By Justyna Wilczynska-Baraniak and Aleksandra Baczykowska (Warsaw)

In the fashion industry, tags and labels are a key element of the end product.  Therefore, the change of Regulation 2015/2424 and Directive 2008/95/EC of 16 December 2015 is an important step in combating trademark infringement.  By deploying these preventive measures, a trademark infringement may be interrupted at source.

Following the change, as of March 23, 2016, EU trademark owners have the right to prohibit the affixing of trademarks to packaging labels, tags, security or authenticity features or devices, and prohibit the offering, marketing, stocking, importing and exporting of such products, if there is a risk that these products would be subsequently used in trademark infringement.

EU trademark owners do not have to prove a business link between the producer of tags, and the producer of clothes in order to claim that actions taken by the tags producer will lead to a trademark infringement.  EU trademark owners may also prohibit the use of their trademarks even if they do not have trademark protection for the packaging of their products (Nice Class 16) or for labels or tags (Nice Class 24).

Poland has until January 14, 2019 to bring its own legislation into line with the EU Regulation and Directive.  Nevertheless, it is currently possible under Polish law to seek monetary claims against a manufacturer of packaging or tags on the grounds that the manufacturer is aiding and abetting a tort which subsequently causes damage to the trademark owner.  This means that a trademark owner cannot sue a manufacturer of packaging for its preparatory actions prior to the actual trademark infringement.  Moreover, it is not clear under Polish law whether the manufacturer’s behaviour has to be intentional and aimed at supporting the infringer’s activities.  It seems that being aware of creating an opportunity for tort is not sufficient.

In contrast, under the Regulation and the Directive, preparatory actions, bearing in mind the liability regime for trademark infringement, do not have to be intentional.  Furthermore, Article 285 of the Polish Act on Industrial Property Law (also applied to EU trademarks) gives a trademark owner the right to prohibit acts that threaten the infringement of its trademark.  However, this provision has only been used against direct infringers that took significant actions to infringe trademark rights.