Trade mark law, case Sp. 233/07

December 19th, 2008, Tomasz Rychlicki

On 25 July 2001, Polish entrepreneur Leokadia Matuszewska from Wroclaw performing her business under the firm MADERA has applied for trade mark registration for word-figurative sign SHARP in class 9 for goods such as diving cylinders, divers’ suits, diving suits, diving gloves, diving masks, life jackets, diving apparatus, breathing apparatus, except for artificial respiration, breathing apparatus for underwater swimming, life buoys, signalling buoys, in class 25 for goods such as anti-sweat underwear, sweat-absorbent underclothing, ski boots, football shoes, caps, leg warmers, gymnastic shoes, bathing caps, bath sandals, bathing suits, bath robes, bathing trunks, cyclists’ clothing, water ski suits, beach shoes, sports shoes, waterproof clothing, headbands, socks, briefs, shorts, clothing for gymnastics, and in class 35 for goods such as business and service transactions agency, trade contractors’ agency in the field of skiing equipment and accessories, table tennis equipment, lawn tennis equipment and squash equipment, snowboard, windsurfing, ant-swear clothing, socks, sports shoes, shoe impregnants, clothing, tents, tourist fuels and fittings, bicycles and bicycle accessories, mountain tourism, swimming and diving apparatus and equipment, paragliding and equipment, organization of exhibitions for commercial or advertising purposes, trade fairs, marketing in this field. On August 4, 2005, The Polish Patent Office has granted the right of protection for Sharp R-167147 trade mark.

Japanese company Sharp Kabushiki Kaisha has filed a request for invalidation of the right of protection claiming it was granted in violation of article 8(1) and (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.

A trademark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;
(ii) it infringes the personal or economic rights of third parties;

The request had to be based on the old act because the trade mark application was filed while the old act was in force. The Polish Patent Office in its decision of 3 July 2009 case Sp. 233/07 invalidated the registration.