On 15 April 2003 the Polish Patent Office (PPO) received a request filed by Kosmetyczno Lekarska Spółdzielnia Pracy IZIS from Warsaw to declare the lapse of protection rights for the AMBER R-98839 trade mark registered for Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S., Istambuł (Turkey) in class 3 for goods such as bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. This trade mark was registered on 19 November 1997, with priority date as of 9 February 1994. The request was based on non-use of AMBER trade mark.

IZIS justified its legal interest in requesting the PPO to decide on the lapse of the right of protection because it is the manufacturer of products in class 3 (cosmetics: creams, cosmetics milks, lotions, tonics) that are labeled with AMBER sign and because of the fact that the Polish Patent Office rejected IZIS’s request of 10 April 2003 for invalidation of the right of protection of the disputed trade mark, and held that the AMBER R-98839 trade mark was an obstacle to the application for registration of IZIS word trademark AMBER – IZIS, Z-161082.

During the proceedings before the PPO the Turkish company submitted evidence of actual use of the disputed trade mark only in respect of soaps. On 5 April 2003 the PPO ruled on the lapse of the right of protection for AMBER R-98839 for goods in class 3 such as “cosmetics”. The Turkish company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC rejected the motion in its decision of 10 March 2008, case file VI SA/Wa 1811/07. The Court held that the term “cosmetics” covers a wide range of cosmetics products intended for various use: industrial, cleaning, protective or fragrance and beautification. The fact that soaps are within the scope of “cosmetics” did not justify the findings of an actual use of the disputed trade mark in respect for all cosmetics where the mark is actually used only in respect of soaps, which were, moreover, identified by the applicant in the description of goods right next to cosmetics. The court also noted that according to article 169(6) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trademark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.

Or as the Court said, passivity during the burden of proof is the problem of the trade mark holder. In this case, the Turkish company during proceedings before the Polish Patent Office has not disclosed the existence of valid reasons for non-use, for any goods except soap. The company from Turkey filed a cassation complaint before the Supreme Administrative Court (SAC). The SAC in its judgment of 3 February 2009, case file II GSK 698/08 held that the Nice Classification of goods is not conclusive as to the nature of goods belonging to each of the classes. It has only an auxiliary nature during the process of formulation of lists of goods for signs that were applied for to the Patent Office as to organize the goods and services in accordance to its characteristics.

In case of a dispute before the Patent Office in proceedings for the declaration of lapse of the rights of protection for trade mark as regards to the part of the goods, as a result of non-use of a registered trade mark, it is required to assess the actual attribiution of the disputed goods to a category, regardless of how it the list of these goods was drawn up. In SAC’s opinion, the Polish Patent Office, followed by the first instance court, have failed to analyze the similarity of the goods for which AMBER trade mark has been registered for and their attribution to a given category. Both the PPO and the VAC did not answer the most important question do soap and cosmetics belong to the same category of goods? It was required by the PPO to assess what is the actual attribution of the disputed goods to what category, regardless of how the list of these goods was done. If you lodge a complaint on the decision of the Polish Patent Office, the first instance court (the Voivodeship Administrative Court in Warsaw) is obliged to review the decision in terms of its compliance with the substantive law and rules of conduct. The SAC held also that the PPO did not examine sufficiently the question of whether there was the important reasons for non-use of a registered mark, and this was due to the ongoing proceedings on the invalidation of the right to registration of the trade mark. The Supreme Administrative Court annulled the contested judgment, and ordered the Voivodeship Administrative Court in Warsaw to reconsider the case.