Trade mark law, case VI SA/Wa 785/10

January 4th, 2011, Tomasz Rychlicki

Unilever N.V., the owner of the word trade mark SOLERO IR-0622723 and the word-figurative trade mark SOLERO IR-0628636, has requested the Polish Patent Office to invalidate the right of protection for the trade mark SOLEY R-129356 owned by the Polish company Maria Ziębińska, Stanisław Ziębiński “ICE MASTRY” sp. j. from Czaniec. Unilever claimed that the questioned sign is similar to its earlier registered well-known trade marks and that the Polish company acted in bad faith while applying for the right of protection because in 1997-2001, Unilever and ICE MASTRY were involved in two civil suits (case files V GC 252/97 and V GC 217/98) that have ended in a settlement in which the Polish company commited to discontinue use of the signs SOLER, Soller and SOLLEI. The PPO invalidated the right of protection. ICE MASTRY filed a complaint against this decision.


The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2010 case file VI SA/Wa 785/10 held that the date of application for registration under Article 11 of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, determines the priority of the right of protection associated with the applied sign (prior tempore potior jure). These provisions still apply in cases where the trade mark has been applied for registration when the old Act was in force. Thus, by this date all subjective and objective issues related to the right applied for protection must also be assessed, in particular,and whether the applicant has the right to the sign.

Article 11.
Subject to Article 12, priority for obtaining the right deriving from registration of a trademark shall be determined on the basis of its regular filing for registration with the Patent Office.

The Court also noted that the TMA, as well as the new Polish Act on Industrial Property Law, does not include a provision that would regulate differently the question of the trade mark application, in relation to its subjective and objective elements and that would take into account as authoritative another, later, point in time. Moreover,the adoption at of a later date to assess the qualifications of the applicant, not only would provide an option for revalidation of trade mark applications that were filed in contradiction with the law, or principles of social coexistence (in bad faith), but may also violate other laws. The filing date of an application for the registration of a trade mark should be taken into account when assessing whether the applicant has acted in bad faith, not the date of trade mark registration. The judgment is not final yet.