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.