USING SOMEONE’S TRADEMARK
The rule is that you can’t use someone else’s trademark. A rule that is right and effective when it comes to those entrepreneurs who want to avoid litigation at all costs, especially trademark litigation. However, there are situations when the use of someone else’s trademark seems to be necessary, justified by the purpose behind the entrepreneur. And indeed, there are some exceptions to the above rule. In certain situations, someone else’s trademark can be used. One such exception was recently decided by the District Court in Poznań in a dispute between a shopping mall and a well-known restaurant chain.
USE OF THE “SPHINX” RESTAURANT TRADEMARK BY THE MALL
The dispute centered around the fact that the shopping mall published information about the premises on its website. It published photos of the interior and exterior of the mall, indicated the location of specific establishments on a map and their opening hours. One of the premises was the “SPHINX” restaurant, which, however, after some time ceased to be a tenant of the premises in the gallery. The gallery, however, further preserved information about the restaurant’s opening hours, and also kept photos depicting it. These photos included a trademark registered in favor of this restaurant for restaurant services. The restaurant sued the gallery for unlawful use of its trademark.
However, the Regional Court of Poznań, in a judgment dated 29/09/2022, ref. no. XIX GW 240/22, came to the conclusion that the defendant gallery did not unlawfully use the plaintiff’s trademark. According to the court, the mall did not use the plaintiff’s trademark in the basic function of the mark, i.e. in the function of marking goods and services, but only in the advertising function. After all, the mall did not provide restaurant services, but premises rental services for businesses.
According to the Court, it is lawful to use someone else’s mark in the advertising function (advertising one’s own goods and services – e.g., the fact of renting the premises of a certain restaurant), as long as, at the same time, one does not use this other person’s mark in the distinctive function.
USE OF A TRADEMARK IN A DISTINCTIVE FUNCTION
In order to draw correct conclusions from this judgment, it is necessary to determine what the distinctive function of a mark is, so that one does not accidentally expose oneself to the charge of using someone else’s mark in an unauthorized manner.
The use of a trademark is discussed in Article 154 of the Industrial Property Law. It is in this provision that it is explained what characterizes the basic function of a trademark – the distinctive function. This provision reads (Article 154(1) of the IP Law) that the distinctive function is nothing more than placing the mark on the goods covered by the protection right or their packaging, offering and marketing these goods, importing, exporting, storing them for the purpose of offering and marketing, as well as providing services under this mark (if the mark was registered for services).
Thus, if the mark has been registered for goods in the category of “books,” the use of this mark in a distinctive function will be the application of this mark to the cover of a book, its title page, or the packaging in which the book is sold. If, on the other hand, as in the case of the ruling in question, the mark was registered for restaurant services, then the use of the trademark would be to display a signboard over the restaurant, to apply the trademark to the menu cards, to place the mark on receipts.
Does this mean that it is safe to use someone else’s trademark, as long as the mark has been registered for other goods and services, those provided by an entrepreneur wishing to use someone else’s mark? No. Every situation still needs to be thought through under at least two legal aspects – copyright law and the law against unfair competition.
TRADEMARK AND COPYRIGHT LAW
It may happen that someone else’s trademark is also the subject of copyright. In particular, in simplistic terms, a logo can be assumed to be a work if it contains a rich graphic design. The use of such a logo in one’s business, regardless of whether it is the trademark owner who has the economic copyright in the logo or whether it remains with the creator, is exposed to a copyright lawsuit and a demand for payment of damages of twice the remuneration that the creator of the logo would have received if the entrepreneur had contracted with him to use the logo.
However, in a situation where the logo is someone else’s trademark, it is possible that the creator, under normal market conditions, would never grant another entrepreneur such a license – he could expose himself to a legal dispute with the entrepreneur who registered the logo as a trademark. In such a situation, it is possible that the requested remuneration in a lawsuit would be particularly high, so as to compensate the creator for the legal nuisance.
TRADEMARK AND COMBATING UNFAIR COMPETITION
The use of another’s trademark may constitute more than one act of unfair competition. In particular, a very possible charge that may arise in such a situation (even if the trademark is used only in an advertising function) is the charge of parasitism on reputation.
This act consists in the fact that one entrepreneur uses someone else’s mark, the appearance of a product or another element of a competitor’s business in such a way that he “enters” his market place, while saving himself the cost and time he would have had to incur if he had to promote his product himself.
CONCLUSIONS – USING SOMEONE ELSE’S TRADEMARK
It is therefore worth remembering that the use of someone else’s trademark is not always prohibited. Sometimes it can be justified by the purpose of using this mark, the way it is used, the specifics of the industry in which we operate. However, it is worth remembering that such borderline situations may be exposed to charges of infringement of other rights – copyright, or the right to use someone else’s market achievements.
+48 (58) 716 71 68