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Expensive apologies

A trademark infringer may be ordered not only to cease and desist, but also to pay damages and court costs and to bear the heavy expense of publishing the judgment and apologies.

As we see in our everyday practice, when a court in Poland finds infringement of a trademark, the court often grants the plaintiff’s claim for publication of the judgment. If the infringement also constitutes an act of unfair competition, the court will often also order the defendant to publish an apology. Typically publication of the judgment takes the form of information about the judgment, including the date, the name of the plaintiff whose rights were infringed, the name of the infringer, the actions which the infringer was ordered to cease and desist, and the remedial measures ordered by the court. In an apology, the infringer must admit that it committed an act of unfair competition against the holder of the trademark and that it apologises for the infringement.

Businesses that infringe trademarks generally seem unaware that when the court orders them to pay for publication, the costs can be significant—much higher than an award of court costs.

Our practice also shows that courts often order publication of the judgment or apologies in a nationwide press title, as they regard this as an effective means of reaching the greatest number of consumers who may have been affected by the trademark infringement. This particularly applies to consumers who are not regular customers of the infringer but may have purchased goods or services on a one-off basis. The cost of such a publication may run to tens of thousands of zloty. This is because the court will order publication in a format of at least a fourth of a page, and may order that the notice be published several times in multiple press titles. Moreover, an order to publish the judgment is separate from an order to publish an apology.

The costs of publication of the judgment or apology will be very high if the court orders them to be broadcast over television or radio. This is justified particularly when the infringer used these media to advertise the infringing goods or services.

The costs of publication of the judgment or apology may be lower if the court orders publication only in a trade magazine, which typically happens when the goods or services are of a specialised nature and consequently the infringer offered them to a narrower group of potential buyers, or in a local press title if the infringer does not operate or advertise on a nationwide scale.

The costs will also be relatively low if the infringer is only ordered to publish the judgment or apology on the infringer’s own website. Our practice shows that if the infringer operates an online business, the courts will often order publication in this form, as they find that such publication can effectively reach the infringer’s customers with the information about the trademark infringement committed by the defendant. But if the infringer’s operations are not limited to the internet, but conducted on a broader scale and intensively advertised, publication on the infringer’s website will be ordered alongside publication in the nationwide press.

Businesses committing trademark infringement must therefore recognise that if the court finds them liable for infringement, they may be forced to incur high additional costs to publish the judgment or apologies for the infringement. The high cost of publication is not regarded as a valid argument against ordering publication. The fact that the defendant committed the infringement is generally sufficient grounds to order publication.

Katarzyna Pikora, Intellectual Property Practice, Wardyński & Partners