POLISH TRADEMARKS


of trademark protection rights in the case law of the Polish Court of Conciliation for Internet Domain Names’, Legal Monitor No. 1/2008, repeated in the judgment).


In other words, “there is a risk that registration of a domain name and its later use may be found contrary to good morals. Terefore, participants in trade who would like to use names which are already used in turnover by other parties, are advised to be particularly cautious in selecting and using those names in order to avoid accusations of acting in bad faith” (judgment of the Conciliation Court in Warsaw as of March 5, 2012, case No. 45/11/PA).


On the other hand, the very fact of registration of a domain name identical or similar to an earlier trademark, is not necessarily regarded as infringement of rights to that trademark. Infringement takes place if the website is registered and used in relation to the same goods or services as those covered by the trademark registration.


In a case before the Court of Conciliation for Internet Domain Names in Warsaw, a publisher named Oficyna Wydawnicza Oikos brought charges against the owner of a domain name ‘braclowiecka.pl’, claiming that its rights to the title of a monthly magazine ‘Brać Łowiecka’, a word-figurative trademark ‘Brać Łowiecka’, and a domain name ‘braclowiecka.net.pl’ were infringed. In a judgment of March 5, 2012, the court found that the “identity of the names at issue, similarity between the topics of


the


publications concerned, and the fact that the services of both parties are addressed to the same group of customers, pose a risk that ordinary consumers may confuse the sources of origin of the goods and services offered via the defendant’s and plaintiff’s websites”, thus finding that the publisher’s rights were infringed.


Te protection afforded to well-known marks is even broader. In the case of well-known marks, or well-known company names or personal names, domain names can be blocked even when there is no intention to use them for commercial purposes. In this situation, registration “shall be


considered contrary to socio-economic


destination of a right deriving from registration of a domain name, that is an active use of a domain as an Internet address” (judgment of the Conciliation Court as of November 18, 2005). Such activity prevents other parties from free access to the market and constitutes an act of unfair competition.


Another issue is what happens if a domain name was registered with the rightful owner’s consent, or


www.worldipreview.com


“IN THE CASE OF WELL-KNOWN MARKS, OR WELL-KNOWN COMPANY NAMES OR PERSONAL NAMES, DOMAIN NAMES CAN BE BLOCKED EVEN WHEN THERE IS NO INTENTION TO USE THEM FOR COMMERCIAL PURPOSES.”


terminated. Te court’s final judgment (October 22, 2012) was that the registration of the subject domain name constituted an act of unfair competition, was contrary to good morals and posed a danger to the rightful owner’s interest.


In light of these cases, registering a third party’s name as one’s own domain name may be a risk. A registrant is likely to face claims on the basis of the Law on Industrial Property (infringement of trademark rights) or the Law on Combating Unfair Competition. Besides, other claims are possible, namely for infringement of personal assets based on the Civil Code if a domain name is also a party’s company name (“a domain name shall constitute personal assets if it identifies the owner”—judgment of


the Conciliation Court


if a domain name registration took place in relation to a particular event or project occurring at specific period of time. Te case is illustrated below:


A company, Color Pawel Worsztynowicz, registered the domain name ‘orangewarsawfestival.pl’. Orange Brand Service Limited filed a statement of claims against the company, claiming infringement of the rights to one of


its trademarks, unfair competition,


and infringement of personal rights based on the Civil Code. Te owner of the domain name at issue counter-argued that registration took place with consent of the rightful owner, and Orange Brand Service Limited was aware of the registration. Aſter the hearing, the Conciliation Court issued a judgment taking into account the following circumstances: “consent to registration of a domain name in connection with a sponsored music event organised at a given time does not mean consent in general extending the period of time at issue and the subject of registration”.


What is more, the court argued that the rightful owner’s knowledge of


the registration of the


subject domain name is irrelevant, as there are no circumstances that would justify preventing the rightful owner from enforcing its rights due to the fact that it had tolerated the existence of the domain name at issue. Terefore, tolerating the registration of the domain name at issue by another party, and later enforcing one’s claims against that party, cannot be regarded as contrary to good morals. According to the court, the rightful owner was justified in enforcing its rights to the subject domain name, as the relevant legal relationship between the parties on the basis of which registration was made, had already


in Cracow, March 1, 2012). As can be seen, domain name owners are well protected with a whole range of means in hand under the laws on industrial property and unfair competition. 


Marta Skrobot is a trademark attorney at Patpol. She can be contacted at: marta.skrobot@patpol.com


Marta Skrobot holds an MSc in agricultural and forest engineering from the Warsaw University of Life Sciences (SGGW); Postgraduate


Property Studies. At Patpol, her key areas of practice are trademark protection matters, domain names, trademark searches, licences.


Intellectual


Trademarks Brands and the Internet Volume 2, Issue 1


35


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