Archive for: March, 2009

Personal data protection, case II SA/Wa 1495/08

March 30th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 March 2009, case file II SA/Wa 1495/08 decided on the protection of personal data and providing and operating online services such as websites about users’ classmates. The VAC ruled that in accordance with article 6(2) of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments, not only information on the current situation of an individual decide whether one is dealing with personal data, but also information relating to what a person did and who one was in the past. It means that such data are protected under the Act on Protection of Personal Data.

See also “Polish regulations on personal data protection” and “Polish case law on personal data protection“.

Trade mark law, case II GSK 668/08

March 28th, 2009, Tomasz Rychlicki

On 25 January 2005, Société des Produits Nestlé S.A. applied to register the word trade mark CHOKELLA Z-290315 in Class 30, for goods such as: breakfast cereals, muesli, corn flakes, cereal bars, cereal flakes, cereal preparations, food products based on rice, flour or cereals, also in the form of ready-to-use meals. Nestlé was aware that there is a possiblity that the Polish Patent Office rejects the application because of the earlier registration of the trade mark CHOKELLA R-85159, registered with priority on 30 August 1993 for the Company Kelsen The International Bakery A/S from Norre-Snede, which during Nestle’s application was under the grace period based on the provisions of Article 132(1)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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.

2. A right of protection for a trade mark shall not be granted, if the trade mark is:
(iii) a trade mark earlier registered in the Republic of Poland, whose registration has terminated, provided that an interval between the date of lapse of the right of protection for the trade mark and the date on which a similar trade mark has been applied for by another party, is, subject to Article 133, no longer than two years.

On 3 February 2005, Nestle filed before the PPO a request for a declaratory decision which would affirm the lapse of the right of protection for the trade mark CHOKELLA R-85159, because of its non-use. According to Nestle, the declaratory decision should be effective from the date when an event which involves the effect of the expiry occured, i.e., at the date when the 5-year time period of non-use of a trade mark expired.

On January 2006, The PPO, dismissed the proceedings on the grounds that it was pointless, since before the date of Nestle’s request the rights of protections for CHOKELLA trade mark expired on 30 August 2003, under the law, due to the failure to extend the protection for the next ten years. It was unacceptable for the PPO to decide on the lapse of the rights of protecion for a trade mark, which did not exist at the date of application for such declaration. The PPO indicated that Nestle’s request was filed almost two years after the expiry of the CHOKELLA trade mark, so dismissal of the proceedings was justified because of the lack of subject that would be suitable for a substantive judgment. The PPO ruled that the right of protection shall expire on the date of the decision with effect from the date of filing a request to declare the right of protection for the trademark lapsed. So the decision has a constitutive nature and is applicable ex tunc. The PPO did not agree with Nestle’s argument, and the construction and interpretation of the provisions of Article 169(2) of the IPL.

The Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.

The PPO decided that this prejudge the declaratory nature of the decision on the lapse of the rights of protection and it differs from the provisions afforded in the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

Article 25.
The right deriving from registration of a trade mark shall lapse:
(i) on expiry of the term of protection;
(ii) on relinquishment of the right by the person entitled under the registration of the trade mark;
(iii) on failure to use the mark;
(iv) on loss of sufficient distinctiveness of the trade mark;
(v) on termination of economic activity on the part of the owner of the right deriving from registration of the trade mark.

Article 26.
In those cases referred to in section 25, items ii) to v), the Patent Office shall cancel the right deriving from registration of the trademark.

Article 30.
(1) Any person having a legitimate interest may submit a request for confirmation of lapse or a request for annulment of the right deriving from registration of a trade mark.

In the PPO’s opinion the provisions of article 169(2), beside different nomenclature of institutions (i.e. registration rights in the TMA and the rights of protection in the IPL), are identical and, even if the TMA did not indicate the date on which the lapse of registration rights or rights of protection, the legal doctrine and the case-law have established a method of calculating such date based on a specific event, for which it is considered the date of filing the request before the Patent Office to decide on the lapse of the right of protection for the trade mark.

