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Archive for: July, 2009

Trade mark law, case II GSK 905/08

July 28th, 2009, Tomasz Rychlicki

On June 2006, the Polish Patent Office refused to grant the right of protection for a 3D trade mark Z-255004, that was applied for in September 2002 by Polish company “BARTEX – Bartol” Spólka jawna from Paproc. The reason was that the applied sign was similar to 3D trade mark IR-676508, registered under the Madrid Agreement with a priority of April 1997 for Bacardi & Company Limited for goods in class 33, such as alcoholic beverages.

Z-255004

In October 2007, after re-hearing the case, the PPO upheld its decision of June 2006 on the grounds that the assessment of similarity between both signs should be based on the overall impression both marks have on the consumer.

According to the PPO the distinguishing strength of the disputed signs should be taken into account, including its distinctive and dominant components. As usual, both trade marks should be compared in three aspects: visual, aural and conceptual. The PPO deemed both marks as “weak trade marks”. However, the PPO also noted that the 3D trade mark owned by Baccardi posses some features that are not common and are not reproduced in other 3D forms of bottles. The most distinctive element is the characteristic cut on both sides of the bottle. Along with all the rest it gives a unique shape to the bottle. Thus, in the assessment made by the PPO, the earlier trade mark as a whole had the distinctive character which allowed the PPO to issue a positive decision on the recognition on the territory of the Republic of Poland of the protection for the international trademark.

IR-676508

While deciding on the application made by the Polish Company, the PPO came to the conclusion that the differences between disputed trade marks are not so noticeable and the risk of confusion by the average consumer of such goods is significant.

As regards the Polish company’s argument that it should be taken into account the fact that alcohol is almost always sold in the bottle that has a label, the PPO said that it is possible to imagine a situation that the applied trade mark will have in the future a label which is an imitation of an earlier trade mark. The Polish Patent Ooffice pointed out that, if looked at the specific conditions of trade it should take into account the way in which the applicant puts its goods on the market. Some information regarding this issue were presented in the observations filed by Bacardi on 26 August 2003 as to the existence of grounds that may cause a right of protection to be denied in connection with the application Z-255004. These materials proved that the Polish company markets products that are the imitation of alcohol produced Baccardi.

BARTEX – Bartol filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 28 April 2008, case file VI SA/Wa 126/08 ruled that while deciding whether the right of protection may be granted it must be determined whether a sign may serve as a trade mark at all. Only after having determined that a sign may be a trade mark it shall be examined whether such sign has sufficiently distinctive characteristics, to check out whether a sign is capable to distinguish on the market the specific goods for which it was applied for.

The VAC based its holding on article 129(1)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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 later amendments.

Article 129
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

The lack of distinctive character is an absolute obstacle to trade mark registration, however, characters devoid of this charateristics can acquire it as a result of use. The distinctive character of a trade mark is fitted with such features, which in the minds of consumers it clearly indicate that the goods identified by it come from the specific company. The court cited doctrinal approach to the distinctiveness of a trade mark (a book by professor Urszula Prominska entitled Prawo wlasnosci przemyslowej published by Difin, Warszawa 2005, edt. II, p. 211). The assessment of a distinctive character is the result of two quite different elements. On the one hand, the way/form a trade mark is presented must be “itself” so distinctive that it can identify the goods. On the other hand, it must provide the consumer with a possibility to choose goods based on that way/form without the necessity of determining the origin of goods indirectly (eg. when the consumer is forced to look at the product manufacturer’s name). In examining signs that cannot distinguish the goods, it should be noted that such sign does not posses any characteristics in its tructure thus such sign as a whole is devoid of a sufficient distinctive characteristics and it is not suitable for the identification of goods, and therefore is does not have the ability to distinguish its origin. This is a category of signs that emerged of its structural features (such as a form which is the representation of the product, its generic name, etc.). The court rejected the complaint.

The cassation complaint was rejected in the judgment of the Supreme Administrative Court of 13 May 2009, case file II GSK 905/08.

