Archive for: May, 2009

Trade mark law, case II GSK 896/08

May 31st, 2009, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 28 April 2009 case file II GSK 896/08 held that the question of similarity or dissimilarity of trade marks does not belong to the realm of substantive law, but is decided based on the regulations on administrative proceedings, because it involves questions of the facts, not law. From the viewpoint of the risk misleading the customer to confusion as to the origin of the goods, in principle, the whole sign, not its individual elements are examined.

R-164202

The Court ruled that during the proceedings in this case the company was trying to protect its trade mark “VANILA FASHION Izabella Kowalska” R-164202 based on the provision of Article 132(2)(ii) and not Article 132(2)(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 trademark shall not be granted, if the trademark:
(ii) is identical or similar to a trademark 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,
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.

The Court noted that the protection afforded to in Article 132(2)(ii) of the IPL is weaker in comparison to a renown mark.

Trade mark law, case II GSK 31/06

May 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 8 April 2009 case file VI SA/Wa 2258/08 anulled the Polish Patent Office’s decision from 2007 and ordered the PPO to reconsider the invalidation of the brothers’ Miś trade mark. The Court ruled that a company name (the firm) serves to identify and to individualize an entrepreneur in legal and business market turnover, containing information about the characteristics and attributes of someone’s business. The finding that there was an infringement of these elements determines the recognition that there was an infringement of the law. However, infringement cannot be determined by the trade mark registration (even the later one) that was similar to the company name.

The Supreme Administrative Court in its judgment of 6 October 2008 case file II GSK 406/08 ordered the VAC to reconsider the case. See “Trade mark law, case II GSK 406/08“.

As the Supreme Administrative Court ruled in its judgment of 26 April 2006 case file II GSK 31/06, the exclusive rights to the “firm” (company name) are not absolute, and the limits of its extent are set by the territory a firm operates, the subject of actual business activities of the company that is using given firm. In fact, only within these limits a conflict between similar company name (the firm) and trade mark may occur. The Court, citing the earlier judgment of the Voivodeship Administrative Court in Warsaw of case file 6 II SA 2757/02, ruled that the PPO had to consider if the registration of a disputed trade mark prevents other market participants from use a sign which has a purely informational meaning.

Tax law, case I SA/Op 239/08

May 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Opole in its judgment of 4 March 2009, case file I SA/Op 239/08 ruled that when performing commercial transactions over the Internet in an organized and continuous manner, the taxpayer shall register such business and pay the taxes by virtue of performing such activity. Conducting a business with the use of internet networks is associated with the same tax obligations as operating business in the traditional manner, which includes, in particular the pursuit of tax revenue and expenditure accounts in such a way as to determine the income (loss), the tax base and amount of tax due for the fiscal/tax year.

Trade mark law, case II GSK 764/08

May 22nd, 2009, Tomasz Rychlicki

In March 2007 the Polish Patent Office issued a decision invalidating the right of protection for the trade mark OFF THE LIP R-153658 owned by Polish company PREMIERE Spólka z o.o. from Chorzów, registered for goods in classes 18 and 25. The request for invalidation was brought before the PPO by German entrepreneur Kurt Wendler-Rothenberger, who owned two German trade mark registrations for OFF THE LIP RN-1120143 and RN-2015151. The request was based on article 8(i) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments:

A trade mark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;
Mr. Wendler-Rothenberger claimed that he had business relationships with the Polish company in the period from 1992 to 1996. In PPO’s opinion it had been proved that Polish company was fully aware of the fact that OFF THE LIP sign belongs to another entity, and such action of submitting someone’s else trade mark for registration in the Republic of Poland was contrary to the principles of good conduct in trade.

The Polish company brought a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 24 January 2008, act signature VI SA/Wa 1394/07 dismissed it, and ruled that all procedural matters have been sufficiently and thoroughly investigated and determined by the Polish Patent Office. The Court acknowledged that, from the beginning, the Polish company knew that OFF THE LIP sign was somebody else’s property — that of its contractor and business partner. In the court’s assessment it was a classic example of bad faith, since PREMIERE was aware that it does not have the right to this sign and even if it could not be aware – it should have known about that.

