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10 Jul

How to legally use other people’s trademark?

You often ask me how to legally use other people’s trademark. This is shown by the number of comments under the article regarding the BMW case. Today’s entry will describe this issue in more detail. I will also try to answer the question that bothers you. Is it possible to put the logo of serviced companies on your website?

What is allowed to the trademark proprietor?

By registering a trademark in a Patent Office, you acquire the right to the exclusive use it in a profitable or professional way. Such a right is granted for 10 years, with the possibility of extending protection for subsequent periods of this type.

The use of the trademark may include, among others:

1. placing it on protected goods;
2. placing such goods on the market (import / export);
3. providing services under this trademark;
4. placing it on company’s documents;
5. Using the trademark for advertising purposes.

In case of the trademark infringement, the owner may make a number of claims towards the infringer. It can be said that he has complete control over that who and how someone uses the given trademark.

However, there are situations in which you can legally use someone else’s trademark, and the owner loses control over it almost entirely.

Exhaustion of the trademark rights

Note that “absolute power” over the trademark would be detrimental to the free circulation of goods. For example, if you wanted to sell a Snickers bar to someone, you would have to get the trademark proprietor’s permission in advance.

Abstraction, isn’t it?

Fortunately, such a circumstance has been regulated by the legislature. You can legally use someone else’s trademark if the “exhaustion of the right” took place.

And it takes place when:

  • trademarked goods have been legally placed on the market;
  • the actual release of the trademarked goods took place;
  • the goods were introduced by the trademark proprietor (or with his consent).

An example:

If I bought a Snickers bar, I can use it freely. For advertising and information purposes, I can legally use other people’s trademark. Thus, information about the bar can appear on the website of my store, or in printed advertising materials.

How to legally use other people’s trademark?

1. The principle of territoriality

Exhaustion of the trademark rights takes place if goods marked with this trademark have been placed on the market in the EEA (European Economic Area).

As you can see in the picture on the right, the EEA included outside the EU (except Croatia) Iceland, Norway and Liechtenstein.

Thus, the launch of the product in any of these countries involves the exhaustion of trademark rights.

And this is a very important issue. Many companies organize their sales only through official dispatchers.

A story from my own experience

I recently helped an entrepreneur who was sued by such a company. The company led sales by official representatives, dictating the price. My client bought their goods in the country (from the EEA) where the price was the lowest and sold them in Poland.
He was accused of an unlawful use of someone else’s trademark in advertising and on the website. The charge was absurd because everything was done completely legally. In particular, no one was misled. Fortunately, we managed to defend the client, but it cost him a lot of nerves.

As you can see, you cannot use the trademark to monopolize the market.

2 – The trademark proprietor has to introduce the goods onto the market.

Exhaustion of the trademark rights occurs only if the goods are introduced by the trademark proprietor. In practice, this is usually done by selling a given product.

The transfer of ownership can also be made by an agreement to exchange or donation of the goods. However, the exhaustion of trademark rights does not occur with tenancy or leasing goods.

In particular, theft of goods will not be the exhaustion of trademark rights. As I indicated above, the goods must be placed on the market with the consent of the trademark proprietor.

If we are dealing with a concern, the exhaustion of trademark rights will take place at the moment the goods are placed on the market by any subsidiary. The same can be said about the entrepreneur who introduces the goods under the appropriate license agreement.

3 – The exhaustion of trademark rights applies to a specific individual item of the goods.

When assessing whether the exhaustion of trademark rights took place, one should determine where and by whom the given commodity was introduced. It cannot be said about the exhaustion of trademark rights if the goods have not been placed on the market yet or they had, but outside the EEA.

This is especially important when importing goods from “far abroad”.

The manufacturer of Fanta, who sells it, e.g. in Japan, may not be interested in getting it into the European market.

Thus, a person who has purchased this beverage placed on the market outside the EEA area may have problems with legally using someone else’s trademark.

The limits of the exhaustion of trademark rights.

As a rule, if the owner introduces a trademarked product on the market, he loses control over it. Sometimes, the trademark proprietor may, however, oppose further distribution of goods. It is a situation when after the introduction of the product to the market, its condition will change or worsen. Alternatively, the trademark is used in a way that threatens its reputation.

An example:

I bought all the batch of Snickers, which fell into the sea with the shipping container. Not only that they look tragic, they are probably harmful. Now I want to sell them. The owner of the Snickers trademark may oppose that I use this trademark in advertising.

Violation of the trademark’s reputation

This exactly concerned the dispute about the BMW which had been already described on the blog. You cannot use someone else’s trademark in a way that will evoke the recipients’ false belief that there are economic links between the trademark proprietor and the third party. It is inadmissible that such recipient considers that the third party is connected by special trade bonds with the trademark proprietor (e.g. that it is the official distributor).

However, coming back to the question at the beginning of the article.

What about the logo of foreign companies on your website?

Ask me about valuation

+48 607 416 240

office@lech.bydgoszcz.pl

Again, everything depends on the specific situation.

If you, e.g., run an online store with a given product, you are allowed to legally use someone else’s trademark, provided that you did not overdo with its display.

However, if these are the companies you have served – I would be very careful. Such an action may threaten their reputation. Of course you can defend yourself, that you put them as an information purpose.

The truth is that you could do it without using figurative marks. So it can be said that you put them on your website to become credible in the eyes of potential customers.

Because if companies such as … trust you, you are certainly reliable.

It is impossible to hide that you are warming yourself with the reputation of well-known brands.

For safety, I would take care for written permission to use these trademarks. In fact, now the trademark proprietors have no power over them.

After all, it may come to the situation that their logo will appear alongside of another one with a dubious reputation. Let it be the logo of an erotic magazine or a Money Laundering company. In such case you are exposing yourself to severe consequences.

Some brands aggressively enforce their rights (Apple, Ferrari).

Remember, just because everyone does that, does not mean that it is safe.

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
office@lech.bydgoszcz.pl

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