A Comprehensive Analysis of Brand Protection, Trademark Infringement, and Litigation Strategy
Robert Nogacki | Kancelaria Prawna Skarbiec | Warsaw
The legal architecture governing trademark protection has undergone remarkable transformation since Poland codified its intellectual property law framework. What began as a straightforward mechanism for distinguishing commercial goods has evolved into a sophisticated body of law addressing everything from digital assets traded on blockchain networks to colours so distinctive they function as badges of origin. Understanding trademark rights enforcement and defence strategies has become essential for businesses operating in today’s complex commercial environment.
The Polish Legal Framework for Trademark Protection
Under Article 120(1) of the Polish Industrial Property Law (Prawo własności przemysłowej), as amended by the Act of 20 February 2019 implementing EU Directive 2015/2436, a trademark comprises any sign capable of distinguishing the goods of one undertaking from those of another undertaking, provided it can be represented in the trademark register in a manner permitting clear and precise determination of the subject matter of protection. This formulation replaced the previous requirement of “graphical representability,” opening trademark registration to new categories of marks including sound files and multimedia signs.
Article 120(2) provides a non-exhaustive catalogue of protectable forms: words (including surnames), drawings, letters, numerals, colours, three-dimensional shapes (including product and packaging configurations), and sounds. Polish doctrine distinguishes between traditional marks (word marks and figurative marks) and non-traditional marks—the latter encompassing colours per se, position marks, motion marks, holograms, and multimedia marks.
Three constitutive elements define a trademark under Polish law: the sign must be perceptible to the senses (oznaczenie zmysłowo postrzegalne), it must be representable in the register in a manner permitting unambiguous and precise identification of the protected subject matter, and it must possess abstract distinctive capacity (abstrakcyjna zdolność odróżniająca)—the ability to identify commercial origin when assessed independently of specific goods or services.
Yet obtaining registration represents merely the threshold. The genuine challenge lies in trademark enforcement and, for those accused of trademark infringement, in mounting effective defence.
The Digital Frontier: NFTs, Virtual Goods, and Brand Protection
Perhaps no development has tested trademark doctrine more profoundly than the emergence of non-fungible tokens and virtual goods. The Hermès v. Rothschild litigation concerning “MetaBirkins”—digital fur-covered renderings of the iconic Birkin handbag sold as NFTs—established that trademark protection extends into virtual marketplaces. A federal jury awarded Hermès $133,000 after rejecting the artist’s First Amendment defence, concluding that the NFTs functioned as commercial products rather than protected artistic commentary.
The implications ripple across the creative economy. When Yuga Labs, creator of the Bored Ape Yacht Club collection, confronted copycat NFT projects, the Ninth Circuit unequivocally confirmed that NFTs constitute “goods” under the Lanham Act—subject to traditional trademark analysis. This determination validates brand protection in virtual environments while simultaneously requiring proof of actual consumer confusion rather than mere similarity.
The decision reverberates across the creative economy. In Yuga Labs’ dispute over copycat Bored Ape Yacht Club NFTs, the Ninth Circuit held that these NFTs qualify as “goods” under the Lanham Act and therefore fall within the statute’s trademark regime. This recognition confirms that brands can invoke trademark protection in virtual environments, yet it also makes clear that infringement still turns on a fact‑specific showing of likely consumer confusion, rather than mere similarity of digital assets.
The 2024 EUIPO Guidelines address distinctiveness assessment for virtual goods, concluding that such goods require independent analysis—consumers may not automatically associate virtual and physical goods as emanating from the same source. However, marks with significant reputation in the physical world may extend protection to virtual equivalents based on dilution theories. For businesses navigating these complexities, comprehensive legal counsel proves essential.
The Precision Imperative: Lessons from Position Mark Litigation
The Adidas v. Thom Browne litigation across multiple jurisdictions delivered sobering lessons about the limits of position mark protection. The UK High Court invalidated eight of Adidas’ three-stripe position mark registrations, finding that the interplay between written descriptions and accompanying images did not produce a single, clearly defined sign. The descriptions—using formulations such as “three parallel equally spaced stripes… running along one third or more of the sleeve”—permitted wide variations in length, direction, and positioning that exceeded what the illustrations conveyed.
The Court of Appeal upheld these findings in December 2025, emphasising that a trademark registration must define a single sign with sufficient clarity and precision that others can understand its scope. Where descriptions create a broad set of potential manifestations, the registration no longer anchors a single sign. The Court accepted that some variation may fall within a single sign, provided variations remain within coherent boundaries—but the “one third or more” phrasing created permutations far beyond what could reasonably constitute a single identifier. The Court also confirmed that Thom Browne’s four-stripe design did not infringe those Adidas marks that remained valid, as protection could not be expanded through interpretation to cover what registrations did not capture precisely.