Trade mark law, I SA/Rz 249/09

July 24th, 2009, Tomasz Rychlicki

Financial issues relating to trade marks are not a frequent subject matter that is discussed on my website, therefore I decided to write a short post regarding that topic. The assembly of shareholders of a Polish company (spółka z ograniczoną odpowiedzialnością – a legal concept similar to the limited company), following a resolution, decided to increase the company’s share capital by the creation of new shares. The new shares were covered by the shareholders in the form of an enterprise (the enterprise as as a subject of rights). One of the components of the enterprise was a trade mark valued at 750,000 PLN (around 179,016,307 Euros). The trade mark was entered in the company’s books in 2000 and the company started depreciating this asset in 2001 based on the provisions of article 16b(1)(6) of the Polish Act of 15 February 1992 on the Legal Entities’ Income Tax – LEIT – (in Polish: Ustawa o podatku dochodowym od osób prawnych) consolidated text published in Journal of Laws (Dziennik Ustaw) of 2000, No. 54, item 654 with subsequent amendments.

The following intangible assets, acquired and fit for commercial use as at the date of acceptance for use, shall be depreciated, subject to Article 16c:
(6) rights to: inventions, patents, trade marks, designs;

This action was called into question by the Director of the Tax Office, who duly imposed tax (19,006 PLN for year 2002). The company appealed against this decision to the Director of the Tax Revenue Audit Office, but it was upheld. The findings made in the course of the investigation showed that, both in 2002 and in an earlier period of time, the sign in question had not been granted the right of protection, having been applied for at the Polish Patent Office on 8 November 2000.

The company filed a complaint to the Voivodeship Administrative Court (VAC) in Rzeszów. The VAC, in a judgment of 21 May 2009, case file I SA/Rz 249/09, ruled that provisions of the LEIT allow only for the depreciation of the registered trade mark, since mere priority (the right of priority) to obtain a right of protection for a trade mark is not the right which is explicitly mentioned in article 16(1) of the LEIT. The Court emphasized the fact that the acquisition of rights to a trade mark occurs within the system of constitutive registration, the law-creating nature of which is attributed to “an act of registration” made by the Polish Patent Office in the form of the administrative decision. The only exception to this rule is the acquisition of rights to well-known trade marks, the protection of which does not depend on the registration – but it was not the issue of this case.

Trade mark law, case II GSK 774/08

July 20th, 2009, Tomasz Rychlicki

In June 2005, Societe Des Produits Nestle S.A asked the Polish Patent Office to make a decision on the lapse of the right of protection for “3in 1″ R-90234 trade mark owned by “MOKATE” sp. z o.o. from Zory. The request was based on article 28(1) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments.

The right deriving from registration of a trade mark shall expire if the person entitled has not used the mark within a period of three consecutive years in the Republic of Poland.

The request was also based on article 169(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist,
(…)
2. In the cases referred to in paragraph (1), the Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.

The request was based on non-use of “3 in 1″ trade mark. Mokate filed a motion asking the PPO to reject Nestle’s request. The motion was based on the lack of legitimate interest on Nestle’s side. The PPO agreed with Mokate’s argument. Nestle filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 3 December 2007, act signture VI SA/Wa 1036/07 rejected Nestle’s complaint. The company filed a cassation complaint to the Supreme Administrative Court. The SAC in its judgment of 12 March 2009, act signature II GSK 774/08 held that conditions of legitimate interest are based on two levels — procedural — because it is justifying the initiation of administrative proceedings in a particular matter and “substantive”, as it results from the provisions of the law that apply to certain rights and obligations of a person (legal or natural). Although the substantive law is the source for the legitimate interest but the legal interest as a condition that justfies the initiation of the procedure for declaration on the lapse of the right of protection for the trademark is primarily a category of administrative procedure – one of the principles of this proceedings as to its proper initiation. The cassation complaint was rejected.

The SAC ruled also that it was uncontested that the First Council Directive left Member States free to establish procedural rules. The requirement of legitimate interest included in article 169(2) the IPL only entitles a party to initiate the administrative proceedings on the lapse of the right of protection for a trade mark, but does not guarantee such applicant that the PPO will issue a decision that is favourable to him, because the PPO shall issue a decision on the lapse of the trade mark rights if it finds the fulfilment of the substantial prerequisites to the lapse, and not the infringement of the legitimate interest. Since then the provision of article 169(2) are only applicable only to a right to file a request for a decision on the lapse of the right of protection for a trade mark for the reasons referred to in section 1 of article 169 being the substantial prerequisites, the requirement to demonstrate a legitimate interest can not be understood as an additional substantial prerequisite for deciding on the lapse of trade mark rights. Such assessment is not changed by the fact that, as the court already stated, the legitimate interest is the normative category of the substantive law.

