A Western European consumer goods brand enters the Polish market. Only to discover that a local distributor has filed a nearly identical trademark application covering the same Nice classification (the internationally standardised system for categorising goods and services in trademark applications) as the client's own marks. The distributor had used the brand under a distribution agreement for several years. When that agreement ended, they moved quickly to register the name in Poland. The window for reclaiming control was narrow.
This matter involved a cross-border trademark dispute in Poland where an international brand owner faced an infringement claim risk and a competing IP registration by a former commercial partner. The core legal challenge was to pursue opposition proceedings before the Polish Patent Office while simultaneously preparing civil enforcement action. Resolution required coordinating Polish intellectual property legislation with EU trademark law, moving across two procedural tracks within tight deadlines.
This case study outlines the client profile, the strategic choices made, the key milestones and complications encountered, and the transferable lessons for businesses facing similar cross-border IP conflicts in Poland and across Europe.
Client profile and the challenge at hand
The client was a mid-sized consumer goods company headquartered in Western Europe, with established trademark registrations in its home country and at the EU level. It had entered Poland through a distribution arrangement several years earlier. The distributor was well known in the Polish market and had built significant local brand recognition under the client's marks.
When the commercial relationship ended, the distributor filed a trademark application in Poland covering goods within the same Nice classification categories as the client's EU registration. The application was filed with the Urząd Patentowy Rzeczypospolitej Polskiej (Polish Patent Office), the competent authority for domestic trademark registration in Poland.
The client faced two simultaneous risks. First, a successful registration by the distributor would create a conflicting national right. That right could limit the client's ability to use its own brand in Poland, even as the holder of a prior EU trademark. Second, the distributor had already begun using the mark on social media and in trade communications, raising the prospect of consumer confusion and commercial damage that would compound over time.
The client's in-house team recognised the urgency. They engaged Ferraz & Whitmore to assess both the opposition avenue and the civil enforcement options, and to design a sequenced strategy that addressed the immediate procedural deadline without foreclosing longer-term remedies.
Legal strategy: sequencing opposition and civil proceedings
The starting point was the opposition window. Under Polish intellectual property legislation, a third party with a prior right may file opposition proceedings against a published trademark application within a defined period after publication. Missing that window removes the administrative route entirely, forcing the rights holder into the more costly and time-consuming path of invalidation before the Polish Patent Office or civil litigation.
The strategy had three components. The first was to file opposition proceedings promptly, grounding the challenge on the client's prior EU trademark registration and the identity of the goods and services across the relevant Nice classification classes. The EU trademark provided a strong basis. Courts and administrative bodies in Poland consistently recognise the seniority of EU-wide registrations over later national filings where genuine use is established.
The second component addressed the parallel infringement risk. Even while opposition proceedings were pending, the distributor's use of the mark in trade communications constituted a potential IP infringement claim under Polish intellectual property legislation. The team prepared a cease-and-desist notice, documenting the client's prior rights and the specific infringing uses identified online and in promotional materials.
The third component was strategic: preserving civil enforcement as a fallback. If the Polish Patent Office opposition did not yield a fast result – administrative proceedings in Poland can extend over many months – the client needed a parallel option. Polish civil courts handling IP disputes have the power to grant interim injunctions. These can suspend the use of an infringing mark pending a full hearing. Preparing that application in parallel meant the client could switch tracks without losing momentum.
For businesses weighing similar decisions, our detailed overview of intellectual property law in Poland sets out the procedural options and timelines available under Polish legislation.
Key milestones and complications encountered
The opposition filing was completed within the statutory window. At that stage, the Polish Patent Office acknowledged receipt and notified the applicant. The applicant responded by asserting that the EU trademark had not been put to genuine use in Poland within the preceding five-year period. This is a recognised defence under both EU trademark law and Polish intellectual property legislation. It shifts the burden to the rights holder to demonstrate genuine use – through invoices, marketing materials, and distribution records – rather than simply pointing to the registration certificate.
Gathering that evidence across multiple EU jurisdictions proved to be the most time-intensive phase of the matter. The client had to compile records from its home country operations, its EU-wide marketing spend, and the historical documentation from the Polish distribution arrangement itself. Some of those records were held by the former distributor, requiring formal requests for disclosure.
A second complication arose from the contractual history. The distribution agreement had included a clause permitting the distributor to use the brand in Poland for the duration of the arrangement. The opposing party argued that this clause had implicitly licensed the mark in a way that undermined the infringement claim. Addressing that argument required a careful reading of the agreement under the governing law of the contract alongside an analysis of how Polish intellectual property legislation treats licensed use when assessing bad-faith trademark applications.
The bad-faith angle ultimately proved significant. Opposition proceedings in Poland can succeed on the grounds that the applicant filed in bad faith – that is, with knowledge of a prior conflicting right and an intention to block or exploit it commercially. The evidentiary record here was strong: the distributor had signed agreements acknowledging the client's ownership of the mark. That acknowledgment, combined with the timing of the filing immediately after the agreement ended, supported a bad-faith argument before the Polish Patent Office.
To receive a tailored assessment of your trademark position in Poland or across the EU, contact us at info@ferrazwhitmore.com.
Transferable lessons for cross-border trademark matters
Three lessons from this matter apply directly to businesses managing cross-border IP registrations across EU and non-EU jurisdictions.
Monitor trademark applications actively. The opposition window is strict and non-extendable. By the time a conflicting application appears in search results or trade press, the window may already be closing. Systematic monitoring of the Polish Patent Office's publication register – and of EUIPO filings – gives rights holders the lead time needed to respond through the less expensive administrative route rather than civil proceedings.
Document commercial use across all relevant markets. A trademark registration alone does not defeat a non-use challenge. Rights holders must maintain records that demonstrate genuine commercial use: sales invoices, advertising expenditure, distribution records, and correspondence with local partners. In cross-border distribution arrangements, that documentation is often fragmented across multiple parties. Consolidating it proactively – before any dispute arises – dramatically reduces the evidentiary burden later.
Treat distribution agreements as IP instruments, not just commercial contracts. Clauses addressing trademark ownership, permitted use, and post-termination obligations are critical. A well-drafted agreement should confirm the rights holder's exclusive ownership, restrict the distributor from filing any related IP registrations, and include an express obligation to cooperate in enforcement if the marks are challenged. In this matter, a clearer post-termination clause would have forestalled the contractual ambiguity argument entirely.
Businesses managing technology-driven brand assets in Poland may also find relevant considerations in our analysis of AI and technology law in Poland, particularly where brand identity intersects with digital product regulation.
For a parallel perspective on how similar trademark enforcement challenges present in a different EU civil law jurisdiction, see our case study on a cross-border trademark dispute in Portugal.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark registration, opposition proceedings, infringement claims, and cross-border enforcement across both EU and non-EU markets. As a law firm in Poland and across Europe, we combine Portuguese civil law expertise with English common law tradition to support rights holders who need coordinated IP strategy across multiple legal systems. Our IP team includes practitioners with experience before the Polish Patent Office, EUIPO, and in civil court proceedings involving trademark and technology disputes. Engaging a lawyer in Poland with cross-border IP experience at the earliest stage of a dispute significantly improves the range of procedural options available. To discuss your trademark situation in Poland or another jurisdiction, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.