WHAT YOU CAN DO WHEN A COMPETITOR USES YOUR TRADEMARK
Entrepreneurs run their business under a name or logo of their choice in order to appear in the minds of their clients and create a specific image of their own brand. Therefore, it is extremely important for entrepreneurs to react to all activities of their market competitors who infringe their trademark rights or copy a mark used unfairly.
We note that sometimes it is difficult for entrepreneurs to identify the infringing actions of market competitors and choose the correct strategy to prohibit a competitor from using our tag or company name. Therefore, below we present the most frequently noticed market situations, their threats and possible directions of solutions.
SITUATION NO. 1 – COMPETITOR USES MY TRADEMARK
In the above situation, we assume that you have the right to a trademark, i.e. you have used the administrative procedure before the Polish Patent Office, EUIPO or WIPO. Your right gives you the exclusive and absolute right to use the registered designation (e.g. logo) for certain goods and services, previously indicated by you in the application and entered in the register by the Office. If you discover that another entity is using an identical or similar trademark for the same or similar goods and services in the same territory as your trademark.
Example 1: You have the word mark “rose”, registered for goods in class 3: cosmetics, the mark was registered only in the Patent Office of the Republic of Poland. Your competitor uses the word “rose” for goods in class 3: cosmetics, the competitor uses this mark in Poland. You can prohibit a competitor from using the word “rose” for cosmetics because they use an identical mark for identical goods.
Example 2: You have the word mark “rose”, registered for goods in class 3: cosmetics, the mark was registered only in the Patent Office of the Republic of Poland. Your competitor uses the word “rose” for goods in class 3: soaps, the competitor uses this mark in Poland. You can prohibit a competitor from using this mark because he uses an identical mark for similar goods.
When prohibiting a competitor from using the trademark, in the first place, an official summons to cease infringement should be sent to him. If a competitor does not accept your demands, the case may be brought to court. Then, in the lawsuit, you can demand that a competitor be prohibited from using the trademark, and even order him to pay a sum of money corresponding to the license fee for the use of your trademark.
You should also pay attention to whether the competitor does not submit his / her trademark copied from you to the Patent Office. If you notice such a report, you must submit an objection to that application. This will block a competitor from obtaining an artificial, formal right and make it easier for you to pursue your rights further in court. If you are late and fail to file an objection to the application and the competitor’s trademark is already registered, it is possible to file an application for invalidation of this right.
SITUATION NO.2 – COMPETITOR USING MY UNREGISTERED LOGO
If you do not have a registered trademark, but you have a word, figurative or word-figurative sign that you use in trade, and you notice that a competitor started using an identical or similar logo later than you, the provisions of the law on combating unfair competition will help to block the competitor’s actions.
The Act on Combating Unfair Competition provides that an act of unfair competition is, for example, labeling one’s goods and services in such a way that it may expose recipients to error as to their origin. Therefore, this applies to situations where both signs are identical or highly similar and there is a real possibility that there will be confusion among customers who are under the wrong belief that the goods of one trader are goods of another trader.
Example 1: You have been using the logo with the word “rose” on your cosmetics products for many years. Your competitor has just started using the same logo on their cosmetics. Customers complain about goods that you have never sold to them, but in fact they come from a competitor. You can prohibit a competitor from using the word on these goods, there have been real mistakes in the market, which proves that the signs are misleading customers.
In the case of unregistered signs, there is basically no other way than the court. In the first place, however, a request should be sent to the competitor, in which we will clearly specify our demands and explain the position in legal terms. Only when the competitor fails to react, should the case be referred to a common court, with demands for the cessation of the infringement, compensation for the damage or the issue of unjustified profits.
An entrepreneur should bear in mind that cases based on the provisions of the Act on combating unfair competition are much more demanding and less predictable than in the case of proceedings based on trademarks. If the entrepreneur knows that he will not be able to obtain the right to a trademark or consciously resigns from incurring the costs of registering such a trademark, it would be worthwhile for the entrepreneur to collect evidence confirming the fact that he or she uses the sign on the market – leaflets advertising his activities, photos of products, remembering that they should always be provided with the date of their preparation.
In each of the above situations, the entrepreneur may seek legal assistance from a patent attorney, attorney and legal advisor. However, it is important to outsource the case to a lawyer who has real knowledge and experience in the field of intellectual property law. These cases are complex in nature and require extensive knowledge of trademarks and acts of unfair competition, and an additional difficulty is also the new regulations on economic and intellectual property proceedings, the ignorance of which, or failure to work by a lawyer in practice, may have negative consequences. for the entire procedure.
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