Nestle filed a complaint before the Voivodeship Administrative Court in Warsaw, and argued that, contrary to the PPO findings, the IPL quite differently regulates the rules of declaration on the lapse of the right of protection for the trade mark. The Office shall issue a decision on the lapse of the rights of protection for trade mark and the provisions of Article 169(2) of the IPL indicates clearly that the decision is a declaratory act with a constitutive effect, that is, the decision itself, does not abolish the rights, but merely states that the right is expired under the law, which has effect for third parties from the time it was decided.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 December 2007 case file VI SA/Wa 791/07 dismissed the complaint. The Court agreed with the PPO’s findings. Nestle filed a cassation complaint before the Supreme Administrative Court.

The Supreme Administrative Court in its judgment of 21 January 2009 case file II GSK 668/08 annulled the ruling of the Voivodeship Administrative Court. First, the Court noted that the Supreme Administrative Court in its judgment of 23 April 2008 case file II GPS 1/08 held that according to the provisions of Article 169(1)(i) of the IPL, the date of lapse of the right of protection for a trade mark is set on the last day of a period of five successive years, counting from the first date of non-use. See also “Trade mark law, case II GPS 1/08“. The SAC ruled that aforementioned judgment can not be excluded from the examination of the matter of Nestle’s complaint. According to the Court, it is accurate and consist of compelling arguments that are sufficient to answer the question formulated in Nestle case. The Court held that the similarity of the nature of “industrial property” within the meaning of property in the civil law context is in the exclusive use of goods that are understood as property, the beneficial use and disposal of such goods. However, the industrial property differs because its formal nature that is resulting from the relationship with a decision on granting the rights of protection, invalidation and the lapse of rights of protection. The decision to grant the rights of protection for a trade mark mark is clearly a constitutive act creating the legal status for a person. Declaratory decisions can not determine the occurrence of the new legal situation, but must refer to another fact or event occurring earlier in time and combine them with the rights or duties of the entity (legal or natural person). The vague regulations of the TMA encouraged the formulation of views on the constitutive nature of the decision on the lapse of the registration rights of a trade mark under article 26 and 30 of the TMA. The SAC did not agree with two separate opinions issued by judges who were appointed to decide in case II GPS 1/08 and article written by professor Ryszard Skubisz and Marcin Trzebiatowski in which the authors provided examples on declaratory and constitutive nature taken from family law or labour law. According to the Court, the difficulties arise when the vague provisions of formal law create the need for an interpretation if, in connection with the answer to the question of when and on what basis (fact, event, operation), the decision has constitutive or declaratory nature. It was incomprehensible for the SAC to give the examples of judgments of nullity of marriage or fatherhood, the effects of which can not be transferred by the declaratory act on the life of the party in the family and the society. The Court held that similarities between industrial property and the instutution of the property taken from the civil law (property and ownership of tangible goods) should be taken into account to justify the recognition of decision on the lapse of the rights of protection as declaratory one instead of the principles of family law. The Court analyzed the nature of such decision in the scope of the property law rules i.e. the acquisition of property (perpetual use of the property or servitude of the ground) is decided by the declaratory ruling of the civil court following the expiry of the last day of the period when such possession is required by the formal law. The SAC also stated that the day of filing the application for declaration on lapse of the rights of protection does not affect the date of expiry of the right, because it is initiating administrative action on the request of the parties. Whether and when the rights of protection shall lapse should be declared by the findings made during the proceedings for the purposes of the law.

