Applying for a trademark that is identical to or resembles (with respect to a key element of distinctive character) marks held by a different business undertaking once a business relationship has ended is application made in bad faith.

The Supreme Administrative Court has recently ruled that intentionally applying for a trademark in one's own name for a similar sign to another's trademark, when there is a relationship of special trust between the proprietor of the trademark and the applicant, is an act of bad faith.

The ruling was delivered when a filing was made with the Polish Patent Office seeking invalidation of the word trademark “Pryncy Teka”. The filing for invalidation was made by the proprietor of the registered word and word and figurative trademarks “Pryncypałki”. In the application, the proprietor identified links between a partner in the company that owned the “Pryncy Teka” trademark and their own business enterprise. The PPO rejected the application seeking invalidation, finding that the applicant had not provided evidence supporting the assertion of bad faith. The PPO also found that although the marks being compared contained elements that were identical, namely the word element “Pryncy”, the marks were not similar, as the words that followed, “Teka” and “Pałki”, meant that the marks would be perceived in different ways.

The Voivodship Administrative Court took the view of the applicant, and disagreed with the PPO. The court found that all of the facts in the case up until and subsequent to the date of application for the trademark needed to be analyzed if an act of bad faith was to be confirmed. At the time an application was filed to register the disputed trademark, the proprietor was subject to a non-competition obligation. Also, during that time, the proprietor was preparing for construction of a manufacturing plant to produce biscuits. The Voivodship Administrative Court found that the PPO had not been accurate in its finding that the facts did not suggest an act of bad faith at the time the trademark application was filed.

The court also stated that the PPO had incorrectly assessed the question of similarity between the trademarks, finding that the element “Pryncy” was an element recognizable to consumers for many years, and that the PPO should not have disregarded the importance of that element. The court also stated that use of the distinctive element “Pryncy” in the disputed trademark might suggest to consumers that the companies continued to be linked today in the way in which they had been in the past. For this reason, registering a trademark that resembles (with respect to a key element of distinctive character) marks held by a different business undertaking once a business relationship has ended can be classed as an act of bad faith.

The Supreme Administrative Court ruling confirmed the finding of the Voivodship Administrative Court, stressing that intentionally applying for a similar sign to another's trademark , when there is a relationship of special trust between the holder of the trademark and the applicant, is an act of bad faith.