Trade mark law, case VI SA/Wa 1033/09

January 19th, 2010, Tomasz Rychlicki

EMO-FARM Spółka z o.o., the owner of “A sio !” R-173579 trade mark filed the opposition to a final decision of the Polish Patent Office on the grant of a right of protection to SI R-184885 trade mark applied for by Przedsiębiorstwo Farmaceutyczne ZIOŁOLEK sp. z o.o. The dispute between these two companies concerned inter alia the issue of trade mark use.The Voivodeship Administrative Court (VAC) in a judgment of 9 October 2009, case file VI SA/Wa 1033/09 provided the interpretation of adequate provisions 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

The Court ruled that under the conditions set in the IPL, the trade mark use occurs when it is real, which means that the sign is used for goods and it is used in business transactions in a manner that enables the creation and persistence of the association between the sign and the product, it is unambiguous, which means as the trade mark use, at least in its primary function, i.e., to distinguish goods of the entitled person on the basis of their origin and it is used according to specialization. These abovementioned conditions must be met together, irrespectively of the form of the trade mark use. Their sum is beyond the pale of article 154 of the IPL which contains only a list of examples of trade mark use:

The use of a trademark shall, in particular, consist of:
(i) affixing the trademark to the goods covered by the right of protection or to the packaging thereof, offering and putting the goods on the market, importing or exporting thereof, or their storing for the purpose of offering and putting on the market, as well as offering or providing services under that trademark,
(ii) using the trademark on business documents handled in putting the goods on the market or in rendering services,
(iii) using the trademark in advertising.

This judgment is not yet final. The parties may file a cassation complaint to the Supreme Administrative Court.