Legal framework

According to the Polish Industrial Property Law, bad faith is an absolute ground for invalidating a trademark protection right (Article 164) (the same as in EU law). In addition, it also constitutes an absolute bar to trademark registration (Article 129(1)).

Procedure

The existence of the bad faith premise should be examined ex officio by the Patent Office of the Republic of Poland at each stage of the application procedure. The allegation of bad faith may also be raised by any third party as a part of the so-called observations or opposition mode. Such a person does not become a party to the proceedings, though. They may become one if they file a request for cancellation of the trademark after protection has been granted.

Legal definition

The Polish Trademark Law does not offer a legal definition of the concept of bad faith, contrary to EU regulations. The Polish Patent Office and administrative courts, in accordance with EU case law, consider bad faith to be an autonomous concept of EU law, which should be interpreted uniformly across the EU.

Industrial property law and the Polish Civil Code

Sometimes, however, the concept of bad faith under the Polish Trademark Law is misunderstood to be the same as the concept of bad faith adopted under the Civil Code.

The civil law conception of good and bad faith is limited to an examination of the mental state of the acting subject by considering only the aspect of knowledge (subjective approach) consisting of the existence or absence of a belief or knowledge of a right or legal relationship. On the grounds of trademark law, the existence of bad faith should be assessed in accordance with EU jurisprudence both from the subjective aspect (examination of the state of knowledge and intent) and from the objective aspect (examination of general standards of fairness in relations of a given kind). Bad faith under trademark law should be understood as the unfairness of the trademark applicant’s actions in a broad sense, which should be evaluated in the specific facts of the case. Bad faith in a trademark application can take various forms, not only those described so far in case law and doctrine. This position is well established in Polish Trademark Law.

The moment when bad faith occurs

The potential occurrence of bad faith in filing a trademark application for protection is examined as of the date of filing. However, when examining the facts of the case, it is possible to include circumstances that occurred after the trademark was filed for protection, if they serve to establish the circumstances surrounding the application and will indicate the intent of the trademark applicant. The chronology of events should also be taken into consideration.

Proving the existence of bad faith

It is often erroneously assumed that, as it is the case under the Polish Civil Code, the existence of bad faith must be proven by the entity raising the allegation of bad faith, while the trademark applicant or the right holder may stay passive since it is protected by the presumption of good faith. Indeed, CJEU case law dictates that when assessing the potential existence of bad faith, the intentions of the trademark applicant must be examined taking into account all relevant factors. One cannot be satisfies with the presumed good faith only. Thus, the applicant’s bad faith behaviour is subject to assessment, and not to proof or establishment as a certain fact. For this reason, it is assumed that the existence of consistent circumstantial evidence indicating fraudulent intent in a trademark application is sufficient. Bad faith is assessed holistically in the light of the circumstances of a particular case. Accordingly, domestic courts are required to consider all relevant factors specific to the case and existing at the time of the application.

Cases involving bad faith trademark application are frequently heard in Poland and both the Polish Patent Office and administrative courts are getting more and more experience in evaluating the relevant factual situations. Nevertheless, the ultimate outcome of the case largely depends on the approach of the adjudicating panel considering a specific case.