Trade mark law, case II GSK 1500/12

January 31st, 2014, Tomasz Rychlicki

The German company Aldi Einkauf GmbH & Co. oHG filed before the Polish Patent Office a request to decide on the lapse of the right of protection for the word trade mark ELDENA R-111776 registered for Piotr Maciejec and Robert Hrebowicz for goods in Class 3 such as cosmetics, soaps, perfumery, deodorants, bath lotions. Aldi Einkauf interpreted its legal interest from the provisions of the Polish Constitution and the Polish Act on Freedom of Economic Activity (in Polish: ustawa o swobodzie dzialalnosci gospodarczej), and argued that the owners did not genuinely used their trade mark for 5 years. As the owner of the word CTM ELDENA No. 003430188, Aldi also noted that the owners of the Polish registration opposed the use of Aldi’s sign in Poland. Mr Maciejewiec and Hrebowicz questioned the legal interest of the applicant claiming that the Aldi has not registered its business in Poland. The company Aldi sp. z o.o. from Chorz√≥w was established and registered in the National Court Register (register of entrepreneurs) on January 2006, and the first stores were opened on 25 February 2008. Therefore, assuming that the company Aldi sp. z o.o. is kind of a representative of the applicant on the Polish territory, the beginning date to establish legal interest of Aldi Einkauf should be the start date of sale of the applicant’s products, as it happened on 25 February 2008. Mr Maciejewiec and Mr Hrebowicz deemed Aldi’s request as premature due to the fact that in the period from 14 January 2005 to 25 February 2008, the disputed right of protection did not restrict the applicant’s activities in Poland, and they decided not to discuss with the arguments on the lack of genuine use, nor to provide any evidence in this matter. Aldi Einkauf argued that it received a cease and desist letter from the owners of the questioned trade mark, and provided evidence that the Polish company Aldi sp. z o.o. is a licensee of the CTM ELDENA.

The Polish Patent Office decided on the lapse of the right of protection. The PPO ruled that Aldi Einkauf proved its legal interest to request for the lapse of the right of protection for the mark at issue, because this sign was a restriction on conduct of Aldis’s business, in which the Company intended to use the designation ELDENA. Aldi submitted the advertising prospect of Aldi’s stores in Poland from 2008, with the photos of a lotion and soaps marked with ELDENA sign, as the evidence of an intention to use the CTM No. 003430188 on the Polish market. The PPO ruled that Mr Maciejewiec and Mr Hrebowicz did not provide any evidence on genuine use of their trade mark. They decided to file a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 April 2012 case file VI SA/Wa 201/12 dismissed it. The Court ruled that the “collision” of two trade mark rights was sufficient to establish the existence of a legal interest to file a request for the lapse of the right of protection. In its essence, the legal interest (locus standi) lies in overlapping of legal spheres of two or more entities, in such a way that the right held by one entity interferes with the full enjoyment of the rights held by another entity.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1500/12 dismissed the cassation complaint filed by Mr Maciejewiec and Mr Hrebowicz.