PREMIERE Sp. z o.o. filed a cassation complaint. The Supreme Administrative Court in its judgment of 12 March 2009 case file II GSK 764/08 rejected the complaint and ruled that the provision of article 8(1) of the TMA provides an independent and sufficient condition for the inadmissibility of the registration of a sign, and it’s in any way unrelated to the exclusive protection of marks registered and benefiting from protection in a given country. The SAC clearly held that filing a trade mark application of someone else’s sign when a special relationship of trust existed between parties of a contract, is a classic example of behaviour contrary to the principles of social coexistence.

Tax law, case ILPB2/415-679/08-2/AJ

May 21st, 2009, Tomasz Rychlicki

Polish citizen bought domain names under which she has established website where the company from United States placed some ads. The owner of the mentioned website receives payments from the US company via PayPal or bank account several times a year. She does not have any invoices or bills. She is not an entrepreneur nor she is providing any online advertising business. The Polish newspaper Rzeczpospolita published an article titled “Jaki PIT od wynajęcia internetowej witryny pod reklamy“, which loosely translates as “What tax for renting website for online advertising” with a question, how and where should such person pay taxes.

According to interpretations issued by the Tax Chamber in Poznań of 13 January 2009 (ILPB2/415-679/08-2/AJ) and the interpretation by the Tax Chamber in Bydgoszcz of 17 March 2008 (ITPB1/415-797/07/PS), the income which is derived from activities performed “in person” for the US company, should be taxed only in the Republic of Poland.

Trade mark law, case Sp. 424/06

May 10th, 2009, Tomasz Rychlicki

On 28 February 2005, the Polish Patent Office issued a positive decision and registered the word-figurative trade mark METAL-CHEM R-162449 in Class 6 for goods such as steel, in Class 7 for goods such as machinery and equipment for special treatment, technological lines for waste treatment as well as the teams line and accessories, machinery and equipment for the production of cobblestones, bricks and masonry, welders for pipes, in class 11 for electric heaters and in Class 40 for production of special machines, mechanical and thermal processing, casting of non-ferrous metal. It was applied for on 24 September 2001 by the Polish company Zaklad Urzadzen Metalowych “METAL-CHEM” Sp. j. A. Pochec, L. Szymanski, M. Aplas from Rudki.

R-162449

Another Polish company, Instytut Inzynierii Materialów Polimerowych i Barwników (the Institute for Engineering of Polymer Materials and Dies), from Torun filed a request to invalidate the right of protection. The request was based on 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.

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

Article 131(1)(i)
Rights of protection shall not be granted for signs:
(i) whose use infringes third parties’ personal or economic rights,

Article 132(2)(i) and (iii),
A right of protection for a trade mark shall not be granted, if the trade mark:
(i) is identical to a trade mark registered or applied for registration with an earlier priority date (provided that the latter is subsequently registered) on behalf of another party for identical goods,
(iii) is identical or similar to a renowned trade mark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trade mark. The above provision shall apply to well-known trade marks accordingly.

The company from Toruń presented its trade mark METALCHEM R-51184 registered with an earlier priority on 12 April 1973. This trade mark was applied for on 15 May 1972, for goods in Class 6, 7, 9, 20 such as worm pumps, pumps, vertical and horizontal rotational pumps for aggressive liquids, valves, clamps, agitators, mixers, pressure-type apparatus made of stainless steel and carbon steel, containers for transporting granular substances, containers and tanks of plastics.

The PPO has invalidated METAL-CHEM trade mark in its decision of 29 January 2009 case act signature Sp. 424/06. The Adjudicative Board of the PPO has taken into account only arguments based on article 132(2)(ii) of the IPL. The Board acknowledged that METALCHEM trade mark has distinctive character and is successfully used at the market. As regards arguments based on article 132(2)(i), the Board held that both signs are identical, the separate spelling is not a significant argument and the goods are similar and complementary. The reputation has not been proven by the company from Toruń so the motion based on article 132(2)(iii) of the IPL was dismissed. The decision is not final.

Advertising of pharmaceuticals, case II CSK 289/07

May 7th, 2009, Tomasz Rychlicki

This case is a little bit old but I think it’s really worth mentioning to P.T. readers. The Supreme Court of the Republic of Poland decided a case regarding misleading advertising of pharmacetical products. The Court in its judgment of 2 October 2007, case act signature II CSK 289/07 ruled that assessment whether advertising can be deemed as misleading should refer to the model of the average recipient of this kind of advertising – the consumer of advertised products or services.