Personal rights, case II CSK 539/07

March 27th, 2009, Tomasz Rychlicki

The company QXL Poland sp. z o.o. is the owner of the allegro.pl auction website which removed the user account of a natural person (Cezary O.) who was using the nicknames CezCez, 2cez, 2xcez and espia. The company presented different reasons for its decision to remove the account and tried to justify such action by putting various statements about CezCez on its forum website “Cafe Nowe Allegro”. CezCez did not agree with QXL’s statements and sued. The court of first instance agreed with Cezary O.’s arguments and ruled that QXL Poland make a statement of apology as follows

Allegro.pl wishes to apologize to CezCez for using comments by one of its employees which publicly appeared on the New Cafe Allegro on 17 January 2003,– wording that implied CezCez was dishonest, he lies, he is selfish and that he pursues his own self-interest. These actions and comments affected the good name of CezCez, which was not the intention of QXP Poland.

The above statement was to be published on the Allegro.pl website but both parties appealed. The Appellate Court in Lodz did not share the conclusions of the court of first instance that the username (a nickname) used in internet services is personal right/interests (i.e. intangible personal property) eligible for protection under Articles 23 and 24 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, published in Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments.

Article 23
The personal interests of a human being, in particular to health, dignity, freedom, freedom of conscience, surname or pseudonym, image, secrecy of correspondence, inviolability of home, and scientific, artistic, inventor’s and rationalizing achievements, shall be protected by civil law independent of protection envisaged in other provisions.

Article 24
§ 1 The person whose personal rights are threatened by someone else’s action, may require the desist of that action, unless it is not illegal. In the event of the infringement one may also require, the person who committed the violation, to fulfill the actions necessary to remove its effects, in particular, to make a statement of the relevant content and appropriate format. According to the conditions laid down in the Code one may also require monetary compensation or payment of an appropriate amount of money for a social purpose indicated.
§ 2 If as the result of a breach of personal rights one has suffered pecuniary prejudice, the aggrieved person may claim compensation based on general principles.
§ 3 The above shall not prejudice the entitlements provided by other regulations, in particular in copyright law and the patent (invention) law.

The Appellate Court did not agree with the arguments that the user name (a nickname) has parallels with a pseudonym. The case went to the highest court in a further appeal as a cassation complaint. The Supreme Court of Republic of Poland in its judgment of 11 March 2008 case file II CSK 539/07 dismissed the case for procedural reasons. However, the SC did not agree with conclusion of the Appellate Court with regard to protection of nicknames or usernames in the digital environment. The court noted that a username fulfils a variety of functions. First, the creation of a username is a prerequisite to registering on the allegro.pl website in order to obtain its own account and so participate in auctions. A person using such a nickname may be a buyer or a seller. Secondly, a username allows a person to log into Allegro.pl website. In the process of logging in, the user is given a pair of identifiers, such as a username and password. Thirdly, the username/nickname identifies the individual in question in the online environment, in this particular case, in the environment of people using Allegro.pl services. The individual is therefore recognised as a user using a specific nickname. The Supreme Court could not agree with the position of Court of Appeal that the nickname is purely a technical issue used to personalise the operation. On the contrary it argued, the username/nickname defines and characterises the person who uses such an auction site, bids on it, is the party to a contract of sale, issues comments or is involved in correspondence with other users. The Court found that in some cases, participations in the auction website by a user using a specific name can be a source of information for other participants who know that this user typically takes part in an auction of that type, bids only to a certain amount of money, only on certain days, in a certain way, does not compete with users using specific names, that the user is honest, efficient and immediately carries out transactions, etc. The Supreme Court also ruled that a username identifies a specific natural person. A username consists of a series of signs and letters, and there are no counter-indications that a person who created his or her own username could use his or her own name, surname, artistic pseudonym, pen name, or alias or it could even be a natural person who is the agent and uses the company name (the firm) under which it operates its business. It appeared to the court that in the assumption of a username by a person rather than his or her own name, the pseudonym (which has so far been used as an example in artistic activities) is meant as the assumption of a nickname in order to allow for individualisation of that particular person. The word “nickname” comes from the Greek language (“pseudonymos”–bearing a false name, falsely named) and it means a first name, last name or another name which someone uses to conceal his real name or surname. The court found irrelevant the motivation of a person who takes a nickname which is used as a pseudonym only in the “internet environment” or that the nickname may only be associated with the activities of that particular person carried out within the scope of services offered by Allegro.pl, since it may also have a broader meaning and go beyond the services of Allegro.pl. Consequently, the court noted that a username is subject to legal protection on the same basis on which protection is granted for any name, pseudonym or firm name, under which a person has established its business (whether it is a company name or that of a private person). At the same time, the court found no reason to treat a username/nickname as a separate personal right.

