Trade mark law, case VI SA/Wa 2376/08

August 28th, 2009, Tomasz Rychlicki

On 21 February 2004, Wolny Związek Zawodowy Kierowców Rzeczpospolitej Polskiej (Free Trade Union of Drivers of the Republic of Poland) from Warszawa applied to register the word-figurative trade mark WOLNY ZWIĄZEK ZAWODOWY KIEROWCÓW in classes 4, 12, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

In a letter dated 30 August 2006, the Polish Patent Office informed the applicant that, under article 131(2)(ii) and article 145 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, it can not be granted the right of protection for the applied sign.

Article 131
2. A right of protection shall not be granted for a sign, if:
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,
Article 145
1. Subject to paragraph (2), where the Patent Office finds that the statutory requirements for the grant of a right of protection for a trademark have not been satisfied, it shall make a decision on refusal to grant the right.

2. Before the decision referred to in paragraph (1) is made, the Patent Office shall fix a time limit, within which the applicant is invited to react on the collected evidences and documents which imply the existence of grounds that may cause the right of protection to be denied.

The PPO pointed out that the mark contains a white eagle, which is protected based on the provisions of the Act on Coat of Arms, Colours and Anthem of the Republic of Poland (in Polish: ustawa o godle, barwach i hymnie Rzeczypospolitej Polskiej) of 31 January 1980, published in Journal of Laws (Dziennik Ustaw) No. 7, item 18, with later amendments.

In response to the objections raised by the Polish Patent Office, the applicant in a letter dated 11 September 2006, disagreed with the PPO’s assessment and claimed that the drawing of a bird included in the trade mark recalls an eagle, but it is a completely different bird to that depicted in the emblem of the Republic of Poland. WZZK pointed out the different colour of a bird, the colouring of his crown and claws, and the differences in the background. WZZK also noted that the mark includes the inscription “Wolny Związek Zawodowy Kierowców” (Free Trade Union of Drivers).

The Polish Patent Office in its decision of 22 June 2007 refused to grant a right of protection for the applied trademark. In a letter dated 23 July 2007 WZZK requested a retrial, calling for the reversal of the contested decision. In its decision of 19 September 2008, case file DT265/07, the Polish Patent Office upheld the contested decision of 22 June 2007. The PPO pointed out, that the provisions of article 131(2)(ii) of the IPL meet a double function. It is one of the provisions to guarantee the state, its bodies and institutions a monopoly on the use of state symbols. These symbols have a specific role in business transactions and are intended solely for the identification of specific nationals’ bodies or institutions, or documents derived or issued by them. Moreover, this provision assures the average consumer that the national symbols are used by the authorized institutions of the Polish state. The PPO also cited article 16(2) of the Act on Coat of Arms, Colours and Anthem of the Republic of Poland, according to which, it is permitted to place on goods intended for trading the emblem of the Republic of Poland or the colours in a stylized or artistically prepared form, but the PPO also said that these provision only authorize for the placement and they do not allow to grant the right of protection. WZZK filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw.

The Voivodeship Administrative Court in its a judgment of 6 March 2009 case file VI SA/Wa 2376/08 dismissed the complaint and ruled that pursuant to article 28 of the Constitution of the Republic of Poland, the emblem, colours and the national anthem of the Republic of Polish are protected by law and details regarding these symbols are provided in the Act on Coat of Arms, Colours and Anthem of the Republic of Poland. Article 1(1)(2) and (3) of this Act provides that the white eagle, white-red color and “Mazurek Dąbrowskiego” are the symbols of the Republic of Poland. The right and the duty of every citizen of the Republic of Poland and all state organs, institutions and organizations is to respect these symbols. These symbols remain under special protection provided in different regulations. The provision included in article 131(2)(ii) of the IPL excludes the possibility to grant the right of protection for the sign, not only when it contains an exact reproduction of the image of an eagle as provided in the Annex 1 to the Act on Coat of Arms, Colours and Anthem of the Republic of Poland but also when a sign contains a drawing of an eagle as described in article 2(1) of the Act.

The coat of arms of the Republic of Poland is the image of a white eagle with a gold crown on his head turned right, with unfolded wings and gold beak and claws, on a red field.

This provision allows for the registration of a trade mark which contains, among others the emblem, only in one case – the applicant has to prove to have the right to use such trade mark in trade. It was undisputed for the Court that the applicant had no such right. And for all readers interested in these issues I would like to recommend reading Grzegorz Pacek’s article entitled Marks as imitations of State emblems ‘from a heraldic point of view’ that was recently published in the Journal of Intellectual Property Law & Practice, Volume 4, Number 9, September 2009.

The rest of the story is described in the post entitled “Trade mark law, case II GSK 555/09“.