Procedural law, case VI SA/Wa 2094/06

February 27th, 2010, Tomasz Rychlicki

The Polish company BI-ES sp. z o.o., the owner of the word-figurative trade mark BI-ES R-137322, requested the Polish Patent Office to invalidate the right of protection for the word trade mark BI-KOR R-151731 registered for BIKOR Elżbieta Korbutt. for goods in Class 3 such as cosmetics, in Class 5 such as pharmaceutical preparations for cosmetic purposes, and in Class 41 for services such as organizing and conducting cosmetic and make-up exhibition for contests and educational purposes.


BI-ES noted that its trade mark was registered with the earlier priority for the wide spectrum of goods in Class 3 such as perfumery products, perfumes, toilet waters, perfumed sprays, colognes, essential oils and others. The Company claimed that both trade marks are very similar and BIKOR used the idea to separate of the first syllable BI from the second segment with a dash.

BIKOR argued that its sign was present on the marker much earlier than BI-ES. This sign has been applied to the Polish Patent Office in March 1995, four years before the trade mark BI-ES, but this application failed due to temporary financial difficulties.

The Polish Patent Office dismissed the request and ruled that both trade marks differ in all three aspects. The PPO noted that it would be hard to prove that there was imitation on the notation of both signs, becasue there were many registrations of marks with a dash. BI-ES filed a complaint against this decision. The Company argued that BIKOR was not represented properly, becasue the PoA has not been signed by Elżbieta Korbutt. The signature was partially illegible. Admission of a case where the party was represented by a patent attorney without proper PoA is a flagrant violation of the procedural rules and the decision resulting from that proceedings should be annulled because it was rendered as a result of defectively performed administrative proceedings.

The Voivodeship Administrative Court in its judgment of 7 February 2007 case file VI SA/Wa 2094/06 dismissed it. The Court ruled that the PPO did not correctly examine the similarity of signs based on the etymology of BI- prefix, however, the whole assesment proved that both signs are disimilar. The VAC noted that the power of attorney should be given in writing and attached to the case file when making the first legal action. The Court found that the copy of PoA was on the case file and it was issued under the authority and properly signed next to the stamp of a company. The original PoA was on file for the trade mark BI-KOR R-151731. The power of attorney was not challenged in the course of the invalidation proceedings, by the trade mark owner or the opponent.