Trade mark law, case VI SA/Wa 635/07

October 27th, 2010, Tomasz Rychlicki

Okręgowa Spółdzielnia Mleczarska from Nowy Sącz requested the Polish Patent Office to disclose a copy of the Rules of the use of word trade mark bryndza Z–248134. Bryndza is a sheep milk cheese produced in Poland and other Eastern European countries. OSM from Nowy Sącz is also a producer of that type of cheese. In 2003, OSM applied for the right of protection for word-figurative trade mark TERMIZOWANA Bryndza sądecka Z-259477 and argued that the copy of Rules is required to analyze whether OSM may use the name bryndza for its product. The word trade mark bryndza Z-248134 was applied for by Regionalny Związek Hodowców Owiec i Kóz (Regional Union of Sheep and Goat Breeders) from Nowy Targ, as the collective guarantee trademark. Such trade mark can be registered for any organisation enjoying the status of legal entity, which itself refrains from using the trade mark, but undertakings being members of such organisation may use this trade mark if they follow the Rules laid down in the regulations governing use of trade marks adopted by the entitled organisation and are liable to control by that organisation to this extent. A holder of the right of protection for a collective guarantee trademark may not, without important reasons, deny the undertakings, which meet the conditions specified in the Rules, the right to use that trademark.

The PPO refused to disclose the Rules, because at that time, the case was under examination and at this stage of proceedings, all trade mark application’s files can be shared only with the consent of the applicant. OSM filed a complaint against the PPO. The Voivodeship Administrative Court in Warsaw ordered the PPO to reconsider the case. After rehearing, the PPO refused to disclose the Rules and decided that the OSM did not have legal interest (locus standi) in requesting the access.

The Voivodeship Administrative Court in Warsaw in its judgment of 26 June 2007 case file VI SA/Wa 635/07 ruled that the PPO is obliged to disclose the Rules, because OSM posses legal interest in this particular case. The Court noted that OSM is producing a food product with defined parameters bearing the name “bryndza”. The text of the Rules determines whether OSM will be able to continue and freely conduct its business activities in part on the production of sheep cheese. Or – on the contrary – without complying with the Rules will be infringing the trade mark.