You probably wish to know when you are allowed to use another company’s trademark. In certain circumstances, when goods with a trademark have been placed on the market, it is possible to resell them and use another company’s trademark, or even advertise your services with a trademark that you do not own the rights to.
Do you want to advertise your activity with another company’s trademark? Do you want to place another company’s trademark on your shop’s website? Or perhaps you want to send an offer to your contractors? Find out how to do this legally.
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The exhaustion of rights conferred by a trademark in Poland and the European Union
Let’s get to the point. If you want to use another company’s trademark, you must pay attention to the notion of the “exhaustion of rights conferred by a trademark”, which results directly from the regulations of both the European Union and Polish laws.
Pursuant to Article 15(1) of the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks:
a trademark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Union under that trademark by the proprietor or with the proprietor’s consent
and Article 15(1) of the Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark:
an EU trademark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trademark by the proprietor or with his consent.
It is worth noting that in Poland we also deal with exhaustion of the right of protection for a trademark and this is directly provided for in Article 155 of the Act on Industrial Property Law:
1. The right of protection for a trademark shall not extend to the acts in respect of the goods bearing that trademark consisting, in particular, of offering the goods or further putting on the market the goods bearing that trademark, where the said goods have earlier been put on the market on the territory of the Republic of Poland by the right holder or with his consent.
2. The right of protection for a trademark shall neither be considered infringed by an act of importation or other acts, referred to in paragraph (1), in respect of the goods bearing the trademark, if these goods have earlier been put on the market on the territory of the European Economic Area by the right holder or with his consent.
Both in the European Union and in Poland, using another company’s trademark is possible if the rights conferred by the trademark are exhausted. However, several of the conditions set out in the above provisions, which I will describe below, must be fulfilled.
When can you legally use another company’s trademark?
A trademark owned by another company may be legally used if the right to the trademark is exhausted, which happens if the following conditions are jointly met:
- the trademarked product has been placed on the market;
- the marketing was carried out by or with the consent of the trademark proprietor;
- the goods were introduced to the market in the European Economic Area (EEA).
Using another company’s trademark – the exhaustion of rights
It is crucial that the exhaustion of the right does not occur in relation to every product produced by the trademark proprietor. This concerns only those specific items and copies which have been placed on the EEA market.
I’m sure you have seen serial numbers of products or other labels on e.g. perfumes—their aim is to protect the proprietor against the unauthorised use of their trademark in respect to any goods, even the ones which have not yet been placed on the market.
Introduction of goods within the European Union
When we talk about European and Polish law, the fact that the right to a trademark is exhausted only when the product has been marketed in the European Economic Area is not without significance. This includes the countries of the European Union, as well as Norway, Liechtenstein and Iceland.
This means that if a trademark owner places the goods in question on the market in any of these countries, you will be able to take advantage of the exhaustion of the trademark right if you wish to continue selling the goods.
Consent of the trademark proprietor
Article 13(1) of the Regulation 40/94 on the Community trademark and Article 7(1) of the Directive 89/104 on trademarks must be interpreted that the rights conferred by a trademark are exhausted only if it can be understood from an assessment carried out by a national court that the proprietor has expressly or implicitly given their consent to the marketing, in the Community or the European Economic Area respectively, of the goods in respect of which the exhaustion is invoked – case C‑127/09 Coty Prestige Lancaster Group GmbH vs. Simex Trading AG.
As you can see from the cited judgement, goods must be placed on the market within the EEA. It is also important for the goods to be introduced to the market by the proprietor or with their consent.
A situation in which a Chinese manufacturer introduces a product on the European market to which they do not have the rights and consent of the trademark owner is not admissible. This situation may happen when we manufacture our goods in China.
Using another company’s trademark in offers and advertisements
At the same time, it is worth pointing out, which can often be argued that third-party trademarks may be used to advertise and offer products in connection with the exhaustion of a trademark right (see the judgement of CJEU of 23 February 1999 on Bayerische Motorenwerke AG (BMW) and BMW Nederland BV vs. Ronald Karel Deenik, C-63/97, EU:C:1999:82, pt. 45).
Objection to the further distribution of goods
Both Polish and European legislation provides for the possibility to object to the further distribution of goods if this is justified by legitimate reasons, in particular if the condition of the goods changes or deteriorates after they have been introduced to the market, but the list is non-exhaustive.
In addition to the above, there is another example of the possibility to object to the distribution of goods, e.g. significant damage to the reputation of a trademark (judgement of CJEU of 4 November 1997 on Parfums Christian Dior SA and Parfums Christian Dior BV vs. Evora BV, C-337/95, EU:C:1997:517, p. 51; judgement of CJEU of 23 February 1999 on Bayerische Motorenwerke AG (BMW) and BMW Nederland BV vs. Ronald Karel Deenik, C-63/97, EU:C:1999:82, pt. 49; judgement of CJEU of 23 April 2009 on Copad SA vs. Christian Dior couture SA, Vincent Gladel and Société industrielle lingerie (SIL), C-59/08, EU:C:2009:260, pt. 55).
In conclusion, I hope you know now when and under what circumstances you can legally use another’s company trademark. Keep in mind that the exhaustion of the right of protection for a trademark does not apply to all goods, but only to specific ones, which have been placed on the EEA market by the trademark owner or with their consent.
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