Trade mark law, case II GSK 156/09

December 12th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 16 October 2008 case file VI SA/Wa 927/08 dismissed the complaint against the decision of the Polish Patent Office on the refusal to decide on the lapse of the right of protection of GAP R-171132 and GAP R-171135 trade mark owned by GAP (ITM) INC. Przedsiębiorstwo Prywatne GAPPOL Marzena Porczyńska who was the applicant in the case before the PPO, filed a cassation complaint against this decision.

The Supreme Administrative Court in its judgment of 15 October 2009 case file II GSK 156/09 dismissed the compliant and held that pursuant to Article 315(1) of the IPL, the provisions of the old Trade Marks ACT are used to assess the effects of legal events occurring during their validity, while the effects of legal events that occurred after 22 August 2001, should be assessed under the provisions of the IPL, also when they related to the existing rights. To assess the effects of the expiry of the period/deadline that was required for recognizing the request to decide on the lapse of the right of protection as effective – if such a request was made after 22 August 2001, the provisions of the IPL should be used.

The Court held that in favor to adopt the date of issuance of the decision granting a right of protection as the starting point of the five-year period referred to in Article 169(1)(i) of the IPL, speaks the literal interpretation of this provision.

Article 169
1. The right of protection for a trademark shall also lapse:
(i) on failure to put to genuine use of the registered trademark 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.

The SAC reached such conclusions because the “registered trademark” as referred to in this article, appears only after the decision in the matter was issued, and not on the date of filing a trade mark application.