At times the owner of a trade mark is required to tolerate use of the trade mark in good faith by other people running local businesses on a small scale. This concerns so-called prior users as provided for in art. 160 of the Polish Act of 30 June 2000 on Industrial Property (text: ISAP). In its most recent judgement the Polish Supreme Court (case no. IV CSK 287/15) emphasized the importance of the basic criteria in that provision.

The ruling comes as a result of a cassation appeal filed by owners of beauty salons. In a case before common courts the owners sought to enforce their rights to trademarks registered with the Polish Patent Office for services including hygienic and beauty care (class 44 of the Nice Classification). The characteristic element that was common to the markings being the subject of the dispute was the words “skin expert”.

The Supreme Court has also discussed the requirements for legal testing of the similarity of trade marks combining word(s) and figurative mark(s), as well as analyzed the model of an ‘average consumer’. Commenting on the respective national provisions the Supreme Court has referred to the EU case law, especially the ECJ judgment of 25 March 2010 in BergSpechte case, C-278/08 (text: CURIA) and ECJ judgement of 20 March 2003 in LTJ Diffusion case, C-291/00 (text: CURIA).

See also another judgements on trademark law in NEWS: Fair “referential” use of logotypes…