On 23 March 2002, “Sery ICC” Company from Paslek applied for trade mark protection for a form of plain package Z-248526 that preserves the cheese, in classes 2, 29 and 40 for goods such as dietary food for therapeutic purposes, baby food, milk and milk products, cheese, butter, margarine, milk processing and product cheeses.

The Polish Patent Office (PPO) acknowledged that such packaging is not suitable to distinguish any goods of one undertaking from the another, especially yellow cheese. According to the PPO, a shape of the package in the form of a rectangle, with slightly rounded sides in black, is nothing special in the cheese industry. The PPO noted that such packages are available on the Belgian market and refused to grant protection for the 3D sign. The Polish Patent Office has ruled on lack of distinctiveness. According to the PPO, a plain shape of the package in black, without any additional elements will not help the average consumer to identify a product with a particular manufacturer, or in particular, with a company with Paslek. “Sery ICC” has also applied for another 3D mark – black packaging with a label “Ser Staropolski” and the protection right was granted by the PPO, R-166989.

The PPO reiterated that a sign must be assessed in its entirety (the shape and color) and ICC’s first application did not meet the requirements of distinctiveness which also means that it has not any distinguishing characteristics and it cannot be used to indicate the origin of the goods properly.

“Sery ICC” appealed against the PPO’s decision. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 30 July 2008, case file VI SA/Wa 401/08 has noted serious errors in the decision and ruled it void. In the application proceedings before the PPO in the case of refusal to grant the protection right, an applicant may request a re-hearing of the matter by the PPO. And the second decision may be appealed before the VAC. In accordance with article 245(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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, the Office must decide whether to grant protection or to refuse to do so. This is the most important and missing part in the contested decision. The VAC did not assess whether such a mark can obtain protection or not. Once the judgment is final and binding, the case will return to the Polish Patent Office for re-hearing.

Categories: Art. 245 IPL | distinctive character | Polish Act on Industrial Property Law | trademark law | Voivodeship Administrative Court.