Trade mark law, case Sp. 158/08

March 26th, 2009, Tomasz Rychlicki

On 17 October 2006, the Polish Patent Office registered the word-figurative trade mark BATCZEW KOMPERDA R-181286 in Class 29 for goods such as bacon, meat extracts, meat jellies, blood pudding, smoked meat, sausages, canned meat, meat, canned meat, canned meat, salted meat, pork, pie with liver, lard, ham, liver, cured and pork and in Class 40 for services such as the slaughter and food smoking. This sign was applied on on 22 March 2004 by the Polish company “FIRMA BATCZEW Stanislaw Komperda” from Morawczyn.

R-181286

The European Commission filed a request to invalidate the registration based on article 131(2)(iii) 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.

2. A right of protection shall not be granted for a sign, if:
(iii) it incorporates the abbreviated names or symbols (armorial bearings, flags, emblems) of other countries, international organisations, as well as official signs, hallmarks indicating control and warranty adopted in other countries, if the prohibition of registration follows from international agreements, unless the applicant is able to produce an authorisation issued by a competent authority, which authorises him to use such signs in the course of trade.

The EC alleged that the sign imitated the European Union flag and that the symbolism of its additional elements did not change the overall impression.

Permission to use the European emblem does not confer on those to whom it is granted any right of exclusive use, nor does it allow them to appropriate the emblem or any similar trademark or logo, either by registration or any other means. Each case will be examined individually to ascertain whether it satisfies the criteria set out above. This will be unlikely in a commercial context if the European emblem is used in conjunction with a company’s own logo, name or trade mark.

The Adjudicative Board of the Polish Patent Office in its decision of 6 March 2009 act signature Sp. 158/08 agreed with the EC’s arguments that FIRMA BATCZEW Stanislaw Komperda’s trade mark imitated the flag of the European Union. In PPO’s view the flag of the European Union can not be used in a trade mark, even if it is stylized, and even if the sign has more elements. The PPO cited judgment of the Court of First Instance of 21 April 2004 in case T-127/02, Concept v. OHIM (ECA).

40. State emblems and emblems of international intergovernmental organisations are protected not only against the registration and use of marks which are identical to them or which incorporate them but also against the inclusion in such marks of any imitation of those emblems from a heraldic point of view”.

The PPO’s decision is not yet final. The Polish comapany may file a complaint to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case IV CR 60/88

March 22nd, 2009, Tomasz Rychlicki

The Supreme Court in its judgment of 17 March 1988 case file IV CR 60/88 held that a person whose personal interests, as defined in this case as the right to use the surname, has been infringed by the use of a trade mark, is entitled to protection under the provisions of Article 23 and 24 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, published in Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments.

Article 23
The personal interests of a human being, in particular to health, dignity, freedom, freedom of conscience, surname or pseudonym, image, secrecy of correspondence, inviolability of home, and scientific, artistic, inventor’s and rationalizing achievements, shall be protected by civil law independent of protection envisaged in other provisions.

Article 24
§ 1 The person whose personal rights are threatened by someone else’s action, may require the desist of that action, unless it is not illegal. In the event of the infringement one may also require, the person who committed the violation, to fulfill the actions necessary to remove its effects, in particular, to make a statement of the relevant content and appropriate format. According to the conditions laid down in the Code one may also require monetary compensation or payment of an appropriate amount of money for a social purpose indicated.
§ 2 If as the result of a breach of personal rights one has suffered pecuniary prejudice, the aggrieved person may claim compensation based on general principles.
§ 3 The above shall not prejudice the entitlements provided by other regulations, in particular in copyright law and the patent (invention) law.

