Trade mark law, case VI SA/Wa 1483/08

June 23rd, 2009, Tomasz Rychlicki

On September 2006, the Polish Patent Office issued a decision invalidating the right of protection of the BOSS LIGHTS R-136520 trade mark, owned by Reemtsma Cigarettenfabriken GmbH from Hamburg, Germany. The PPO ruled that the registration of the disputed mark occurred in violation of article 8(2) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Journal of Laws (Dziennik Ustaw) of 1985 No 5, itme 15, with later amendments.

A trade mark shall not be registrable if:
ii) it infringes the personal or economic rights of third parties

It was indisputable for the PPO that BOSS LIGHTS R-136520 consists of the “BOSS” sign, which was written in black, this being the only element of BOSS R-66417 trade mark and the main element of other signs: HUGO BOSS R-66418, BOSS HUGO BOSS IR-584899 and BOSS IR-606620 which are owned by HUGO BOSS Trade Mark Management GmbH & Co. KG from Metzingen, Germany.

Reemtsma filed a complaint before the Voivodeship Administrative Court (VAC) in Warsaw. The court rejected the complaint in its judgment of 4 September 2007, case file VI SA/WA 2195/06. Reemtsma filed a cassation complaint to the Supreme Administrative Court. The SAC agreed with Reemtsma’s arguments that the PPO did not explain the facts accurately and did not thoroughly conside the entire evidence. The case was sent back to the VAC. See “Trade mark law, case II GSK 506/07

The Voivodeship Administrative Court in its judgment of 6 February 2009, case file VI SA/Wa 1483/08 annulled the contested decision of the PPO and decided that the decision was not subject to execution. The VAC also stressed the fact that it is necessary to distinguish the renown of an entrepreneur – its good reputation and positive image – from the trade mark’s reputation (renown). In the case of the reputation (renown) of a trade mark – the subject of positive perceptions is the mark itself and the goods identified by such mark as originating from a particular business, and the reputation of the entrepreneur is generally positive perceptions and assessments about the business.

The case went back to the PPO. However, the Polish Patent Office in its decision of 15 October 2010 case Sp. 255/09 invalidated the right of protection for the BOSS LIGHTS R-136520 trade mark. This time, the PPO found that the trade mark in question is confusingly similar to BOSS HUGO BOSS IR-584899 and BOSS IR-606620 trade marks, and these findings were justified by the literal interpretation of the provisions of Article 9(1)(iii) of the TMA.