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.