Trade mark law, case II GSK 279/07

January 8th, 2008, Tomasz Rychlicki

The Company Plus Warenhandelsgesellschaft mbH tried to register the word trade mark AZOR in Class 3 in Poland, but the same mark was already registered and had been in force since 1995. Its owner – ORO Produkte Marketing International GmbH – reached an agreement with Plus regarding its registration. However, the Polish Patent Office rejected Plus’ trade mark application. The Voivodeship Administrative Court in Warsaw in its jugment of 14 March 2007 case file VI SA/Wa 2314/06 dismissed a complaint brought by Plus. The Court uphold the PPO’s decision and ruled that the Polish Act on Industrial Property Law provides no exceptions for registration of a mark that is identical to an earlier trade mark, and the goods or services for which the trade mark is applied for are identical.

The Supreme Administrative Court in its judgment of 20 December 2007 case file II GSK 279/07, has confirmed the lower Court’s judgment and ruled that a letter of consent cannot be used as ground to register such trade mark since the Republic of Poland did not implement Article 4(5) of the First Council Directive 89/104. This article is one of the provisions of Community law which leaves the freedom of Member States regarding the implementation of their national law. It has no direct effect for individuals. This provision has been implemented into the Polish Industrial Property Law, only with regard to trade marks for which protection has lapsed.