This protection is afforded regardless of the protection provided in the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

Trade mark law, case I CSK 96/08

March 20th, 2009, Tomasz Rychlicki

Lindt & Sprüngli requested the Polish court to prohibit Terravita from offering, marketing or storage chocolate products with a characteristic shape of a seated hare, wrapped in metail foil with clearly marked drawings of nose, bandoline, eyes, ears and tail with bow placed on the neck. Lindt also asked the court to stop the defendant using or affixing “Terravita hare” or its image in advertising and commercial documents, and an order that the defendant withdraw the “Terravita hare” from the market, requiring the defendant to destroy all packagings, packaging designs and dies, molds and other devices intended to produce and direct wrapping the “Terravita hare”.

Lindt's hare

The District Court in Warsaw, the Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 22 September 2005 dismissed the action. The court held that the conditions set out in article 9(1)(b) of the CTMR were not met. In the court’s opinion “Goldhase”, “Lindt” and “Terravita” signs that appear on the respective products differentiated them significantly and hence there is no risk of consumer’s confusion. The average consumer of chocolate hares does not perceive the origin of the goods only on the basis of the shape of a hare, but also on the basis of other important and distinguishing elements, including the mark placed on the product, the color of the packaging, its price, the trade mark identifying the manufacturer. The average consumer sees the difference in colour of the packaging of chocolate hares, and these were different in this case. Lindt’s packaging of the hare has the color of gold, red and brown, and Terravita’s are in silver. In addition, the District Court indicated that according to article 159a(5) of the CTMR, the defendant has only the right to prohibit the use of a trade mark on the territory of the Republic of Poland.

Terravita's hare

Lindt brought an appeal. The Appellate Court in Warsaw in its judgment of 6 July 2006 case file I ACa 616/07 dismissed the case. The Court held that the shape and the colour did not inform about the origin of the goods. The form of a sitting hare, Easter eggs or bells do not have a distinctive characteristic. The court similarly assessed the coloring of the aluminum foil placed on chocolate hares. The colour of silver and gold are typical for chocolate products. In this case, the only distinctive elements of both products were sings “Goldhase Lindt” and “Terravita” and they were dissimilar. Accordingly there was no risk of consumers confusion as regards the orgin of goods.

Lind brought a cassation complaint to the Supreme Court of the Republic of Poland. The Court, in its judgment of 13 April 2007, case file I CSK 16/07, ordered the Appellate Court to reconsider the case. The Supreme Court has interpreted the EU law, pointing to the need for a comprehensive assessment of similarity of the disputed signs. Only such an assessment would determine whether there is a risk of confusion.

The Court of Appeal, after rehearing the case, changed its judgment in favour of Lindt. The court found that the Golden hare was introduced by Lindt on the Polish market in 1997 (16 pieces), and 240 pieces in 1998. On March 1999, Terravita purchased in Germany the same form as the form used by Lindt and began producing and marketing of chocolate hares. Therefore the disputed hares share the same shape and size. Both are packaged in foil – gold, or silver, both have a ribbon tied to the neck in bow but Terravita’s is printed on the foil and there is no bell. The Court of Appeal stated that the condition for the likelihood of confusion has been met. The court stressed that Lindt’s Gold hare is well known among consumers of chocolate products. Therefore, there was no doubt to believe that Lindt’s hare has a huge recognition among consumers of chocolate products, especially if its presence on the market was established for more than nine years. With regard to the Terravita silver hare the Court of Appeal held that, although the latter figure was produced using the same form as used by the Lindt, and thus both hares are having the same shape and size but additional drawings and elements preclude similarities.