Under Polish law, position marks (znaki pozycyjne) express themselves through the specific manner of placement or attachment of a sign on a product. Proper representation requires a reproduction precisely showing the sign’s positioning and its size or proportion relative to the relevant goods, with elements not forming part of the registration application marked as excluded, preferably using broken or dotted lines. This precision requirement reflects the broader principle that trademark protection demands clarity as to its object.
Trademark Functions Under Polish Doctrine
Polish scholarship, following Professor Ryszard Skubisz’s foundational work, recognises the trademark as an intangible good (dobro niematerialne) defined as the unified connection between sign and product reflected in human consciousness—encompassing all representations about a given product distinguished by the criterion of its commercial origin.
The fundamental function of the trademark is the origin function (funkcja oznaczenia pochodzenia)—enabling consumers to distinguish goods emanating from one undertaking from those of another. This function, understood broadly in contemporary commerce, indicates not necessarily a specific identifiable producer but rather the existence of a centre exercising actual control over production and market introduction.
Auxiliary functions include:
- Quality function (funkcja jakościowa): conveying information about consistent qualitative characteristics
- Advertising function (funkcja reklamowa): serving as an attractive element drawing customers to products
- Investment function (funkcja inwestycyjna): recognised in CJEU jurisprudence as the use of a mark to acquire or maintain reputation
- Communication function (funkcja komunikacyjna): the general capacity to evoke consumer representations about goods
These functions inform both the scope of protection and the assessment of trademark infringement under Article 296 of the Industrial Property Law.
Famous Marks and Trademark Dilution
Certain trademarks achieve such cultural prominence that they warrant protection extending beyond preventing consumer confusion. The Tiffany v. Costco dispute illustrated dilution doctrine’s protective reach when Costco used “Tiffany” to describe ring settings. Courts reinforced that famous marks receive broader protection—even against non-confusing uses that might dilute distinctiveness or tarnish reputation.
Polish law provides extended protection for renowned marks (znaki renomowane) under Article 132¹(1)(4) and Article 296(2)(3) of the Industrial Property Law, implementing the EU framework for protection beyond the boundaries of likelihood of confusion—thus providing independent legal protection for the advertising and quality functions.
This explains why companies invest heavily in policing generic usage. Once a mark becomes generic—as occurred with “aspirin,” “thermos,” and “escalator”—the owner loses all exclusive rights. Businesses facing dilution claims or seeking to protect renowned marks benefit from strategic legal advisory that addresses both enforcement and defence perspectives.
Colour Marks and Non-Traditional Trademark Protection
Single-colour marks face heightened distinctiveness requirements, yet successful registrations demonstrate substantial commercial value. Christian Louboutin’s red sole trademark—Pantone 18-1663TP applied to high-heeled shoe soles—has survived challenges across multiple jurisdictions. The European Court of Justice clarified that a colour mark applied to a specific product part does not constitute a prohibited “shape” mark.
Under Polish law, following CJEU guidance in Libertel (C-104/01), colour marks per se may satisfy definitional requirements where represented by reference to an internationally recognised colour code. However, given the limited palette of available colours, assessment of distinctive character must account for the general interest in not unduly restricting colour availability to competitors. The 2019 amendments extending functional obstacles (Article 129¹(1)(5)) to cover not only shape but also “other characteristics” of goods means colour marks may face barriers where the colour results from the nature of the goods themselves, is necessary to obtain a technical effect, or substantially increases the goods’ value.
For colour combinations, CJEU jurisprudence (Heidelberger Bauchemie, C-49/02) requires precise dispositions concerning a predetermined and constant manner of colour combination. Merely indicating proportions (e.g., 50:50) enabling numerous possible combinations fails to satisfy precision and permanence requirements, as confirmed in Red Bull (C-124/18).
Trademark Enforcement Technologies: AI and Platform Integration
The integration of artificial intelligence into trademark enforcement represents the most significant operational shift in brand protection since the rise of e-commerce. Machine learning algorithms now scan millions of product listings across e-commerce platforms, identifying potential infringement through image recognition and pattern detection at scales impossible for manual review.
Amazon’s 2025 Brand Registry enhancements exemplify platform evolution. Features including Brand Catalog Lock, proactive AI enforcement, and the Transparency Program reflect recognition that platform-mediated infringement cannot be addressed through traditional court proceedings alone.
Defence Strategies: Parody, Fair Use, and Coexistence Agreements
For those facing trademark claims, several defences merit consideration. The parody defence balances trademark rights against First Amendment expression—an effective parody actually reduces confusion because consumers understand the parodist is not affiliated with the trademark owner.
Under Polish law, Article 156 provides limitations on the protective right, permitting third parties to use in trade their own name or address, indications concerning characteristics of goods (descriptive use), and the trademark where necessary to indicate the intended purpose of goods (particularly accessories or spare parts)—provided such use accords with honest commercial practices.
