Trademarks may be cancelled if not used in a timely manner. However, there are exceptions. A trademark protection right can be retained despite even if the trademark in question is not used if there are compelling reasons to do so. Such reasons must be justified and demonstrated. Recently, the owner of the word mark “MOSTOSTAL” found out that simply waiting for the conclusion of licence agreements cannot qualify as an excusable reason.

Mostostal S.A. explained that it had acquired the mark “MOSTOSTAL” from the receiver of the previous holder. It intended to use it as a licensor with respect to goods and services listed in Classes 2, 16 and 42 of the International Classification of Goods and Services. The mark has been used in the past by a number of entities under an agreement from 1996 establishing the terms of a non-exclusive licence. However, the signatories to this agreement have taken steps to register their own trademarks identical to the “MOSTOSTAL” mark. Thus, since 2007, Mostostal S.A. has initiated a number of proceedings to prevent infringement of its marks.

The Patent Office of the Republic of Poland found that the right holder had failed to demonstrate the existence of valid reasons for not using the disputed trademark on the market. In the Office's view, the circumstances raised by Mostostal S.A. concerning the waiting for the signing of relevant licence agreements and the subsequent use of the trademark by other entities are mere speculation and must have included the risk of failure. Mostostal S.A. did not even make a prima facie case that the entities in question were in business at all in respect of those goods and services for which the mark was not used. A reasonable entrepreneur cannot be expected to enter into future licensing agreements with entities that are not in business in respect of the goods and services covered by the trademark.

Consequently, the Patent Office of the Republic of Poland found that the protection right for “MOSTOSTAL” trademark had expired in the part covering all goods and services included in classes: 2, 16 and 42 of the International Classification of Goods and Services.

According to literature and case law valid reasons for not using a trademark may include obstacles of a factual or legal nature beyond the control of the right holder, e.g. force majeure (such as martial law or floods), import restrictions, or the need to obtain a marketing authorisation (for example, for a drug).

The Court in the present case emphasised that the right holder had not provided any credible circumstances confirming the use of the trademark in the aforementioned classes, nor had it submitted evidence, from the point of view of diligent business conduct or care for economic interests, on the basis of which valid and justifiable reasons could be found for not using the disputed mark for the said classes.

Author: Anna Sokołowska-Ławniczak, PhD, Patent and Trademark Attorney, Partner and Kaja Seń, Trainee attorney‑at‑law, Associate