Trade mark law, VI SA/Wa 1000/08

February 5th, 2009, Tomasz Rychlicki

In the decision of 4 February 2005, the Polish Patent Office granted the right of protection for the word trade mark Glazide in class 5 for goods such as anti-diabetic pharmaceutical preparations, for Farmaceutyczna Spółdzielnia Prac Galena from Wrocław.

Les Laboratoires Servier from France filed a request for invalidation of the right of protection based on articles 129(1)(ii) and 129(2)(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.

Article 129(1)(ii)
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

Article 129(2)(ii)
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The French company claimed that the mark Glazide could not distinguish the goods for which it was registered. The mark itself presents information about the treatment of diabetes. The active ingredient (AI) in these kinds of medicine is the substance called gliclazidium (gliclazide). However, the PPO dismissed the request and the French company filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 31 October 2008 case file VI SA/Wa 1000/08 dismissed it. That court held that the disputed mark may lead its recipients (doctors, pharmacists) to make some association with the AI, but it does not mean that it lacks the distinctive character. The sign differs from the AI in phonetic and visual aspects. According to the Court, the Glazide trade mark is fanciful and does not describe a type of drug. The VAC ruled that article 129(2)(ii) clearly states that only signs that are made exclusively of the elements that describe the nature or origin of goods lack distinctive character.

The judgment is not yet final. The cassation complaint was filed before the Supreme Administrative Court. See “Trade mark law, case II GSK 214/09“.