edition:
polskienglish
log in | register

reklama

previous
Work on the Polish REIT is protracted. The bill raises a lot of controversy
next

Use of trademarks resembling registered trademarks in advertising and promotion of shopping malls

Paweł Chojecki, advocate

30 January 2017

Use of trademarks resembling registered trademarks in advertising and promotion of shopping malls

Where did this question and interest in the topic come from? Practice and observation show that shopping mall advertisements are often in the form of visualisations of a building with tenant’s logos as if e.g. Zara, Costa Coffee or McDonald’s already rented a space in a given shopping mall.

It is rather generally known that it is not admissible to use someone’s trademark 1:1 (one-to-one), without their consent, so a common advertising idea is to use modified marks in visualisations, which are not an identical copy of a popular brand, but only produce a relevant association.

Is it ok to do this? It all depends on how far-reaching the modification of someone’s trademark is. If the mark used in an advertisement is still similar to the original trademark –then we are dealing with trademark rights violation. When does such similarity occur? When an average recipient of the advertisement believes that they are still dealing with the Zara, Costa Coffee or McDonald’s brand. With respect to graphical design – we will be dealing with similarity, if the same, characteristic colours are used, and only the shapes are slightly modified.

Such modification may of course be more far-reaching, so that none of the characteristic elements of a popular brand’s logo are used. If we do not use any elements of someone’s trademark, and our mark is not associated with the popular brand – then fine, we are free to use it. Experience shows however that the very essence of this advertising idea is to produce some associations or resort to some similarity to the popular brand. After all such associations are the heart of the entire idea! If it were not necessary to create an association with a popular brand – it would be possible to create a new logo of a made-up brand for the purposes of advertising.

I believe that use of marks which produce associations with logos of popular brands in advertising will always be connected with a legal risk. Even if such use is not considered to constitute use of a mark similar to a popular (renowned) trademark – because the graphical similarity is not that significant, the owner of the brand can still be succoured by the act on combating unfair competition. Such use may be considered an instance of the so-called parasitism and taking unauthorised advantage of a brand (and not only a logotype).

How does it look in practice?

The law says one thing, the business does another. If a brand owner believes that trademarks used in a shopping mall advertisement violate his rights – he may among others demand that dissemination of the advertisement ceases and damages are paid to him (he can potentially bring such claims to court). However, the question is, whether this will not be additional advertising for the brand owner, and whether such an advertisement will bring detriment to any of his interests? I believe that most often the answer is no, so probably the actual risk of using someone’s marks (i.e. similar marks) in advertisements of this kind is smaller than the legal risk (although it is still present!).

What could be more frequent are claims of competitors (other shopping malls) based on the contention that an advertising is misleading – “since this is not your real tenant, do not advertise yourself as if it were”.

Summing up, in shopping mall advertising one should never use trademarks producing associations with logos of popular brands (without their consent) – this is always connected with a risk.


Newsletter
Want to know more? Sign up for the Newsletter


reklama
reklama

conferences

The 23rd Annual Property Market Convention in Poland
Eurobuild Awards 2017
Newsletter
Receive the newest information from realestate world by e-mail
reklama

reklama
About Us Contact Privacy Rules Archive Newsletter
Copyright 2017 EuroCEE. All rights reserved.