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.