Trade mark law, case II GSK 305/06

March 28th, 2008, Tomasz Rychlicki

The Polish Patent Office in its decision of 15 March 2005 case Sp. 24/01 invalidated the trade mark R-116334 that was registered for Agencja Wydawnicza TECHNOPOL Spółka z o.o. for goods in Class 16 such as magazines and books with crosswords and charades, brochures, exercise books. TECHNOPOL filed a complaint against this decision, but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 May 2006 case file VI SA/Wa 1684/05. TECHNOPOL decided to file a cassation complaint.


The Supreme Administrative Court in its judgment of 29 March 2007 case file II GSK 305/06 held that even if the provisions of Article 4(2) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, allow for the protection of trade mark consisting of the compositions or combinations of colors, it does not mean that each of such compositions is capable of being registered.

4(1) For the purposes of this Law, a trademark shall be any sign capable of distinguishing the goods or services of a given enterprise from similar goods or services of another enterprise.
(2) The following, in particular, are considered as trademarks: words, designs, ornaments, combinations of colors, plastic forms, melodies or other acoustic signals, and a combination of such elements.

The Court ruled that this sign lacks abstract distinctiveness, because the average recipient is not able to remember both the composition of colors and each color of the edges of sheets i.e. a color scheme, or colored side, due to the commonly used by publishers of books and journals practice of coloring sheets of the books and other periodicals. The lack of abstract distinctiveness excluded the possibility to examine its concrete distinctiveness. The Court noted also that regulations protecting industrial property should be applied by the Polish Patent Office and courts in such a way that their interpretation is consistent with the goals and content of the Directive 89/104, and the jurisdiction of the Court of Justice. This follows from the principle of pro-European interpretation of national law. Its essence is the interpretation of national law, which will achieve an outcome that is consistent with the content or purpose of the provision of Community law. National courts must interpret national law in conformity with Community law “as far as possible”. It means that pro-European interpretation of national law is fully admissible if national legislation does not specify clearly an issue, or if the provisions of Community law are more detailed than these afforded in domestic law.