Unclear contractual provisions are becoming a growing source of legal battles over trademark applications filed in bad faith. Disputes over intellectual property often arise not only between competitors but also between former business partners, as seen in recent cases before the Polish Patent Office and EUIPO. The controversial decisions in disputes over trademarks like BOTANICO and PryncyTeka highlight how vague agreements can lead to conflicting interpretations, legal uncertainty, and high-stakes litigation.
Intellectual property disputes often arise not only between competing companies, but also between former contractors or business partners. This is due to the fact that the parties entering into various contracts, such as the sale of a company, often neglect to precisely regulate issues concerning intellectual property rights. Provisions concerning the use or transfer of intellectual property rights are sometimes formulated in a unclear way, and sometimes they are omitted entirely. In such cases, it is not difficult for the contracting parties to interpret the contractual provisions differently, which may result in a dispute. Examples of such situations are the latest decision of the Polish Patent Office regarding the BOMBARDINO (R.373789) and BOTANICO (R.373795) trademarks, the dispute over the Bidah-Chaumel trademark (EUTM 18265413) before the General Court, or the dispute over the PryncyTeka trademark (R.282822) before the Supreme Administrative Court.
In November 2023, the invalidation applicant entered into an agreement with company ‘X’ to relinquish the premises where the invalidation applicant had previously operated a restaurant called BOMBARDINO BOTANIK. In the aforementioned agreement, company ‘X’ undertook not to use the name BOMBARDINO. It opened a restaurant called ‘BOTANICO’ in the same premises. On the other hand, the invalidation applicant started to run a restaurant called BOMBARDINO TRATTORIA in a different premises. In December 2023, company ‘X’ registered two word marks: BOMBARDINO (R.373789) and BOTANICO (R.373795) for services in class 43 of the Nice Classification, including gastronomic services. The invalidation applicant filed applications with the Polish Patent Office to invalidate the aforementioned trademarks due to bad faith. As a result, company ‘X’ decided to waive its rights to the BOMBARDINO trademark (R.373789). However, it underlined that the trademark BOTANICO was not applied for in bad faith. It pointed out that ‘Botanik’ is the name of a housing estate in Lublin, and in the neighbourhood there is, among others, the ‘Hotel Botanik’.
By decision of 11.02.2025 in case Sp.135.2024, the Polish Patent Office rejected the application to invalidate the BOTANICO trademark. In oral justification, it indicated that in the agreement between the parties, company ‘X’ only undertook not to use the name BOMBARDINO. The decision is not final.
Due to the oral justification of the above-mentioned decision, no details are known regarding the exact wording of the provision on the obligation not to use the name BOMBARDINO. However, it seems that the provision was very laconic, ignoring the fact that previously the restaurant was called BOMBARDINO BOTANIK. In order to avoid any doubts, the parties could therefore have included a broader provision in the agreement, also covering similar designations referring to the second part of the restaurant name, i.e. BOTANIK.
The dispute over the Bidah-Chaumel trademark arose as a result of the sale of a company called Bidah y Chaumel, SL. Previously, the company name included the surname Bidah, i.e. the surname of one of the company’s partners. The sales agreement included a contractual provision: ‘The company also undertakes to change its name before 30 August 2020 to remove all references to Nawal Bidah.’ After the sale agreement was concluded, the company registered the word and figurative mark Bidah-Chaumel. It then changed its name to Bela Vizago Nature. According to the company, the provision in the sales agreement referred only to the company name. However, according to Ms Bidah, the company undertook to remove the name Bidah not only from the company name but also from other areas. The Cancellation Division of EUIPO and the Board of Appeal found that the trademark had been applied for in bad faith. However, the General Court overturned these decisions. It pointed out that EUIPO does not have the authority to interpret the provisions of the agreement, as this can only be done by national courts. The General Court pointed out that the fact that the name Bidah was not well known is also important for the assessment of bad faith.
In the above-mentioned cases, disputes arose due to imprecisely worded provisions concerning the obligation not to use or apply for the trademark in question. A similar dispute also concerned the PryncyTeka trademark.
The partner of the company entitled to the PryncyTeka trademark is ‘G.K.’, who was also a partner of the company applying for invalidation. As a partner of the entitled party, ‘G.K.’ sold the D. brand to the applicant, sold the PryncyPałki trademarks and signed a non-competition agreement. After concluding the aforementioned agreements, the entitled party applied for the trademark PryncyTeka.
The Supreme Administrative Court ruled that the trademark PryncyTeka was applied for in bad faith, among other things due to a breach of trust resulting from previous business and ownership connections between the parties. The court also indicated that the similarity of the opposing trademarks, PryncyPałki and PryncyTeka, which were registered to designate identical goods, was also important for assessing the intention of the trademark applicant.
Summary
Disputes based around bad faith trademark applications are on the rise at the Polish Patent Office and the EUIPO. In general, these cases are particularly complicated because the parties to the dispute usually have very complex relationships with each other. In addition, the same objective circumstances can be interpreted in different ways, which means that the final outcome of the case is very difficult to predict.