Trade mark law, case file II GSK 138/07

September 10th, 2008, Tomasz Rychlicki

On 19 March 1998, with the notification of 17 September 1996, the Austrian company Red Bull GmbH has received the right of protection for its word trade mark based on the international registration IR-641378 A, in almost all classes (3, 5, 12, 14, 16, 18, 20, 25, 26, 28, 29, 30, 32, 33, 34, 35, 39,41 and 42). On March 2004, the Polish company Przedsiebiorstwo Produkcji Lodów “KORAL” applied for the registration of the word trade mark RED BLUE Z-277694 in Class 30 for goods such as ice creams and other products. However, the Polish Patent Office recognized earlier priority of Red Bull’s trade mark and rejected the application.

Koral requested a motion to declare the expiration of Red Bull’s trade mark rights in Class 30, claiming that the Austrian company failed to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years. The PPO agreed with “Koral” and declared the expiration of Red Bull’s trade mark in its decision of 30 October 2005 case file Sp. 199/04. Red Bull’s evidences of use that were based on the fact that Austrian company has put its trade mark on boxes with sweets which were later sent during different occasions to customers and business partners were found insufficient. The date on which five years period ended was set by the PPO on 9 July 2004 (the date on which the request for invalidation was filed). Both parties filed a complaint against this decision. The Polish company did not agree with PPO’s findings as regards trade mark rights’ expiration date, and the Austrian company claimed that PPO should consider reputation of its trade mark.

The Voivodeship Administrative Court in Warsaw in its judgment of 7 September 2006 case file VI SA/Wa 557/06 held that reputation is not taken into account during proceedings for lapse of a right of protection. Arguments that Koral company has no standing were rejected by the Court because both parties were also involved in unfair competition proceeding before civil court. Once again, both companies filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 September 2008 case file II GSK 138/07 ruled that the reputation of a trade mark is irrelevant when there are the invalidation proceedings. This is not the proper stage. The reputation could be taken into account during the application proceeding for Koral company’s trade marks. A single fact of non-used Red Bull’s trade mark being an obstacle for registration was a sufficient condition for declaring its expiry. Koral has also called into question the date of expiry of the right of protection. It was the reason for the Court to discuss this issue in the extended chamber. The Supreme Administrative Court in its opinion of 23 April 2008 case file II GPS 1/08 gave a very detailed explanation of that problem. See also “Trade mark law, case II GPS 1/08“.