This time, Terravita brought a cassation complaint. The Supreme Court in its judgment of 3 October 2008, case file I CSK 96/08 held that in the circumstances of this case, there is no doubt that disputed hares are not identical and only its shape is the same, since they are manufactured from the same form. However on the foil of both hares, in a prominent place, one may find adequately put signs “Lindt Goldhase” or “Terravita”, which in fact makes the likelihood of consumer confusion practically excluded. The Court cited its earlier case law. The Supreme Court in its judgment of 1 February 2001, case file I CKN 1128/98, published at OSNC 2001, No. 9, item. 136, held that if word-figurative trade marks are used on the market then the word elements of such signs should have been attributed the distinvtice characteristics. The SC in its judgment 8 April 2003, case file IV CKN 22/01, published at OSP 2004, No. 5, item 61, held that in case of word-figurative trade marks the word element has the distinctive characteristics because it determines the ease of assimilation and the perception by the public. The Supreme Court in its judgment of 14 November 2003, case file I CK 176/02 (unpublished) excluded the risk of confusion in a situation where bottles used by the plaintiff and the defendant had the same shape (as in the facts of this case these bottles came from the same form), but were labeled with various word and images elements. In conclusion, the Court held that in the case of two identical products, one of which concerns the Community trade mark, the likelihood of confusion within the meaning of article 9(1)(b) of CTMR does not exist, if the other characteristics of goods, in particular bearing the word or image, allow them to be clearly distinguished.

Trade mark law, case II GSK 654/08

March 20th, 2009, Tomasz Rychlicki

On 29 December 2004, the Polish Patent Office registered the word trade mark DIX R-158898 applied for on 24 May 2001 by the Polish company Gold Drop in Classes 1, 2 and 3. On 20 December 2003 Gold Drop applied to register another word-figurative trade mark DIX also in Classes 1, 2 and 3. The PPO registered this trade mark R-160901 on 11 April 2005 accordingly.

R-158898

The French company Balenciaga from Paris opposed these registrations. The request to invalidate the right of protection was based on the provisions of Article 132(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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.

2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark.

Balenciaga owned the word trade mark registration LE DIX R-152201 in Class 3. This sign was registered by the PPO on 8 May 2003 with priority from 10 June 1999. The French company claimed confusing similarity of the disputed marks because of the predominating DIX element. In addition to these arguments there was also similarity of good (cleaning preparations).

R-160901

The PPO invalidated both trade marks in its decision of 13 March 2007. The PPO agreed that the disputed signs were similar and that there existed the risk of misleading the public as regards the origin of goods. Gold Drop lodged a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 7 February 2008 case file VI SA/Wa 1787/07 rejected Gold Drop’s complaint in case of the trade mark DIX R-160901. As regards the similarity of goods, the Court could not agree with the assertion that the term “cleaning products” in this list of goods refers only to the category of cosmetics. In accordance with the terminology adopted in the Nice Agreement concerning the international classification of goods and services, and adopting by the Court of the language interpretation, it should be stated that the “cleaning preparations” refers to chemical products and have been clearly demarcated in the class 3 from the second group of goods that are intended for personal use, i.e. perfumery. In the Court’s view the restrictive interpretation of the term “cleaning preparations” only to the range of goods including body cosmetics would be invalid.

However, the Voivodeship Administrative Court in Warsaw (in a different composition of judges) in its judgment of 21 February 2008 case file VI SA/Wa 1789/07 agreed with Gold Drop’s complaint regarding the trade mark DIX R-158898. In the Court’s view, the PPO has omitted and it has not not determined, what is the relevant public in relation to which it is necessary to assess the likelihood of confusion. The PPO did not find if the relevant public was the average consumer in France or European consumers, or whether these are the goods from the so-called. “the higher shelves”, and the recipient is a demanding customer or whether the goods are intended for daily use. The evidence presented before the PPO did not allow to assume that the goods included in the list of disputed trade mark were homogeneous to goods the earlier trade mark was registered for.

