The Polish Patent Office has invalidated the right of protection for the word trade mark ORLEN R-192731, owned by the company ORLEN Sp lka z o.o. This mark was registered for goods in Class 9 and services in Class 42 with priority of 2002. The request was filed by the big Polish oil company PKN ORLEN S.A. which argued that the challenged sign was similar to its reputed trade mark ORLEN R-125559, registered with priority from 1999. Orlen sp. z o.o. claimed that its company had been registered and had operated since 1992 under the name "Orlen", and that Orlen S.A. adopted and appropriated that name in 2000.

Orlen S.A. called Orlen sp. z o.o. to discontinue use of that name due to getting the right of protection for the earlier trade mark ORLEN.

After an exchange of correspondence between the parties, there was no consensus on account of their divergent expectations, in particular with regard to financial issues. Orlen S.A. proved that there were contacts and negotiations between the parties, concerning the cessation of use of the mark ORLEN, and argued that the trade mark application was mercantile in nature, because the applicant sought only a commercial interest in that he wanted to sell this trade mark. Orlen S.A. submitted copies of correspondence between the parties and photocopies of sale offers.

ORLEN Sp lka z o.o. filed a complaint against this decision and pointed out that it offered to sell the company as a whole rather than the trade mark itself.

 The Voivodeship Administrative Court in its judgment of 24 October 2011 case file VI SA/Wa 1376/11 dismissed the complaint and ruled that an entrepreneur performing its business activities must be guided by the degree of care that is expected from more than the average person in order to predict the consequences of his or her actions and omissions. The content of the right to the company name within the meaning of the Polish Civil Code is not in fact an absolute and unrestricted right that allows to apply on its behalf for a trade mark that is convergent with this company name, regardless of the rights of third parties.

Accordingly, a person who uses a given sign, but does not register it on his or her own behalf as a trade mark, acts at own risk. An entrepreneur who does not seek to acquire protection for its trade mark cannot rely on the earlier right to its company name, when the other party has obtained a right to a sign identical to the name of the business with an earlier priority and through significant investments earned its reputation. In such a situation, an identical trade mark application made by the entrepreneur who has the right to the company after many years from the commencement of his business, when the other party has made a substantial investment and broad actions leading to the reputation of its trade mark, should be regarded as taking unfair advantage of the reputation of the earlier sign.

This post was researched and written by Tomasz Rychlicki, and posted by Jeremy