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.


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.