A foreign trademark - how to use it legally?


The use of someone else's trademark, although tempting for many entrepreneurs, is not a simple matter. A trademark is an element of the company's assets, but also a symbol that is its showcase and allows to distinguish the goods or services of a specific company on the market. Its recognition proves that the company enjoys a reputation and trust among customers. No wonder then that, on the one hand, the trademark owner does not want to share it with everyone, and on the other - that so many entities would like to use well-known trademarks. Is it possible at all? How can someone else's trademark be used?

Rights of the trademark owner

To consider the use of someone else's trademark, you must first identify the rights of its owner and determine who can become it. The easiest way to define it is the entity that ordered the production of a trademark and uses it to distinguish its products or services from other similar ones, and also registered it with the Patent Office and received confirmation of registration. For the period of protection, i.e. 10 years (this period may be extended for subsequent periods), he may freely use it for professional purposes (i.e. in a way that may affect, for example, the recognition of the company and its employees) or for profit (e.g. by paid provision of a trademark). In addition, he has a number of rights to dispose of the trademark. They are mainly realized in:

  • using the trademark for advertising purposes,

  • placing a trademark on promotional materials, documents, correspondence forms and the company's website,

  • marking the goods sold or services provided with the mark,

  • placing the mark on protected goods and marketing them, i.e. importing or exporting them.

As you can see, the trademark owner has very wide rights - he can only exercise control over who, for what purposes and how he uses it. In the event that someone infringes these rights and thus causes damage, the trademark owner has several options:

  • may request that the infringement be discontinued,

  • may demand compensation from him on general principles, i.e. pursuant to Art. 415 of the Civil Code, stating that the person who caused the damage is obliged to repair it, or pursuant to the provisions of the Industrial Property Law Act, and if the infringement was committed by the entrepreneur - the Act on Combating Unfair Competition,

  • may submit a claim for the release of the obtained benefits.

Also, if there is only a threat of infringement of the rights to the trademark, its owner may defend himself by submitting preventive claims for trademark infringement.

A foreign trademark - who else can use it?

All these rights that the Polish legal system grants to the trademark owner do not mean, however, that no one else can use it. This is related to the concept of trademark exhaustion, i.e. legally regulated situations in which a trademark can be used without buying a license. These will be situations where:

  • the goods marked with the trademark have been legally placed on the market by the owner of the trademark or with his consent (also under a license),

  • the goods were actually delivered.

The above-mentioned circumstances occur mainly in the case of trade in goods marked with a trademark. In addition, it is worth remembering that in the case of trademarks, a certain territorial scope applies - the exhaustion of trademark protection takes place when the trademark owner introduces the product marked with it to the market of one of the countries of the European Economic Area. This does not mean that everyone can use the u mark from the moment the product appears on the European Union market, but it is not possible to create a monopoly in this way.

It is also worth remembering that in order for the right to a trademark to be exhausted, only the owner of the trademark must release the goods. The moment of release of the goods is usually the first transaction the subject of which is the goods marked with the mark. Usually this is a sale, but the exchange or donation can also be a release. Importantly, it must be an act that is fully compliant with the law of the state (or EEA) in which the goods are released - it is not possible to exhaust trademark protection if it enters the market as a result of a crime.

In the context of the exhaustion of the right to a trademark, it should also be mentioned that it applies only to a specific example of a product. This means that someone else's trademark is available to us within the law only in relation to goods that have already hit the market.

Limits of using someone else's trademark

Of course, the use of someone else's trademark as part of the exhaustion of its protection also has its limits. The first one will certainly be the reputation of the trademark - we cannot infringe the trademark brand. This means that if we sell a specific product, we can place its mark on our website or in the shop window, but we cannot place it there in a context that is ridiculous or morally offensive. A third-party trademark may not be used to sell damaged, out-of-date or for other reasons unfit for use copies of the goods as wholesome ones. Moreover, the limit of using a trademark may be set by its owner himself in the event that the market on which the product has been released changes radically or the owner decides to withdraw the item from sale - also then he may prohibit the use of the trademark.