In the Polish administrative law the legitimate interests requirement creates the concept of a proceedings party. This issue has been dealt similarly in the law of industrial property, including a prerequisite to request the Polish Patent Office to take a decision declaring the right of protection for the trade mark.

The legitimate interest prerequisite has two grounds – procedural because it justifies the initiation of the administrative proceedings in a particular case and substantive, because it results from the provisions of substantive law that apply to certain rights and obligations of an entity. Although a source of the legitimate interests lays in the substantive law, the legal interest as a condition requesting the PPO to issue a decision declaring on the lapse of the right of protection for the trade mark lapsed is primarily a category of administrative procedure – one of the principles of this proceeding as to its proper initiation.

The issues on legal interest are both regulated in the procedural law (including the administrative proceedings that apply to trade mark cases) and these are also the normative category of the substantive law. The source of the legal interest is the substantive law. If the source is the substantive law then the Directive should apply. However the SAC consistently refuses to refer this matter to the Court of Justice.

See also “Trade mark law, case II GSK 309/07“.

Trade mark law, cases VI SA/Wa 1996/08 and VI SA/Wa 1995/08

July 11th, 2009, Tomasz Rychlicki

On August 2008, in a post entitled “Trade mark law, case Sp. 127/07 and Sp. 254/07” I commented on two decisions of the Polish Patent Office regarding differences in labels for mineral water that shared the same word element “Zloty Potok” (“Golden stream”), this being also the name of a village from Gmina Lesna.

The vogt of Gmina Lesna and Zloty Potok Company did not agree with PPO’s findings and they lodged a complaint to the Voivodeship Administration Court in Warsaw arguing that Sokpol Company’s trade mark “Zloty Potok” R-177610 may lead consumers to confusion as regards the orgin of goods, that it was applied for in bad faith and it is unlawfully using the name of a village. The PPO argued that according to the Court of the First Instance’s findings in case , Peek & Cloppenburg KG v. OHIM (Cloppenburg), the registration of geographical names which are unknown to the relevant class of persons is not in principle precluded.

The Voivodeship Administrative Court in Warsaw dismissed both complaints in its judgments, case files VI SA/Wa 1996/08 and VI SA/Wa 1995/08. The VAC held that the disputed mark should be assessed as a whole, which in this case concerns a sign that is made up of figurative element and “Zloty Potok” description. In consequence, this trade mark is is fanciful sign which could not constitute the registration of a geographical or historical name. The sign does not mislead consumers because it does not contain information that the materials for the production of goods it was registered for come from Zloty Potok, but that they originate from Jura Krakowsko-Czestochowska. Thus the argument based on bad faith registration cannot be taken into account.

See also my posts entitled “Trade mark law, case 6 II SA 1156/02“, “Trade mark law, case II SA/Wr 2928/02” and “Trade mark law, case VI SA/Wa 1945/05“.

Categories: Art. 131(1)(iii) IPL | Art. 131(4) IPL | Art. 132(1)(i) IPL | geographical name as trade mark | Voivodeship Administrative Court.

Trade mark law, case II SA/Wr 2928/02

July 10th, 2009, Tomasz Rychlicki

On 10 October 2002, the city council of Polanica Zdrój passed resolutution no XLIV/247/02 on permission to use the commercial name of the city. The council agreed that the trade mark application consisting of “Polanica Zdrój” words would be applied on behalf of ZUK company. The resolution also included an attachment – a model contract which was deemed as an integral part of the resolution. The format of this agreement had the same legal nature as the resolution. The agreement set out, inter alia, the terms and conditions of use of the city name as a trade mark for mineral water, the rules for ZUK company regarding the payment to Gmina, the amount of the monthly fee – set to one grosz (a hundredth part of 1 złoty) – from a bottle of water sold, but not less than 5000 PLN per month, the rules how to change the contract, the method of settling disputes.

On 5 Nover 2002, the governor of a voivodeship (a first instance body to decide on the validity of local governments legal acts) ruled the resolution invalid. The governor decided that Polanica Zdrój was not the name of local government (gmina) but a geographical designation that is widely used in the Republic of Poland and abroad. Nouns and adjectives based on that geographical name are used without any restrictions. Reducing the use of a common name and its commercialization requires a proper law – an enactment. In the current legal system, there is no such law, therefore in other cities their names are used without restrictions.

