In special cases the use of other people’s trade marks is permitted. The issue of the limit to lawful use of others’ trade marks is addressed in the most recent judgement by the Polish Supreme Court (case no. I CSK 327/14).

The main subject of the dispute was the extent to which there are grounds for use of marks by a former authorized dealer in legislation on limitation of the effects of a Community trade mark, in particular art. 12 section 1(c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the community trade mark (text: Eur-Lex).

According to the wording of that provision (valid that time) Community trade mark shall not entitle the proprietor to prohibit a third party from using the trade mark in the course of trade, where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts,
provided he uses them in accordance with honest practices in industrial or commercial matters.

In the light of the facts of respective case the Polish Supreme Court has addressed the situation, when the mark is used in a way that may create to the impression that there is a commercial connection between the other undertaking and the trade mark proprietor. While analyzing the issue the Court has referred to the EU case law, especially the ECJ judgement of 23 February 1999 in BMW case, C-63/97 (text: CURIA) and ECJ judgement of 17 March 2005 in the Gilette Company case, C-228/03 (text: Curia).

See also another judgements on trademark law in NEWS: ‘Prior-user’ defense in trade mark disputes…