Eniro Polska applied for trade mark protection for PANORAMA FIRM in classes 16, 35 and 41 for goods and services such as telephone and address books, providing services to third parties concerning the promotion of goods and services, publishing services, assistance to third parties in the publishing business. The Polish Patent Office issued its decision on 6 September 1994 and granted the protection right, R-81181.
Panorama Firm-Marek Stefaniak from Sopot filed a request for invalidation of the right of protection for the PANORAMA FIRM mark, claiming that this sign had lost its distinctive character. The company from Sopot based its arguments on provisions of Article 169(1)(ii) 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 of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.
1. The right of protection for a trademark shall also lapse:
(ii) on loss by the trademark of distinctive features for the reason that in consequence of the owner’s acting or negligence it has become, in the course of trade, a customary mark consisting exclusively of elements which may serve, in the course of trade, for indicating, in particular, the kind, quality, quantity, price, intended purpose of the good, the process, time or place of its manufacturing, the composition, function or usability of the good, in respect of the goods for which the trademark has been registered,
Both conditions must appear together, which means that the sign has to lose its distinctiveness and that the trade mark owner contributed to such process.
The Polish Patent Office, in its recent decision of 18 August 2008, act signature Sp. 304/05, rejected Panorama Firm-Marek Stefaniak’s request and ruled that Eniro Polska had proved that PANORAMA FIRM trade mark was in intensive use and that it was also broadly advertised and protected.