Gold Drop filed a cassation complain before the Supreme Administrative Court against the VAC judgment of 7 February 2008 case file VI SA/Wa 1787/07. The SAC rejected the complaint in its judgment of 3 February 2009 case file II GSK 654/08. The Court held that Gold Drop has based its cassation complaint only on the breach of the Article 132(2)(ii) of the IPL, and the SAC confirmed that while evaluating the similarity of signs only factual findings decide the case, so it was necessary for Gold Drop to raise the plea of breach of the procedural law (administrative proceedings), which the company did not put forward and while deciding the case the SAC is limited to motions included in a complaint. This judgment is final.

Trade mark law, case II GSK 642/08

March 19th, 2009, Tomasz Rychlicki

On 25 October 1995, Tomasz Bednarski, the Polish entrepreneur conducting business under the company name Optyk Tomek in Warsaw, applied for the registration of the word trade mark Optometrysta (English: optometrist) in Class 42 for services such as examination of eye refraction, selection of spectacles for individual needs, selection of contact lenses for individual needs, selection of telescopic spectacles for individual needs. On August 4 1998, the trade mark was registered by the Polish Patent Office under number R-104424.

In February 2007, the President of the Executive Board of the Polish Society of Optometry and Optics informed the Polish Patent Office that the word optometrysta is a common profession name, used at least since 1983. In March 2007, the request for invalidation of the trade mark was filed by the President of the Patent Office, based on claims that the registration was granted against Article 7(2) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

  1. The only signs that shall be eligible for registration as trade marks are those that have sufficient distinctiveness in ordinary economic activity.
  2. A sign shall not have sufficient distinctiveness if it simply constitutes a generic designation of the product, if it simply makes a statement as to the properties, quality, number, amount, weight, price, purpose, manufacturing process, time or place of production, composition, function or usefulness of the goods or any similar information that does not enable the origin of the goods to be determined.

This was in connection with Article 167(2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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.

The General Public Prosecutor of the Republic of Poland or the President of the Patent Office may, in the public interest, request that the right of protection for a trade mark be invalidated or intervene in an invalidation action already pending.

According to the President of the Polish Patent Office, the trade mark Optometrysta is simply the name of a profession. The World Council of Optometry defines optometry as a healthcare profession that is autonomous, educated, and regulated (licensed/registered), and optometrists are the primary healthcare practitioners of the eye and visual system who provide comprehensive eye and vision care, which includes refraction and dispensing, detection/diagnosis and management of disease in the eye, and the rehabilitation of conditions of the visual system. In 1999 the profession was entered on to the list of professions performed in Poland, which is kept by the Ministry of Labour and the President of the Central Statistics Office.

During the hearings at the Patent Office, the owner of the mark declared that he performed the services under the mark, and according to his knowledge, the mark had not been earlier registered in the name of any other party. In view of this, he decided to apply for registration of the mark with the aim of obtaining financial benefit. The Adjudicative Board of the Polish Patent Office, by virtue of its decision of May 30 2007, case file Sp 141/07, invalidated the trade mark right. The Patent Office argued that before the date of filing an application for registration of the sign as a trade mark, it functioned as the name of a profession in the optical industry. At the date of invalidation, the subject mark does not have any distinctive character, and therefore no one should be granted the exclusive protection right for the mark, and at the same time a monopoly thereto.

Bednarski lodged a complaint with the Voivodeship Administrative Court (VAC) in Warsaw (decisions of the Patent Office are subject to complaints with the Administrative Court). He questioned procedural aspects of the Patent Office’s decision, and argued that the Patent Office should base the request for invalidation on article 31 of the TMA.

The request for annulment of a right deriving from registration of a trade mark may be filed within five years of the date of registration. After the expiry of that period, such request may only be filed in respect of an owner who has obtained a registration in bad faith.

