Trade mark law, case II GSK 252/06
June 30th, 2008, Tomasz RychlickiImperial Tobacco Limited from the UK requested the Polish Patent Office (PPO) to decide in litigation procedure on the lapse of a right of protection for MOON R-91725 trade mark owned by Polish company Altadis Polska S.A. The British company based its legal interest on the fact the it has applied for recognition on the territory of the Republic of Poland of the protection for the international trademarks with the word element MOON IR-811335, IR-812000, IR-811953 and IR-811992, intended to designate goods in class 34 and desire to use in Poland, their MOON trade marks. Imperial also pointed out that MOON R-91725 trade mark was not used on Polish territory in the way that is required by law.
Altadis demanded the dismissal of the request. Polish company argued that Imperial has no legal interest in seeking the lapse of a right of protection for MOON R-91725 trade mark, because John Player & Sons Limited of Ireland is the company entitled to the international registration of trade marks.
The PPO dismissed the request and PPO’s decision was upheld by the Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 30 March 2006, case file VI SA/Wa 2048/05. The VAC bases its reasoning on the lack of legal interest. Imperial filed a cassation complaint.
The Supreme Administrative Court in its judgment of 8 February 2007 case file II GSK 252/06 held that the entrepreneur who plans to place on the domestic market identical or similar goods bearing a sign that is identical or similar to registered but unused trademark, has a legal interest in requesting the PPO for the decision on the lapse of a right of protection for the trade mark because of its non-use by the holder, provided, however, that such entrepreneur will demonstrate that its intention is real and genuine, especially if it’s a manufacturer of such goods and introduces them to a common market under the sign.