Trademark Registration in Bad Faith-Poland
On July 5, 2006, the Warsaw Administrative Court (WAC) issued to its decision that the trademark SPINNING registered in Poland for services should be cancelled as it was filed in bad faith. The decision confirmed that it is not necessary to provide evidence of formal connections between companies in order to establish bad faith. It is sufficient to prove that the applicant know that the applied-for trademark belonged to another company.
On February 6, 1998, the Polish company Biniek Sylwester AER filed an application to register the trademark SPINNING for services related to sports training, physical recreation activities, conducting of courses for spinning program instructors and the sale of spinner bikes. However, on February 11, 2004, the US company Mad Dogg Athletics Inc filed a request for cancellation of the trademark SPINNING on the ground that the application had been filed in bad faith, because at the date of filing, the Polish company knew about the existence of earlier Community trade mark registrations for SPINNING in its name or national registrations for the mark in other EU countries. Mad Dogg presented documentary evidence showing that as early as 1997, the applicant was well familiar with the program created by the co-owner of Mad Dogg that featured aerobic exercises using SPINNING bikes. Moreover, it was in 1998 that Binick Sylwester personally met the creater of the program and underwent special training in New Mexico, USA, to become a SPINNING instructor himself. Therefore, it was obvious that Biniek Sylwester was fully aware that the trade mark had belonged to Mad Dogg. In response, Biniek Sylwester petitioned for dismissal of the cancellation request, arguing that he had been the first person in Poland to promote the program of physical exercises using the spinning bikes and acquired knowledge about the spinning bikes program and promoted the program on his own. In addition, he did not have any legal connection with Mad Dogg which was not conducting any business activity in Poland.
The Polish Patent Office, in a decision of September 5, 2005 cancelled the trademark SPINNING. At the registration of subject mark, the party filing the request for its cancellation enjoyed prior rights in the trademark with earlier application dates in the territory of other EU countries. In addition, at the filing date, the applicant knew perfectly well that the trademark had been created by Mad Dogg and had been closely connected with that company for many years. Therefore, the application for registration was in bad faith and contrary to the principles of social coexistence. However, Biniek Sylwester filed with the Regional Administrative Court in Warsaw a complaint against the Patent Office decision. The Warsaw Regional Administrative Court dismissed the complaint, holding that the decision of the Patent Office was correct under the relevant law.
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