta against him. Its purpose was to block the use of the mark, and the Plaintiff was not even interested in using the mark. At the same time, the court recognized the unfair action of the Defendant, but pointed out that it cannot in itself be a basis for retaliatory actions in the area of trademarks. The plaintiff may submit claims to it on other legal grounds. In the light of all the circumstances, the judgment seems to be correct, in particular as regards the assessment of the lack of intention to use.

Since the Plaintiff has not started using the mark for many years, and the packaging with the mark remains in his warehouse, it seems that this fact undoubtedly proves that there was no intention to use it at the time of applying for protection of the mark. What may be puzzling, however, is the lack of assessment of the circumstances (especially in the area of copyright to the logo) that it was the Defendant who provided the said mark as an employee of the Plaintiff, and therefore gave consent to its use. The plaintiff’s “knowledge” of the lack of rights was separated from the legal consequences of the defendant’s actions. The court equated the knowledge of the Plaintiff with the knowledge of the President of the Management Board. Therefore, it seems that the Plaintiff has gained some kind of authority to use the sign, which, of course, does not affect his subsequent and intentional failure to use it.

Judgment of the Regional Court in Gdańsk of September 14, 2023, XVII GW 209/21.