Coexistence agreements offer structured frameworks allowing multiple parties to use similar marks without conflict, typically by dividing rights along geographic or product category lines. With trademark litigation costs averaging $120,000 to $750,000 in the United States, negotiated coexistence often represents the economically rational alternative. Effective contract drafting and negotiation of such agreements requires careful attention to territorial scope, product categories, and dispute resolution mechanisms.
Counterfeit Marks Under Polish Law
Article 120(3)(3) defines counterfeit marks (znaki towarowe podrobione) as unlawfully used signs that are identical to, or cannot be distinguished under ordinary commercial conditions from, registered marks for goods covered by the protective right. This definition requires three elements: identity or near-identity with the registered mark, use for goods identical to those covered by registration, and unlawfulness of such use.
The concept gains particular significance under Article 305, which criminalises the use of or dealing in goods bearing counterfeit marks, carrying penalties of up to two years’ imprisonment. The definition should be distinguished from “a registered trademark the perpetrator has no right to use”—which addresses situations where the mark was originally applied by or with consent of the right holder but exhaustion has not occurred. Those facing such allegations require experienced representation in criminal and white-collar matters.
Trademark Litigation and Court Proceedings in Poland
The Polish Supreme Court’s May 2021 resolution (III CZP 30/20) clarified that for recurring EU trademark infringements, the five-year limitation period runs from each day infringement occurs—allowing rights holders to pursue injunctive relief for continuing violations regardless of when infringement began.
Poland protects unregistered trademarks through the Act on Combating Unfair Competition (ZNKU), particularly Articles 3 and 10. While the 2025 EUIPO guidelines list Poland among jurisdictions not protecting unregistered marks absent well-known status, this oversimplifies Polish law—marks with priority of use and market significance can prevail against later-filed registrations under Industrial Property Law Article 132¹(1)(1). Protection under the competition law framework provides alternative remedies for unfair commercial practices.
As of July 2020, five designated district courts (Gdańsk, Katowice, Lublin, Poznań, and Warsaw) hold exclusive jurisdiction over EU trademark and Community design cases, concentrating specialist expertise. Effective litigation strategy in these specialized tribunals requires understanding both procedural requirements and substantive trademark doctrine.
Classification and Specification of Goods and Services
Polish law requires specification of goods and services according to the Nice Classification, currently in its 11th edition. Following the CJEU’s IP Translator judgment (C-307/10), goods and services must be indicated with sufficient clarity and precision. Under § 8(1) of the relevant regulation, applicants may use general class heading terms provided they are sufficiently clear and precise—in which case the list covers all goods expressly comprised within the literal meaning of the indication.
The concept of retail and wholesale services, recognised following Praktiker (C-418/02), encompasses services provided in connection with retail trade beyond the mere act of sale—including assortment selection and customer incentives. However, according to Polish Patent Office guidelines, production, manufacture, and advertising, sale, and distribution of one’s own goods do not constitute registrable services.
Corporate Structures and Trademark Ownership
Trademark rights frequently intersect with corporate structuring decisions. Companies contemplating mergers and acquisitions must conduct thorough due diligence regarding trademark portfolios, licensing arrangements, and pending disputes. Company transformations including divisions require careful allocation of trademark rights between resulting entities.
For international brand owners, understanding board member liability for intellectual property matters and establishing appropriate corporate legal services arrangements ensures both asset protection and compliance with enforcement obligations.
Global Filing Trends and International Trademark Protection
The EUIPO received 180,451 trademark applications in 2024, with Germany accounting for 12%, followed by Italy (7.6%), Spain (6.7%), France (4.8%), and Poland (3.9%). India recorded over 537,000 applications—representing 10% annual growth.
For businesses operating across borders, international private law considerations determine applicable law for infringement claims, while customs law provides border enforcement mechanisms against counterfeit goods.
Strategic Imperatives for Trademark Rights Holders
The trademark enforcement landscape demands sophisticated, technology-enabled, and jurisdictionally nuanced strategies. Rights holders must balance proactive enforcement against proportionality concerns that could generate public relations backlash or antitrust scrutiny. Those facing trademark infringement allegations should rigorously assess claim validity through independent verification of registration status, likelihood of confusion analysis, and exploration of affirmative defences.
Effective trademark strategy requires coordination across multiple disciplines: civil law for enforcement actions, commercial law for licensing and assignment structures, and administrative law for registration proceedings and appeals to administrative courts.
The possibility of protecting rights to a specific trademark should be verified in view of specific facts by qualified legal counsel with expertise in the relevant jurisdiction.
This material has been prepared by Kancelaria Prawna Skarbiec for informational purposes. It should not be construed as legal advice and does not necessarily reflect current law or complete analysis. Receipt of this information does not create an attorney-client relationship.
