Whether using a trademark in a negative comment can infringe on intellectual property rights?


What are the rights of the owner of a European Union trademark?

According to Article 9(2) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark, the owner of a trademark is entitled to prohibit third parties who do not have their consent from using that sign in the course of trade in relation to goods or services. Based on the provisions of paragraph 3 of the above-mentioned article, it may be prohibited, in particular:

  • Placing the sign on goods or their packaging;
  • Offering goods, putting them on the market, or storing them for those purposes under that sign, or offering or providing services under that sign;
  • Importing or exporting goods under that sign;
  • Using the sign as a trade name or company name, or as part of those names;
  • Using the sign in commercial documents and in advertising;
  • Using the sign in comparative advertising contrary to Directive 2006/114/EC of the European Parliament and of the Council.

Additionally, the owner of a European Union trademark may benefit from the protection of the trademark provided by the national law, aiming to ensure the enforcement of the prohibition of infringement of the rights of the trademark owner.

Furthermore, according to established case law of the Court of Justice of the European Union (judgments: of 12 November 2002 in Case C-206/01 A., of 16 November 2004 in Case C-245/02 A, of 25 January 2007 in Case C-48/05 A., in Case C-17/06 C., in Case C-533/06 O2), it is accepted that for the owner of a trademark to be able to invoke his right, only the following 4 criteria must be met:

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  • Use must take place without the consent of the trademark owner;
  • It must take place in the course of trade;
  • It must occur in relation to goods or services;
  • A third party must use that sign as a trademark, i.e., the use of that sign by a third party affects or may affect negatively the functions performed by the trademark, and in particular its essential function, which is to guarantee consumers the indication of the origin of goods or services.

Can the use of a trademark in a negative comment infringe intellectual property rights?

The use of a mark belonging to another entity, which has been granted protection in the form of a trademark, not as a trademark and without fulfilling any of the functions of a trademark, does not constitute an infringement of the protective right to the trademark. The use of a trademark not to identify goods or services but to identify the entity that has the protective right to that trademark does not constitute an infringement of the protective right.

Even placing a negative opinion about a specific entity using its protected trademark, when the comment does not fulfill any function performed by the trademark, does not infringe the rights of the owner of that trademark. This position was taken by the District Court in Warsaw, XXII Intellectual Property Division, in the judgment of July 20, 2023, file No. XXII GW 661/22.