In this case, it was the average consumer of pharmaceuticals, to which advertising newspapers and leaflets were directed. As the Supreme Court noted in its judgment of 3 December 2003, case act signature I CK 358/02, the model of the average consumer, who is reasonably well informed and reasonably observant and circumspect, is now used widely adopted in the Republic of Poland as it is in the European Union.

However, the model of an average consumer could not be defined and considered in isolation from the conditions of this specific case and the realities concerning recipients of specific products to which the advertising is directed. Therefore, one could not ignore the fact that such consumers are often very ill persons, often with reduced capacity of perception and limited ability of reasonable and critical evaluation, as well as they are often elderly, which is also a significant group of consumers of medicines. These are typically the person more susceptible to suggestion and less critical. These people are targeted by pharmaceutical advertising and, while assessing the possibility of confusion, the characteristics of this kind of audience should be taken into account as a model of the average consumer.

Trade mark law, case II GSK 503/08

May 6th, 2009, Tomasz Rychlicki

The Polish company Gemi from Karczew filed before the Polish Patent Office a request for invalidation of the right of protection for the trade mark PLANTAGINIS R-105263. The Supreme Administrative Court in its judgment of 20 November 2008 case file II GSK 503/08 ruled that it is usually assumed that legitimate interest is the normative category of the substantive law and its source is the substantive law. On this basis the party of an administrative proceedings is entitled to request to specify his or her powers and duties or require an administrative court or body to perform an examination of a legal act or acts in order to protect him or her against violations that was made by this legal act or acts and to lead to a situation that it is consistent with the law. The legitimate interest may also derive from legal norms not only belonging to the administrative law. The confirmation of legitimate interest is always due to the likely connection between the norm of the substantive law and the situation of legal entity to the effect that the act of application of this legal norm (eg, an administrative decision) may affect the legal position of this entity in the field of the substantive law. The SAC also agreed with the opinion of academics that there aren’t any universal definition of a legitimate interest in the field of industrial property law that would include complex situations to justify the submission of the request for invalidation of an exclusive right. The Court noted that the case law indicates the provisions of Article 20 of the Constitution of the Republic of Poland of 2nd April 1997 as published in Dziennik Ustaw (Journal of Laws) No. 78, item 483.

A social market economy, based on the freedom of economic activity, private ownership, and solidarity, dialogue and cooperation between social partners, shall be the basis of the economic system of the Republic of Poland.

The Court also pointed out to Article 6(1) of the Act on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej) corresponding to the content of Article 5 of the Act of 19 November 1999 on Law of Economic Activity (in Polish: Prawo dzialalnosci gospodarczej), published in Dziennik Ustaw (Journal of Laws) No. 101, item 1178, as amended.

The assumption, conduct and termination of economic activity shall be free to all on an equal-rights basis, subject to conditions determined in provisions of law.
2. The public administration authority shall neither demand nor make its decision in the matter of the assumption, conduct, or termination of economic activity by an interested party conditional upon satisfaction by this party of additional conditions, including without limitation on the submission of documents or disclosure of information other than that set out in provisions of law.

These are the basis for deriving the legitimate interest for the party seeking for the standing in the proceedings for the lapse or invalidation of a right of protection for a trade mark. When deriving the legitimate interest from the aforementioned legal regulations in case of the invalidation proceedings of a trade mark it is necessary to demonstrate why and how the right of protection for the trade mark PLANTAGINIS R-105263 affect on the legal position of Gemi Company as an entrepreneur. Each entrepreneur has the right to a trademark if the right is not in conflict as to the form, and the period of validity of the previously acquired trade mark right of the same sign. It was necessary to demonstrate that the GEMI’s legitimate interest is relevant to its legal position, because it is current, real, direct and their own (these are the most common elements and features of the legitimate interest), such as verifiability of the legitimate interests and the possibility of obtaining specific benefits. In such cases it concerns the so-called “reflections right” which is creating the legal position of a party not directly, but by a decision of the Polish Patent Office which is “taking back” a right of protection for an earlier trade mark granted to another company.

The SAC dismissed the cassation complaint because it has found that GEMI company did not file its request for invalidation of the right of protection for the trade mark PLANTAGINIS R-105263 in order to obtain the right of protection for the disputed mark for its own. It also did not demonstrate the existence of any obstacles to conduct its business during the sale of goods marked with the disputed trade mark.