According to Bednarski, the term for filing this request terminated in 2004, and the Patent Office had not made reference to bad faith action in order to file the request for invalidation after expiry of this term. The District Administrative Court rejected the trade mark owner’s arguments. The Court, in its decision of December 13 2007, case file VI SA/Wa 1708/07, held that the five-year statutory period for filing the request for invalidation had not expired before the entry into force of the new Law on Industrial Property, which provided different regulations and opened new opportunities to file the request for invalidation. These regulations are set forth under Chapter 6 of the Law on Industrial Property entitled “Invalidation and Lapse of the Right of Protection for a Trade Mark”. Apart from exceptional circumstances specified therein, the legislature has waived the deadline for requesting invalidation proceedings. As of August 22 2001, no time limit will restrict the possibility of requesting invalidation of the right of protection. Thus, after August 22 2002, the President of the Patent Office, acting in the public interest, may at any time request the invalidation of the right of protection that was granted against the law.

Bednarski filed a cassation complaint with the Supreme Administrative Court. However his motion was dismissed by virtue of a decision of the Supreme Administrative Court of January 20 2009 case file II GSK 642/08. The decision is final.

Trade mark law, case Sp. 564/07

March 4th, 2009, Tomasz Rychlicki

On 21 July 2006 the PPO issued a positive decision and registered the word trade mark PLUSPIRYNA R-175822 in class 5 for pharmaceuticals products. It was applied for on 4 November 2005, by the Polish company Zakłady Farmaceutyczne Polpharma S.A. from Starogard Gdański. The German company Bayer Aktiengesellschaft from Leverkusen filed a request to invalidate the right of protection. The request was based on article 131(2)(i) and article 132(2)(ii) and (iii) 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 131(2)(i)
2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,

Article 132(2)(ii) and (iii)
2. A right of protection for a trade mark shall not be granted, if the trade mark is:
(ii) a trade mark which, before the date according to which priority to obtain a right of protection is determined, has been well-known and used as a trade mark in respect of the goods of another party,
(iii) a trade mark earlier registered in the Republic of Poland, whose registration has terminated, provided that an interval between the date of lapse of the right of protection for the trade mark and the date on which a similar trade mark has been applied for by another party, is, subject to Article 133, no longer than two years.

Bayer presented its earlier rights of protection for the trade mark ASPIRIN R-41042, which was applied for in the Republic of Poland on 20 June 1958, in class 5 for pharmaceutical preparations. Bayer alleged that Polpharma’s mark was confusingly similar to ASPIRIN and that PLUSPIRYNA is build on the reputation of Bayer’s trade mark. The disputed trade mark includes “pirin” component which in its overall assessment makes it similar to the ASPIRIN trade mark and it also weakens its reputation. Bayer has also registered other trade marks such as ASPIRIN-C R-105171, ASPIRIN R-105170 – applied for on 18 January 1994, these signs were registered on 8 September 1998 and ASPIRIN R-94326 – registered on 26 February 1997, in class 5 for goods such as medicines, pharmaceutical preparations, chemical proudcts for health care.

Polpharma argued that it has been registered a lot of trade marks including the “piryn” element. Although ASPIRIN trade mark has been applied to register in Poland in 1958, but for many years products bearing this sign were not available on the market in general, only in Pewex and Baltona shops – these two types of shops operated in the communist Poland selling otherwise unobtainable Western goods in exchange for Western currencies. Polpharma provided a whole series of trade marks that include “piryna” element – a well-known word mark POLPIRYNA R-48888 protected since 1969, and available on the Polish market since 1955, word trade mark POLOPIRYNA C R-55084 protected since 1976, the word trade mark CALCIPIRYNA R-96016 protected since 1994 and the word trade mark Etopiryna R-59876 protected since 1983.

The Polish Patent Office did not agree with Bayer’s arguments and dismissed the invalidation request in its decision of 3 February 2009, case file Sp. 564/07.