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.

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.

Categories: Art. 132(2)(ii) IPL | Art. 132(2)(iii) IPL | Art. 141 §4 PBAC | Art. 145 PBAC | Art. 153 PBAC | famous trade marks | Polish Act on Industrial Property Law | Polish Act on Proceedings Before Administrative Courts | Polish Supreme Administrative Court | similarity of goods | similarity of signs | trade mark invalidation | trademark law.