Licensee as claimant: A significant new entitlement | In Principle

A licensee’s right to bring a legal action in proceedings for infringement of a trademark was introduced by the amendment to the Industrial Property Law. So far, in the case of national trademarks, only an exclusive licensee entered in the register could pursue claims for trademark infringement on an equal footing with the proprietor. This has changed from 16 March 2019.

A licensee may be a claimant in a trademark infringement case

The amended Industrial Property Law provides that, with the consent of the trademark proprietor, the licensee may bring an action for infringement, unless the licence provides otherwise. Both exclusive and non-exclusive licensees are entitled to bring an action, as the provision does not differentiate between categories of licensees, using the general term “licensee.” This change is significant. Previously, this right was granted only to an exclusive licensee, and only one entered in the register (second sentence of Art. 76(6) of the Industrial Property Law). The circle of entities with standing to sue for trademark infringement was therefore limited. An exclusive licensee not entered in the register did not have standing, and neither did a non-exclusive licensee, and therefore they could not successfully bring an action for infringement of a national trademark. In this respect, the new Trademark Directive (2015/2436) and the new provisions of the Polish Industrial Property Law implementing it clarify the legal situation of a national trademark licensee and put it on an equal footing with an EU trademark licensee.

Bringing an action by the licensee is subject to the consent of the proprietor (new Art. 163(1¹) of the Industrial Property Law). The parties will be able to provide for such consent in the agreement and will also be able to expressly exclude such a right of the licensee. If the parties did not include provisions on bringing actions for trademark infringement when executing the licence, the proprietor may give its consent at a later stage. Although the new Art. 163(1¹) of Industrial Property Law does not specify whether the consent of the proprietor must be in writing under pain of invalidity, it seems that since the licence agreement (regardless of whether it concerns an exclusive licence or a non-exclusive licence) requires that form, the consent of the proprietor requires that form too.

The amended Industrial Property Law also provides that an exclusive licensee may bring an action for infringement of the right of protection if despite being summoned, the proprietor does not bring such an action within a reasonable time. It seems that this provision is intended to enable the exclusive licensee to take legal action even if the licence agreement does not contain the proprietor’s prior consent. The exclusive licensee should then call upon the proprietor to act and set a reasonable time in this respect, after which it will be able to pursue an action for trademark infringement itself.

Licensee may join litigation to seek damages

Under the new wording of Art. 163(1²) of the Industrial Property Law, if the licensee does not bring an action itself, it has the right to join a trademark infringement action initiated by the proprietor in order to seek damages. This provision applies to any licensee, whether exclusive or non-exclusive, as there is no such distinction in the wording and the general term “licensee” is used.

Entry of licences in the trademark register

A licence shall be entered in the trademark register at the request of the interested party. The amended Art. 163(5) of the Industrial Property Law clarifies the existing situation. Since this provision does not make a distinction, it must be assumed that both exclusive and non-exclusive licences can now be entered in the trademark register. Entry of a licence in the trademark register will, for example, confirm the licensee’s standing in trademark infringement proceedings.

Summary

The amendment of the Industrial Property Law is desirable. It introduces the same rights for licensees of national trademarks as exist for licensees of EU trademarks (see Art. 25 of the EU Trademark Regulation (2017/1001)). The consistency between the solutions in the two legal orders will improve legal certainty and the case law, as well as unify the practices applied by the EU and national offices.

Dr Monika A. Górska, attorney-at-law, Intellectual Property practice, Wardyński & Partners