Trade mark law, case Sp. 574/07

January 10th, 2009, Tomasz Rychlicki

On 19 April 2004 the Polish company Browar AMBER Andrzej Przybylo from Bielkówko applied for two word-figurative trade marks HANZA PILSENER Z-279466 and PRIVAT BRAUEREI EST 1664 HANZA PILSENER EXPORT PREMIUM BIER Z-279465. However, the Polish Patent Office was not able to grant them because there existed an earlier registration for the word trade mark HANSA R-77233, first applied for on 30 December 1991 by German company Dortmunder Actien-Brauerei Aktiengesellschaft for goods in Class 32 such as beer. The right of protection was granted by the PPO on 3 March 1994.


Browar AMBER filed before the PPO a request to issue a decision on the lapse of the right of protection for the HANSA trade mark. The request was based on Article 169(1)(i) 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 trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exists.

On 18 November 2008, the Polish Patent Office postponed the hearings case file Sp. 574/07 and ordered the German company to provide evidence of trade mark use. The PPO asked for translated invoices confirming the sale of beer under the brand HANSA and for evidence to demonstrate the actual use of that mark. Dortmunder Actien-Brauerei Aktiengesellschaft has a 2-month deadline to file such documents.