Gmina filed a complaint to the Supreme Administrative Court arguing that, while filing an application for the registration of trade mark consisting of the geographical name of Polanica Zdrój, the company ZUK has a mandatory obligation to demonstrate the right to use the name. The Governor asked the court to reject the complaint because a geographical name is not the name of local government but the name commonly used and there is no legal basis for placing restrictions on its use, and what is linked to that – to charge fees for the use of a Polanica Zdrój name and that the name of a place can not be regarded as a trademark.

The Supreme Administrative Court (oz. Wroclaw) in its judgment of 18 March 2003, case file II SA/Wr 2928/02 ruled that there is no legal basis for the municipal council to take a resolution on the commercial use of the name of the city and to establish the level of fees charged for such use. The city council has exceeded the scope of its powers by setting a draft of a contract in its resolution and stepped into the powers of the mayor which is a body entitled and empowered to manage the city, and thus being the right party to enter into such contracts.

Categories: Art. 131(1)(iii) IPL | Art. 131(4) IPL | Art. 132(1)(i) IPL | geographical name as trade mark | Polish Supreme Administrative Court.

Polish case law on abusive clauses in B2C IT and IP contracts

July 8th, 2009, Tomasz Rychlicki

Below you will find a list of judgments and decisions on abusive clauses in B2C IT and IP contracts. You can find a more detailed discussion on each judgment or decision under the link provided with the case file. All judgments and decisions are given in chronological order.

- The judgment of the Polish Court of Competition and Consumer Protection of 27 February 2012, case file XVII AmA 192/10.

- The judgment of the Polish Court of Competition and Consumer Protection of 26 December 2006, case file XVII AmC 170/05.

- The judgment of the Supreme Court of 13 July 2006, case file III SZP 3/06.

Categories: consumer protection law | contract law | Polish Court of Competition and Consumer Protection | Polish Supreme Court.

Trade mark law, case I ACa 967/08

July 5th, 2009, Tomasz Rychlicki

The Appellate Court in Poznań in its judgmet of 28 January 2009, case file I ACa 967/08 held that after the introduction of goods bearing a trademark on the market, the right of protection is “exhausted”. This follows directly from the provisions of Article 155(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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 155
1. The right of protection for a trademark shall not extend to the acts in respect of the goods bearing that trademark consisting, in particular, of offering the goods or further putting on the market the goods bearing that trademark, where the said goods have earlier been put on the market on the territory of the Republic of Poland by the right holder or with his consent.
2. The right of protection for a trademark shall neither be considered infringed by an act of importation or other acts, referred to in paragraph (1), in respect of the goods bearing the trademark, if these goods have earlier been put on the market on the territory of the European Economic Area by the right holder or with his consent.

3. Paragraphs (1) and (2) shall not apply, where there exist legitimate reasons for the right holder to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

This means that further market participant has the right to use the trade mark for advertising and information purposes, as long as this does not mislead as to the existence of economic links between the trade mark owner and a person who uses such sign. See also “Trade mark law, case III CK 410/03“.

The Court also ruled that the “pauperization” of a word trade mark means its adoption to the colloquial speech, which involves changing its function from being the name the unit of goods to the description of the species or genus and by enlarging its description on items that are in no way connected with the person entitled to a trade mark. This is usually the result of the existence of the brand for a long time in large areas and of its high popularity and intensive advertising. Such a phenomenon does not limit the exclusive rights of a holder of a registered trade mark and per se does not authorize other entities to use a protected trade mark in their business.

Trade mark law, allusive signs

July 1st, 2009, Tomasz Rychlicki

An interesting example is BALSAM Z SADŁA ŚWISTAKA R-183603 trade mark. It should be translated as Balm of Marmot’s Fat. But still, in my ranking of allusive trade marks, the first place is given to the application filed by the Polish company Przedsiębiorstwo Produkcyjno-Handlowe “Paola” Spółka z o.o. z Bielan Wrocławskich for the sign “A to ci puszka” Z-233576, which in strict translation shall be undestood as “What a can” but in fact in a loosely translation can be understood as “What a cunt”. I just wonder what the examiner of the Polish Patent Office has thought about it.

Categories: absolute grounds for refusal | Polish Act on Industrial Property Law | Polish Patent Office | trade mark examination | trademark law.