Can a trademark owner require the publisher of a dictionary to indicate alongside the colloquial definition of a word that the word is a registered trademark?
Some trademarks are so strongly established in the language that they begin to function not only as a designation of origin from a particular trader, but also as a colloquial or generic name for a particular category of goods or services.
Older generations remember that, for years, “electrolux” was a synonym for a vacuum cleaner in Poland, regardless of the brand. This meaning has become a thing of the past, and today Electrolux is seen as a brand of household appliances. However, the word “pampers” is sometimes used to denote a disposable diaper, “lycra” is the colloquial name of a fabric with added elastic, and “teflon” is a term for a slippery, non-stick material. Yet all these words also indicate the origin from a specific source and are registered trademarks, for Procter & Gamble, Invista Technologies, and Chemours, respectively.
The point is that the authors of dictionaries and trademark proprietors are interested in completely different issues: the first in the words used by speakers of the language, the second in the rights embodied in words which on the market serve primarily to designate the origin of goods or services. Unfortunately, some dictionaries only give the colloquial meaning of such words, ignoring the fact that they are also, and perhaps above all, registered trademarks. Proprietors often incur enormous costs building the recognition and value of their trademarks. Inclusion of a trademark in a dictionary or similar publication indicating only its colloquial or generic meaning, without mentioning its original meaning (i.e. as a trademark), may weaken the distinguishing power of the trademark, which is its most important feature and a factor influencing its value and sense of protection.
Trademark owners have the right and obligation to take care of the mark and its distinctive character, and must therefore have the tools to do so. One of these is the right to require a publisher of a dictionary, encyclopaedia or similar publication to indicate that the term is a registered trademark.
New old protection measure
For a long time, EU law has clearly regulated matters related to the inclusion in dictionaries, encyclopaedias and similar publications of the meanings of trademark words, and practice in this area is well established. Such regulations have also been in force in Poland for a long time with regard to EU trademarks, pursuant to Art. 12 of EU Trademark Regulation (2017/1001) (and previously Art. 10 of Regulation 207/2009 and Regulation 40/94). The regulation is directly applicable in Poland, without the need for implementation here, and the owners of EU trademarks may invoke the regulation.
However, these provisions were not yet implemented in the Polish Industrial Property Law. The latest amendment to the Industrial Property Law, dated 20 February 2019 and in force since 16 March 2019, changes this state of affairs and gives the same right to those who hold only national marks. (Poland was required to introduce such a provision under Art. 12 of the new Trademark Directive (2015/2436).)
The new Art. 296(1(3)) of the Industrial Property Law provides that if the reproduction of a trademark in a dictionary, encyclopaedia or similar reference work, in print or electronic form, gives the impression that it is a generic name of goods or services, the publisher shall, at the request of the proprietor of the trademark, ensure that the reproduction of the trademark is accompanied by an indication that it is a registered trademark.
What can the trademark proprietor demand?
This new right of the trademark owner may be asserted when the publisher has included the word in a dictionary or encyclopaedia but omitted to mention that it is a registered trademark, restricting the term to a generic definition or colloquial meaning. The trademark owner may then request the addition of information that the word in question is a trademark.
However, the trademark owner may not request the publisher to remove the entry from the publication altogether. Nor can it require the publisher to eliminate the generic or colloquial meaning of the entry and replace it with information that it is only a registered trademark. A dictionary or other reference work should be a source of reliable and verified knowledge, and publishers have the right to record the actual behaviour of language users, if that is how they really use the word.
What should a publisher do?
This obligation is addressed to publishers of dictionaries (both general and specialist), encyclopaedias and other reference works. Therefore, this provision applies, in the broadest sense, to all publications constituting a source of knowledge. It does not matter whether the publication is in print or electronic form. The form of the publication affects only the time when the publisher must comply with the trademark owner’s request. For print publications, the publisher should make a change no later than the next edition of the publication, and for publications in electronic form should do so “without delay.”
It may pose a challenge to exercise the rights of trademark owners in the case of digital dictionaries or encyclopaedias involving user-generated content from the community, and thus lacking a central publisher who could satisfy the request. Nevertheless, it is difficult to imagine that such “knowledge platforms” would remain outside the scope of the provision, especially given their current significance. Their administrators or responsible entities, for example, should supervise the fulfilment of obligations under this regulation.
The Polish Parliament did not include in the new provision recommendations for publishers on how to indicate that a word constitutes a registered trademark, and neither have most countries that have already implemented Directive 2015/2436. Only a few regulations (e.g. in Norway) give guidance on how the obligation can be fulfilled. Usually the trademark owner specifies in the request how the publisher should provide information about the trademark. Some proprietors ask for the word to be accompanied by an indication that it is a trademark registered to a given company. Others ask for inclusion of the ® sign.
It would be optimal if the publisher and the trademark owner worked out together a method for reflecting the fact of registration. The demands of the owner, the provisions of the law, and the editorial conventions adopted by the publisher should all be taken into account. Undoubtedly, however, when including an entry for a trademarked word, the publisher should take into account how the trademark was registered. If, for example, the mark is written in lowercase, it should be displayed that way in the publication. It is reasonable for the trademark owner to request that the meaning of a word as a trademark be given first—after all, that is usually the original meaning of the word.
What if the publisher fails to grant the trademark owner’s request?
Practice shows that publishers are willing to cooperate and respond with full understanding and professionalism to requests of trademark owners. Therefore, as in other countries, no litigation should be expected on the basis of this provision.
Purely theoretically, a publisher who fails to comply with the request of the trademark owner and does not publish information about its registration may be exposed to civil proceedings. The trademark owner could demand that the court order the publication of the relevant information about the registration of the word as a trademark. It would be a bit more complicated for the owners to raise other claims, e.g. to order the destruction of new print publications which, despite the request, do not include the information about the mark, or to order the publisher to publish information about the ruling.
The new right of national trademark owners offers a special protective tool. The reproduction of a registered trademark in a dictionary or encyclopaedia is, after all, not part of the typical “use of the mark” referred to in other provisions on trademark infringement.
Although one may wonder whether the implementation of the provision should be more precise and adapted, for example, to the current level of digitalisation, it should undoubtedly be assessed positively. This right is neither new nor revolutionary, and it certainly supports trademark owners who have only national registrations in their portfolio. Finally, it also equates the rights of national trademark owners with those of EU trademark owners. There are no grounds for them to be different. The implementation also codifies the best practice already followed by publishers in Poland in the field of trademark reproduction.
Today, the set of proprietors impacted by this new provision of the Industrial Property Law may seem quite small. However, language is constantly evolving, and a trademark owner who does not see such a need today may face a challenge of ensuring that its trademark is properly included in a dictionary or encyclopaedia tomorrow.
The appearance of trademarks in dictionaries is closely related to the issue of degeneration, but this is a topic for a separate article. There is no doubt, however, that national trademark owners can add monitoring of the use of marks in dictionaries, encyclopaedias and other reference works to the existing catalogue of measures against degeneration (such as combating infringement, opposing conflicting notifications, promotion of marks, and advertising) and reacting when dictionary entries discussing the meaning of a reproduced word mark do not meet the requirements discussed above.
Lena Marcinoska, adwokat, Intellectual Property practice, Wardyński & Partners