Trade mark law, case II GSK 708/08

June 26th, 2009, Tomasz Rychlicki

On June 2007, the Polish Patent Office issued a decision in which it has invalidated the right of protection for the word-figurative trade mark Lech-Pol R-132854 that was registered with the priority date of 1998 for goods in Class 33 and owned by Mariusz Lech Przedsiebiorstwo Produkcyjno-Handlowo-Uslugowe LECH-POL from Lask. The right of protection was invalidated in part for alcoholic beverages except for wine. The request was filed by the Polish company Fabryka Wódek POLMOS LAŃCUT S.A. from Lańcut. The company from Lańcut proved that it had a legitimate interest to have standing in proceedings before the Polish Patent Office, based on the fact that on May 2005 Mariusz Lech filed before the PPO a request to invalidate the right of protection for the trade mark lech wódka R-145285.

According to Polmos Lancut’s arguments, Mariusz Lech used the disputed trade mark only for products such as strong fruit wines. He was not imposing this sign on all other alcoholic beverages in Class 33. Mariusz Lech argued that, since mid-2001, he began efforts to start the production of vodka under the disputed trade mark. As a potential market for these articles he considered the teritory of Ukraine and the Republic of Poland. With this end in view, a design of bottles bearing these trade marks and labels were made. There were also discussions on the distribution of alcohol in Ukraine. However, with regard to the obstacles, the plan was not realized.

The PPO ruled that simply taking the preparatory steps which had no connection with a valid reason that could prevent the use of a trade mark, does not constitute the grounds for dismissal of a request for invalidation of the right of protection.

Mariusz Lech filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 5 February 2008 case file VI SA/Wa 2019/07 dismissed it. Mariusz Lech filed a cassation compalint. The Supreme Administrative Court in its judgment of 16 April 2009 case file II GSK 708/08 dismissed it.

See also “Trade mark law, case VI SA/Wa 1042/08” with regard to issues of non-use and genuine use.